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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`NXP USA, INC. et al,
`Petitioners,
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`v.
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`BELL SEMICONDUCTOR, LLC,
`Patent Owner.
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`Case: IPR2024-00168
`Patent 7,345,245
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`JOINT MOTION TO TERMINATE
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`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`Proceeding No.: IPR2024-00168
`US Patent No. 7,345,245
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`UPDATED EXHIBIT LIST
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`Ex. 1001 U.S. Patent No. 7,345,245
`Ex. 1002 Declaration of R. Jacob Baker, PhD, PE (“Dr. Baker”)
`Ex. 1003 Curriculum Vitae of Dr. Baker
`Ex. 1004
`File History of U.S. Patent No. 7,345,245
`Ex. 1005 US Patent Pub. 2003/0183919 to Devnani et al. (“Devnani”)
`Ex. 1006 US Patent Pub. 2003/0003705 to Chung, et al. (“Chung”)
`Ex. 1007 US Patent No. 6,680,530 to Pillai et al. (“Pillai”)
`Mobile Intel® Celeron® Processor (0.13 μ) in Micro-FCBGA and
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`Ex. 1008
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`Ex. 1010
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`Micro-FCPGA Packages Datasheet (April 2003) (“Celeron”)
`Ex. 1009 US Patent No. 6,172,305 to Tanahashi (“Tanahashi”)
`Thomas D. Moore and John L. Jarvis, The effects of in-plane
`orthotropic properties in a multi-chip ball grid array assembly,
`Microelectronics Reliability, Volume 42, Issue 6, June 2002, pages
`943-949 (“Moore & Jarvis”)
`D.J. Xie and Z.P. Wang, Process capability study and thermal
`fatigue life prediction of ceramic BGA solder joints, Finite Elements
`in Analysis and Design, Volume 30, Issues 1-2, July 15, 1998,
`pages 31-45 (“Xie and Wang”)
`Ex. 1012 Memorandum from Director Vidal (dated June 21, 2022)
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`Ex. 1011
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`Ex. 1013
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`Ex. 1014
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`Scheduling Order, Bell Semiconductor, LLC vs. NXP USA, INC, et
`al. 8:22-cv-02133-HDV-ADS (C. D. California)
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`Reassignment Order Scheduling Order, Bell Semiconductor, LLC vs.
`NXP USA, INC, et al. 8:22-cv-02133-HDV-ADS (C. D. California)
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`Proceeding No.: IPR2024-00168
`US Patent No. 7,345,245
`Plaintiff Bell Semiconductor, LLC Analysis of Infringement of U.S.
`Patent No. 7,345,245, Bell Semiconductor, LLC vs. NXP USA, INC,
`et al. 8:22-cv-02133-HDV-ADS (C. D. California) (May 17, 2023)
`Critical Review and Technology Assessments ’91-’92, Reliability
`Analysis Center, AD-A278 419; April 21, 1994, 452 pages
`(“CRTA”)
`2000 Packaging Handbook, Chapter 4: Performance Characteristics
`of IC Packages; pages 1-66, 2000 (“PCIP”)
`A Review of Ball Grid Arrays For Electronic Assembly, S B
`Dunkerton and J M Goward, Presented at ICAWT '98, The 1998
`International Conference on Advances in Welding Technology -
`'Joining applications in electronics and medical devices', Columbus,
`Ohio, USA, 30 September - 2 October 1998 (“Review of BGAs”)
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`Ex. 1015
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`Ex. 1016
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`Ex. 1017
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`Ex. 1018
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`Ex. 1019 Order Granting Motion to Stay Pending IPR
`Email dated 12 June 2024 from the Patent Trial & Appeal Board
`authorizing Petitioner to file a motion to supplement information
`pursuant to 37 C.F.R. §42.123(a)
`
`Ex. 1020
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`Ex. 1021 Declaration of June Ann Munford
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`Ex. 1022
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`2nd Declaration of R. Jacob Baker, P.E., Ph.D.
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`Ex. 1023 Declaration of Elizabeth Jones
`Effect of the drop impact on BGA/CSP package reliability, Kinuko
`Mishiro et al., Microelectronics Reliability 42 (2002) 77-82, 2002
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`Ex. 1024
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`Proceeding No.: IPR2024-00168
`US Patent No. 7,345,245
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`Ex. 1025
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`Ex. 1026
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`Ex. 1027
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`Excerpt of Figure 3 of Ex. 1005-annotated
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`Deposition Transcript of Dr. Joseph Bernstein, dated November 7,
`2024
`Confidential Settlement Agreement
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`iii
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`Proceeding No.: IPR2024-00168
`US Patent No. 7,345,245
`Petitioner NXP USA INC., et al (“Petitioner NXP” or “NXP”) and Patent
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`Owner Bell Semiconductor, LLC (“Patent Owner” or “Bell Semic”) (collectively
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`“the parties”) have entered into an agreement (“Agreement”) that resolves all
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`underlying disputes between the parties involving U.S. Patent No. 7,345,245 (“the
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`’245 Patent”). The Board previously terminated this IPR with respect to Petitioner
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`Texas Instruments Incorporated on January 10, 2025. See Paper 26. All pending
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`related litigations between the parties have been dismissed. The Agreement is the
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`only agreement or understanding between the parties made in connection with, or in
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`contemplation of, the termination of this inter partes review.
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`In an email dated January 2, 2025, the Board authorized the parties to file (a)
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`a joint motion to terminate and (b) a joint request to treat the Agreement as business
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`confidential information.
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`As authorized, the parties jointly move that the Board terminate the above-
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`captioned inter partes review. Pursuant to 35 U.S.C. § 317(a), “[a]n inter partes
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`review instituted under this chapter shall be terminated with respect to any petitioner
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`upon the joint request of the petitioner and the patent owner, unless the Office has
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`decided the merits of the proceeding before the request for termination is filed.”
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`Here, termination is appropriate because the Board has not yet decided the merits of
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`this inter partes review, as a Final Written Decision is not due until May 8, 2025, one
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`year from institution.
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`No other party’s rights would be prejudiced by the termination of this inter
`4
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`Proceeding No.: IPR2024-00168
`US Patent No. 7,345,245
`partes review. The parties are not aware of any other pending proceeding involving
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`the subject patent that would be affected by the requested termination of this
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`proceeding.
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`Pursuant to 35 U.S.C. 317(b) and 37 C.F.R. § 42.74(b), the parties certify that
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`they are filing concurrently herewith, as Ex. 1027, a true copy of the Agreement
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`between the parties related to the subject patent, and a joint request to treat that
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`agreement as business confidential information and to keep that agreement separate
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`from the file of the involved patent, pursuant to 35 U.S.C. 317(b) and 37 C.F.R. §
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`42.74(c).
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`The Agreement does not reference any other agreement and, in fact, is the
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`entire agreement between the parties. Ex. 1027, 6 (“Entire Agreement”). The
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`settlement was facilitated by a third party. The parties certify that none of the
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`agreements with that third party is a settlement agreement or understanding entered
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`into between the Petitioner and Patent Owner as signatories nor is it a collateral
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`agreement that is referenced in the Agreement submitted with this joint motion. See
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`Paper 10, Axis Comm’s AB, v. Compression Vectors LLC, IPR2021-01143, at 2
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`(terminating IPR based on similar certification). However, because the Board
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`required one of Patent Owner’s sister companies to file its agreement with the same
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`third party in IPR2023-01414 and IPR2024-01044, Patent Owner is filing
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`concurrently herewith a true copy of its agreement with the third party along with an
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`unopposed motion to keep the third party agreement confidential and separate.
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`5
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`Proceeding No.: IPR2024-00168
`US Patent No. 7,345,245
`In view of the above, the parties respectfully request that the Board grant the
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`parties’ joint motion to terminate this inter partes review. The parties further request
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`that the Board grant their joint request to treat the Agreement as business confidential
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`information and keep it separate from the file of the involved patent.
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`6
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`Dated: February 10, 2025
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`Dated: February 10, 2025
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`Proceeding No.: IPR2024-00168
`US Patent No. 7,345,245
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`Respectfully submitted,
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`
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`/Timothy D. Taylor/
`Timothy D. Taylor, Reg. No. 76,643
`Garlick & Markison
`2025 Guadalupe Street, Suite 260
`Austin, TX 78705
`T: (512) 480-2220
`Email: taylor@texaspatents.com
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`Attorney for Petitioner NXP USA INC. et al
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`
`
`/Jason Shapiro/
`Jason M. Shapiro, Reg. No. 35,354
`DEVLIN LAW FIRM LLC
`1526 Gilpin Ave.
`Wilmington, DE 19806
`Telephone: (302) 449-9010
`Email: jshapiro@devlinlawfirm.com
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`Attorney for Patent Owner
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`7
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`Proceeding No.: IPR2024-00168
`US Patent No. 7,345,245
`CERTIFICATE OF SERVICE
`I hereby certify that on this 10th day of February, 2025, a copy of foregoing
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`document has been served via electronic mail to the following addresses:
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`bellsemic-dlf-intl@devlinlawfirm.com
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`Dated: February 10, 2025
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` Respectfully Submitted,
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`/Timothy D. Taylor/
`Timothy D. Taylor, Reg. No. 76,643
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`Attorney for Petitioner
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`8
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