Trials@uspto.gov
`Tel: 571-272-7822
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`Paper 31
`Entered: January 14, 2015
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`_______________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_______________
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`NETFLIX, INC.,
`Petitioner,
`
`v.
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`OPENTV, INC.,
`Patent Owner.
`_______________
`
`Cases IPR2014-00252 (Patent 8,107,786 B2)
`IPR2014-00267 (Patent 7,409,437 B2)
`IPR2014-00269 (Patent 6,233,736 B1)
`_______________
`
`
`Before SALLY C. MEDLEY, JAMES T. MOORE, and JUSTIN BUSCH,
`Administrative Patent Judges.
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`MEDLEY, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
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`Petitioner filed petitions for inter partes review of the three involved patents
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`and Patent Owner filed preliminary responses. On June 24, 2014, we instituted
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`trial for each case.
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`

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`Case IPR2014-00252 (Patent 8,107,786 B2)
`Case IPR2014-00267 (Patent 7,409,437 B2)
`Case IPR2014-00269 (Patent 6,233,736 B1)
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`On January 12, 2015, the parties informed the Board that the parties have
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`reached a settlement agreement. The parties seek authorization from the Board to
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`file a joint motion to terminate the proceedings pursuant to 35 U.S.C. § 317.
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`An inter partes review has been instituted in each case. The Board does not
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`have before it full briefing on the issues raised during each trial. Moreover, the
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`Board has not entered a final written decision. Generally, the Board expects that a
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`proceeding will terminate after the filing of a settlement agreement. See, e.g.,
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`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012).
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`The rule governing settlement indicates that any agreement between the parties
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`made in connection with, or in contemplation of, the termination of a proceeding
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`shall be in writing and filed with the Board. 37 C.F.R. § 42.74.
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`Based on the facts of these proceedings, the parties are authorized to file a
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`joint motion to terminate in each proceeding, briefly explaining why termination is
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`appropriate. Each joint motion also should update the Board as to the status of any
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`other matters involving the patent at issue. The parties also must file, as an exhibit,
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`a true copy of their settlement agreement to terminate the proceedings. A redacted
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`version of the settlement agreement will not be accepted as a true copy of the
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`settlement agreement. Any request that the agreement be treated as business
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`confidential information and be kept separate from the files of the involved patent
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`must be filed with the settlement agreement. 37 C.F.R. § 42.74(c). The parties are
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`directed to FAQ G2 on the Board’s website at
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`http://www.uspto.gov/ip/boards/bpai/prps.jsp for instructions on how to file their
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`settlement agreement as confidential (e.g., uploading as “Parties and Board Only”).
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`The joint motions to terminate and the settlement agreement shall be filed no
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`later than January 20, 2015.
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`

`

`Case IPR2014-00252 (Patent 8,107,786 B2)
`Case IPR2014-00267 (Patent 7,409,437 B2)
`Case IPR2014-00269 (Patent 6,233,736 B1)
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`Accordingly, it is
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`ORDERED that the parties are authorized to file a separate joint motion to
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`terminate in each proceeding;
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`FURTHER ORDERED that the joint motions are due no later than January
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`20, 2015;
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`FURTHER ORDERED that each joint motion shall be accompanied by a
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`true copy of the settlement agreement as required by 37 C.F.R. § 42.74(b);
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`FURTHER ORDERED that the parties may request that the settlement
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`agreement be treated as business confidential information as specified by 37 C.F.R.
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`§ 42.74(c);
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`FURTHER ORDERED that any confidential settlement agreement must be
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`filed electronically via the Patent Review Processing System (PRPS) in accordance
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`with the instructions provided on the Board’s website (e.g., uploading as “Parties
`
`and Board Only”); and
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`FURTHER ORDERED that the remaining DUE DATES in the proceedings
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`are vacated.
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`

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`Case IPR2014-00252 (Patent 8,107,786 B2)
`Case IPR2014-00267 (Patent 7,409,437 B2)
`Case IPR2014-00269 (Patent 6,233,736 B1)
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`PETITIONER:
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`Andrew Ehmke
`andy.ehmke.ipr@haynesboone.com
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`Dustin Johnson
`dustin.johnson.ipr@haynesboone.com
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`Scott Jarratt
`scott.jarratt.ipr@haynesboone.com
`
`
`PATENT OWNER:
`
`Erika Arner
`erika.arner@finnegan.com
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`Joshua Goldberg
`joshua.goldberg@finnegan.com
`
`Russell Levine
`russell.levine@kirkland.com
`
`Eugene Goryunov
`eugene.goryunov@kirkland.com
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