`Tel: 571-272-7822
`
`
`
`Paper 7
`Entered: September 9, 2014
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`VONAGE HOLDINGS CORP.,
`VONAGE AMERICA, INC.,
`VONAGE MARKETING LLC, and
`NETFLIX, INC.,
`Petitioner,
`
`v.
`
`STRAIGHT PATH IP GROUP, INC.,
`Patent Owner.
`____________
`
`Case IPR2014-01223 (Patent 6,513,066)
`Case IPR2014-01224 (Patent 6,701,365)
`Case IPR2014-01225 (Patent 6,009,469)
`Case IPR2014-01234 (Patent 6,131,121)
`Case IPR2014-01241 (Patent 6,108,704)
`
`
`Before KALYAN K. DESHPANDE, THOMAS L. GIANNETTI, and
`TRENTON A. WARD, Administrative Patent Judges.
`
`WARD, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`IPR2014-01223 (Patent 6,513,066)
`IPR2014-01224 (Patent 6,701,365)
`IPR2014-01225 (Patent 6,009,469)
`IPR2014-01234 (Patent 6,131,121)
`IPR2014-01241 (Patent 6,108,704)
`
`
`A conference call was held on September 5, 2014 and attended by
`Administrative Patent Judges Ward and Deshpande and respective counsel for the
`parties to discuss a request for authorization to file a motion to terminate. Netflix,
`Inc. (“Netflix”) and Patent Owner Straight Path IP Group, Inc. seek to file a joint
`motion to terminate the above captioned cases only with respect to Netflix.
`Vonage Holdings Corp., Vonage America, Inc., and Vonage Marketing LLC
`(“Vonage Parties”) do not oppose the joint motion by Netflix and Patent Owner.
`Counsel for the Vonage Parties and counsel for the Patent Owner acknowledged
`that even if the joint motion to terminate these proceedings with respect to Netflix
`is granted, these proceedings will continue forward with the Vonage Parties and
`the Patent Owner.
`The Board authorizes filing of a Joint Motion to Terminate the Proceeding
`as to Netflix. See 37 C.F.R. § 42.74. The motion must be filed by Tuesday,
`September 23, 2014.
`This Joint Motion must (1) include an explanation as to why termination is
`appropriate; (2) identify all defendants in any related district court litigation in
`which infringement or invalidity of the claims of U.S. Patent Nos. 6,513,066,
`6,701,365, 6,009,469, 6,131,121, and 6,108,704 have been alleged; and (3)
`specifically discuss the current status of each such related litigation with respect to
`each party to that litigation.
`In addition, the Joint Motion to Terminate must be accompanied by a true
`copy of any agreement or understanding among the parties (including any
`collateral agreements referred to in such agreement or understanding) made in
`connection with, or in contemplation of, the termination of these proceedings, in
`
` 2
`
`
`
`
`
`
`
`IPR2014-01223 (Patent 6,513,066)
`IPR2014-01224 (Patent 6,701,365)
`IPR2014-01225 (Patent 6,009,469)
`IPR2014-01234 (Patent 6,131,121)
`IPR2014-01241 (Patent 6,108,704)
`
`accordance with 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b). These documents
`should be filed as separate papers. A redacted version of a document is not a true
`copy.
`
`Under 37 C.F.R. § 42.74(c), the parties may file a request to treat such
`documents as business confidential. The parties are herein directed to FAQ G2 on
`the Board’s website page at http://www.uspto.gov/ip/boards/bpai/prps.jsp for
`further information.
`Accordingly, it is:
`ORDERED that the parties are authorized to file a Joint Motion to
`Terminate these proceedings with respect to Netflix;
`FURTHER ORDERED that the Joint Motion is due by September 19, 2014;
`
`and
`
`FURTHER ORDERED that the Joint Motion shall meet all the requirements
`of 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b), including those discussed above,
`regarding filing of settlement documents.
`
`
` 3
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2014-01223 (Patent 6,513,066)
`IPR2014-01224 (Patent 6,701,365)
`IPR2014-01225 (Patent 6,009,469)
`IPR2014-01234 (Patent 6,131,121)
`IPR2014-01241 (Patent 6,108,704)
`
`PETITIONER:
`Grant K. Rowan
`Victor F. Souto
`Wilmer Cutler Pickering Hale and Dorr
`grant.rowan@wilmerhale.com
`vic.souto@wilmerhale.com
`
`
`Stacy S. Chen
`Keker & Van Nest LLP
`schen@kvn.com
`
`
`PATENT OWNER:
`
`Thomas McWilliams
`Edward Behm
`
`Barnes & Thornburg, LLP
`tmcwilliams@btlaw.com
`ebehm@btlaw.com
`ipr-de@btlaw.com
`
`
` 4
`
`
`
`
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
