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Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`Paper 12
`Entered: October 30, 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,
`TRENTON A. WARD, and BART A. GERSTENBLITH, Administrative Patent
`Judges.
`
`WARD, Administrative Patent Judge.
`
`
`
`ORDER
`Motion to Terminate
`37 C.F.R. § 42.72
`
`

`

`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)
`
`Netflix, Inc. and Straight Path IP Group, Inc. have filed a joint motion in
`
`each of these proceedings to terminate the trial proceeding with respect to Netflix,
`Inc. only, and not with respect to the remaining parties, Vonage Holdings Corp.,
`Vonage America, Inc., and Vonage Marketing LLC. IPR2014-01223, Paper 9;
`IPR2014-01224, Paper 8; IPR2014-01225, Paper 8; IPR2014-01234, Paper 8;
`IPR2014-01241, Paper 8. Along with each of the motions, Netflix, Inc. and
`Straight Path IP Group, Inc. filed a copy of a document they described as the
`written settlement agreement (IPR2014-01223, Ex. 1025; IPR2014-01224, Ex.
`1028; IPR2014-01225, Ex. 1029; IPR2014-01234, Ex. 1028; and IPR2014-01241,
`Ex. 1024), as well as a separate joint request to treat the settlement agreement as
`business confidential information under the provisions of 35 U.S.C. § 317(b) and
`37 C.F.R. § 42.74(c). IPR2014-01223, Paper 10, 1; IPR2014-01224, Paper 9, 1;
`IPR2014-01225, Paper 9, 1; IPR2014-01234, Paper 9, 1; and IPR2014-01241,
`Paper 9, 1.
`Separately, Vonage Holdings Corp., Vonage America, Inc., and Vonage
`Marketing LLC (collectively “Vonage”) have filed joint motions to terminate the
`trial proceedings with respect to the remaining parties. IPR2014-01223, Paper 11;
`IPR2014-01224, Paper 10; IPR2014-01225, Paper 10; IPR2014-01234, Paper 10;
`IPR2014-01241, Paper 10. Along with each of the motions, Vonage and Straight
`Path IP Group, Inc. filed a copy of a document they described as the written
`settlement agreement (IPR2014-01223, Ex. 1026; IPR2014-01224, Ex. 1029;
`IPR2014-01225, Ex. 1030; IPR2014-01234, Ex. 1029; and IPR2014-01241, Ex.
`1025), as well as a separate joint request to treat the settlement agreement as
`business confidential information under the provisions of 35 U.S.C. § 317(b) and
`
` 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)
`
`37 C.F.R. § 42.74(c). IPR2014-01223, Paper 12, 1; IPR2014-01224, Paper 11, 1;
`IPR2014-01225, Paper 11, 1; IPR2014-01234, Paper 11, 1; and IPR2014-01241,
`Paper 11, 1.
`Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under this
`chapter shall be terminated with respect to any petitioner upon the joint request of
`the petitioner and patent owner, unless the Office has decided the merits of the
`proceeding before the request for termination is filed.” Netflix, Inc. and Straight
`Path IP Group, Inc. stated in their motions that they have settled the dispute
`between these two parties and reached an agreement to terminate this proceeding
`as to Netflix, Inc. IPR2014-01223, Paper 9, 1; IPR2014-01224, Paper 8, 1;
`IPR2014-01225, Paper 8, 1; IPR2014-01234, Paper 8, 1; and IPR2014-01241,
`Paper 8, 1. Similarly, Vonage stated in its joint motions that Patent Owner and
`Vonage have settled their dispute and have reached an agreement to terminate
`these proceedings. IPR2014-01223, Paper 11, 1; IPR2014-01224, Paper 10, 1;
`IPR2014-01225, Paper 10, 1; IPR2014-01234, Paper 10, 1; and IPR2014-01241,
`Paper 10, 1. We note that a trial has not been instituted in these proceedings and
`the time for the filing of a Preliminary Response in each proceeding by Straight
`Path IP Group, Inc. has not yet expired or been waived.
`Generally, the Board expects that a proceeding will terminate after the filing
`of a settlement agreement. See, e.g., Office Patent Trial Practice Guide, 77 Fed.
`Reg. 48,756, 48,768 (Aug. 14, 2012). These proceedings are still in the
`preliminary stages, as the Board has not instituted a trial and the time for the filing
`of a Preliminary Response by Straight Path IP Group, Inc. has not yet expired or
`
` 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)
`
`been waived. The Board is persuaded that, under these circumstances, it is
`appropriate to terminate these proceedings with respect to all parties.
`Accordingly, it is:
`ORDERED that the joint motions to terminate these proceedings are
`GRANTED and each of these proceedings is hereby terminated;
`FURTHER ORDERED that the joint request of Netflix, Inc. and Straight
`Path IP Group, Inc. that the settlement agreement (IPR2014-01223, Ex. 1025;
`IPR2014-01224, Ex. 1028; IPR2014-01225, Ex. 1029; IPR2014-01234, Ex. 1028;
`and IPR2014-01241, Ex. 1024) be treated as business confidential information,
`kept separate from the file of the involved patent, and made available only to
`Federal Government agencies on written request, or to any person on a showing of
`good cause, under the provisions of 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c),
`is GRANTED; and
`FURTHER ORDERED that the joint request of Vonage and Straight Path IP
`Group, Inc. that the settlement agreement (IPR2014-01223, Ex. 1026; IPR2014-
`01224, Ex. 1029; IPR2014-01225, Ex. 1030; IPR2014-01234, Ex. 1029; and
`IPR2014-01241, Ex. 1025) be treated as business confidential information, kept
`separate from the file of the involved patent, and made available only to Federal
`Government agencies on written request, or to any person on a showing of good
`cause, under the provisions of 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), is
`GRANTED.
`
`
`
`
`
` 4
`
`
`
`
`
`

`

`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 J. McWilliams
`Edward F. Behm, Jr.
`BARNES & THORNBURG, LLP
`tmcwilliams@btlaw.com
`ebehm@btlaw.com
`ipr-de@btlaw.com
`
`
` 5
`
`
`
`
`
`

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