`
`Paper No.
`Filed: August 30, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________
`
`APPLE INC.
`Petitioner
`
`v.
`
`OPENTV, INC.
`Patent Owner
`__________
`
`Case IPR2015-01031
`Patent 7,900,229
`__________
`
`
`
`JOINT REQUEST TO FILE SETTLEMENT AGREEMENT
`AS BUSINESS CONFIDENTIAL INFORMATION PURSUANT
`TO 35 U.S.C. § 317(b)
`
`
`
`
`
`
`
`
`
`
`IPR2015-01031
`Patent No. 7,900,229
`
`INTRODUCTION
`
`Petitioner and Patent Owner previously filed a Joint Motion to Terminate
`
`along with five agreements that, taken together, resolved all underlying disputes
`
`between the parties, including this proceeding. In an email dated August 30, 2016,
`
`the Board authorized the Patent Owner to file a true copy of a writing that reflects
`
`an agreement or understanding between Petitioner and Patent Owner made in
`
`connection with or in contemplation of termination of this proceeding. As
`
`authorized by the Board, the parties are submitting a true copy of the writing
`
`between Petitioner and Patent Owner (Ex. 2007). The parties have agreed to waive
`
`service of the writing on each other.
`
`RELIEF REQUESTED
`
`If requested, the rules permit the parties to have any filed settlement
`
`agreement treated as business confidential information and kept separate from the
`
`files of the involved patent. 37 C.F.R. § 42.74(c). Indeed, the statute requires it.
`
`At the request of a party to the proceeding, the agreement or
`understanding shall be treated as business confidential
`information, shall be kept separate from the file of the involved
`patents, and shall be made available only to Federal
`Government agencies on written request, or to any person on a
`showing of good cause.
`
`35 U.S.C. § 317(b).
`
`1
`
`
`
`
`
`
`
`
`
`
`IPR2015-01031
`Patent No. 7,900,229
`
`Pursuant to 37 C.F.R. § 42.74(c) and 35 U.S.C. § 317(b), Petitioner and
`
`Patent Owner jointly request that the Office treat the writing (Exhibit 2007) as
`
`business confidential information, that the writing be kept separate from the file of
`
`the involved patent, and that the writing be made available only to Federal
`
`Government agencies on written request, or to other persons only on a showing of
`
`good cause.
`
`Dated: August 30, 2016
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`By: /Joshua L. Goldberg/
`Joshua L. Goldberg
`Reg. No. 59,369
`
`Counsel for OpenTV, Inc.
`
`By: /Mark Miller/
`Mark Miller
`Reg. No. 31,401
`
`Counsel for Apple Inc.
`
`2
`
`
`
`
`
`CERTIFICATE OF SERVICE
`The undersigned hereby certifies that a copy of the foregoing JOINT
`
`REQUEST TO FILE SETTLEMENT AGREEMENT AS BUSINESS
`
`CONFIDENTIAL INFORMATION PURSUANT TO 35 U.S.C. § 317(b) was
`
`served via e-mail on counsel of record for the Petitioner on August 30, 2016 at the
`
`following addresses:
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Dated: August 30, 2016
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Ryan K. Yagura
`ryagura@omm.com
`Brian M. Cook
`bcook@omm.com
`John Kevin Murray
`kmurray2@omm.com
`Luann L. Simmons
`lsimmons@omm.com
`Xin-Yi Zhou
`vzhou@omm.com
`Anne E. Huffsmith
`ahuffsmith@omm.com
`Mark E. Miller
`markmiller@omm.com
`
` By: /Lauren K. Young/
`Lauren K. Young
`Legal Assistant
`
`
`
`
`
`
`
`FINNEGAN, HENDERSON, FARABOW,
`GARRETT & DUNNER, LLP
`
`–3–
`
`