`Filed: August 4, 2016
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________
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`APPLE INC.
`Petitioner
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`v.
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`OPENTV, INC.
`Patent Owner
`__________
`
`Case IPR2015-01031
`Patent 7,900,229
`__________
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`
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`JOINT REQUEST TO FILE SETTLEMENT AGREEMENT
`AS BUSINESS CONFIDENTIAL INFORMATION PURSUANT
`TO 35 U.S.C. § 317(b)
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`IPR2015-01031
`Patent No. 7,900,229
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`INTRODUCTION
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`Petitioner Apple Inc., Patent Owner parent Kudelski S.A., and third party
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`RPX Corporation have made five agreements that, taken together, resolve all
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`underlying disputes between the parties, including this proceeding. In an email
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`dated July 20, 2016, the Board authorized the parties to file upon completion of a
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`settlement a joint motion to terminate and a joint request to file settlement
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`agreement as business confidential information. As required by the Board, the
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`parties are submitting true copies of the five agreements along with their joint
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`motion to terminate:
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` Patent License Agreement between Apple and Kudelski (Ex. 2003)
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` Patent License Agreement between Kudelski and RPX (Ex. 2004)
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` Letter Agreement between Kudelski, RPX, and Apple (Ex. 2005)
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` Letter Agreement No. 2 between Kudelski and Apple (Ex. 2006)
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` Agreement between Apple and RPX (Ex. 1021)
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`Both parties have access to the Patent License Agreement between Apple
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`and Kudelski; the Letter Agreement between Kudelski, RPX, and Apple; and the
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`Letter Agreement No. 2 between Kudelski and Apple, but each of the other
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`agreements preclude one of the parties from disclosing it to the other of the parties.
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`Specifically, the Patent License Agreement between Kudelski and RPX cannot be
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`shared with Petitioner. Also, the Agreement between Apple and RPX cannot be
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`shared with Patent Owner. The parties have thus agreed to file those two
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`IPR2015-01031
`Patent No. 7,900,229
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`agreements as “available only to Board,” and to waive service of the agreements
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`on each other. Indeed, it would be contrary to the intent of the parties and the
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`express confidentiality provision of those two agreements for Petitioner or Patent
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`Owner to have access to all of them.
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`RELIEF REQUESTED
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`If requested, the rules permit the parties to have any filed settlement
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`agreement treated as business confidential information and kept separate from the
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`files of the involved patent. 37 C.F.R. § 42.74(c). Indeed, the statute requires it.
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`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.
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`35 U.S.C. § 317(b).
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`Pursuant to 37 C.F.R. § 42.74(c) and 35 U.S.C. § 317(b), Petitioner and
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`Patent Owner jointly request that the Office treat the five agreements (Exhibits
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`2003, 2004, 2005, 2006, and 1021) as business confidential information, that the
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`five agreements be kept separate from the file of the involved patent, and that the
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`five agreements be made available only to Federal Government agencies on written
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`IPR2015-01031
`Patent No. 7,900,229
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`request, or to other persons only on a showing of good cause.
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`Respectfully submitted,
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`
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`By: /Joshua L. Goldberg/
`Joshua L. Goldberg
`Reg. No. 59,369
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`Counsel for OpenTV, Inc.
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`By: /Mark Miller/
`Mark Miller
`Reg. No. 31,401
`
`Counsel for Apple Inc.
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`
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`Dated: August 4, 2016
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`3
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`CERTIFICATE OF SERVICE
`The undersigned hereby certifies that a copy of the foregoing JOINT
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`REQUEST TO FILE SETTLEMENT AGREEMENT AS BUSINESS
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`CONFIDENTIAL INFORMATION PURSUANT TO 35 U.S.C. § 317(b) was
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`served via e-mail on counsel of record for the Petitioner on August 4, 2016 at the
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`following addresses:
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`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
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`–4–
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`Dated: August 4, 2016
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