Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`Paper 29
`Entered: September 10, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`OPENTV, INC.,
`Patent Owner.
`
`
`Case IPR2015-00969 (Patent 5,884,033)
`Case IPR2015-00980 (Patent 5,566,287)
`Case IPR2015-01031 (Patent 7,900,229 B2)1
`
`
`
`
`
`
`
`
`
`
`Before JAMES B. ARPIN, DAVID C. MCKONE, and SCOTT C. MOORE,
`Administrative Patent Judges.
`
`ARPIN, Administrative Patent Judge.
`
`DECISION
`Denying Joint Motions to Terminate
`35 U.S.C. §§ 317 and 318 and 37 C.F.R. §§ 42.20 and 42.72
`
`
`
`
`
`
`
`1 This Decision applies to each of the listed cases. We exercise our
`discretion to issue one Decision to be docketed in each case. The parties,
`however, are not authorized to use this caption for any subsequent papers.
`
`
`
`
`571-272-7822
`
`
`
`
`
`Paper 29
`Entered: September 10, 2016
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`OPENTV, INC.,
`Patent Owner.
`
`
`Case IPR2015-00969 (Patent 5,884,033)
`Case IPR2015-00980 (Patent 5,566,287)
`Case IPR2015-01031 (Patent 7,900,229 B2)1
`
`
`
`
`
`
`
`
`
`
`Before JAMES B. ARPIN, DAVID C. MCKONE, and SCOTT C. MOORE,
`Administrative Patent Judges.
`
`ARPIN, Administrative Patent Judge.
`
`DECISION
`Denying Joint Motions to Terminate
`35 U.S.C. §§ 317 and 318 and 37 C.F.R. §§ 42.20 and 42.72
`
`
`
`
`
`
`
`1 This Decision applies to each of the listed cases. We exercise our
`discretion to issue one Decision to be docketed in each case. The parties,
`however, are not authorized to use this caption for any subsequent papers.
`
`
`
`
`
`IPR2015-00969 (Patent 5,884,033)
`IPR2015-00980 (Patent 5,566,287)
`IPR2015-01031 (Patent 7,900,229 B2)
`
`
`BACKGROUND
`Apple Inc. (“Petitioner”) and OpenTV, Inc. (“Patent Owner”) move
`jointly to terminate each of the above-captioned proceedings.2 On August 4,
`2016, the parties filed a Joint Motion to Terminate Proceeding (“Joint
`Motion”) in each proceeding (IPR2015-00969, Paper 22; IPR2015-00980,
`Paper 21; IPR2015-01031, Paper 22), accompanied by five separate
`agreements purportedly documenting the terms of the settlement
`(IPR2015-00969, Exs. 1013, 2008–2011; IPR2015-00980, Exs. 1015, 2008–
`2011; IPR2015-01031, Exs. 1021, 2003–2006). Because Petitioner is not
`permitted to see the contents of Exhibit 2004 in IPR2015-01031 and Exhibit
`2009 in IPR2015-00969 and IPR2015-00980, and Patent Owner is not
`permitted to see the contents of Exhibit 1021 in IPR2015-01031, Exhibit
`1013 in IPR2015-00969, and Exhibit 1015 in IPR2015-00980; those exhibits
`were filed in each proceeding for “Board Only.” The remaining exhibits
`supporting the Joint Motions were filed for “Board and Parties Only.” In
`addition, on August 4, 2016, the parties filed a Joint Request to File
`Settlement Agreement as Business Confidential (IPR2015-00969, Paper 23;
`IPR2015-00980, Paper 22; IPR2015-01031, Paper 23 (“First Joint
`Request”)) in each proceeding, requesting that the supporting exhibits are
`treated as business confidential information and kept separate from the files
`
`
`2 Although the parties have filed similar requests to terminate in related
`proceedings, the parties advised the Board that their requests are not
`contingent on the termination of all of those proceedings. IPR2016-00992,
`Paper 11, 3. Further, we acknowledge that a different panel terminated
`IPR2015-00971 (Paper 30), involving different parties, after the oral
`hearing; however, the facts and circumstances of these proceedings differ.
`
`2
`
`
`
`IPR2015-00969 (Patent 5,884,033)
`IPR2015-00980 (Patent 5,566,287)
`IPR2015-01031 (Patent 7,900,229 B2)
`
`of the respective patents at issue in each proceeding.
`Because Exhibits 2003 and 2004 in IPR2015-01031 and Exhibits
`2008 and 2009 in IPR2015-00969 and IPR2015-00980 were incomplete
`(see, e.g., IPR2016-00992, Paper 11, 2–3 (referring to corresponding
`Exhibits 2001 and 2002)), the parties refiled these exhibits in each
`proceeding on August 22, 2016; and we expunged the previously-filed
`versions of these exhibits. On August 30, 2016, the parties also filed new
`Exhibit 2007 in IPR2015-01031 and new Exhibit 2012 in IPR2015-00969
`and IPR2015-00980 and a second, Joint Request to File Settlement
`Agreement as Business Confidential (IPR2015-00969, Paper 27;
`IPR2015-00980, Paper 26; IPR2015-01031, Paper 27 (“Second Joint
`Request”)); and Patent Owner filed Updated Mandatory Notices, naming
`Nagra USA, Inc. and Kudelski S.A. as real parties-in-interest
`(IPR2015-00969, Paper 26; IPR2015-00980, Paper 25; IPR2015-01031,
`Paper 28). Exhibit 2007 in IPR2015-01031 and Exhibit 2012 in
`IPR2015-00969 and IPR2015-00980 were filed for “Board and Parties
`Only.”
`
`ANALYSIS
`Pursuant to 35 U.S.C. § 317(a),
`An inter partes review instituted under this chapter shall be
`terminated with respect to any petitioner upon the joint request
`of the petitioner and the patent owner, unless the Office has
`decided the merits of the proceeding before the request for
`termination is filed. . . . If no petitioner remains in the inter partes
`review, the Office may terminate the review or proceed to a final
`written decision under section 318(a). (Emphasis added.)
`Further, pursuant to 37 C.F.R. § 42.72, “[t]he Board may terminate a trial
`without rendering a final written decision, where appropriate, including . . .
`
`3
`
`
`
`IPR2015-00969 (Patent 5,884,033)
`IPR2015-00980 (Patent 5,566,287)
`IPR2015-01031 (Patent 7,900,229 B2)
`
`pursuant to a joint request under 35 U.S.C. 317(a)” (emphasis added).
`Thus, in order for us to terminate these proceedings, the parties must
`persuade us that they are entitled to the relief requested. See 37 C.F.R.
`§§ 42.20(a), 42.20(c).
`
`Initially, we note that the parties’ requests to terminate are filed at an
`extremely late date in each proceeding. All briefing in each of the
`above-captioned proceedings is complete, and oral hearings were held in
`each proceeding on June 21, 2016. Thus, the public’s interest in the status of
`the challenged claims of each patent is at its peak. See Apple, Inc. v.
`Smartflash LLC, Case CBM2015-00015, slip op. at 6 (PTAB Nov. 4, 2015)
`(Paper 49) (“There is a public interest in resolving the issues raised by these
`challenges because the record is fully developed.”). Although the panel has
`not yet issued a Final Written Decision in any of these proceedings, the
`panel deliberated and decided the merits of each proceeding before the
`requests were filed on August 4, 2016.3 Further, although the parties have
`filed six separate agreements purportedly documenting their settlement, only
`one of these documents mentions Patent Owner, and the agreements involve
`signatories that have not been identified as real parties-in-interest.
`
`In addition, each of the parties acknowledges that it individually is not
`aware of the contents of some of the agreements. Here, according to their
`Joint Requests to File Settlement Agreement as Business Confidential,
`Both parties have access to the Patent License Agreement
`between Apple and Kudelski; the Letter Agreement between
`
`
`3 The Joint Motions were not complete in each proceeding at least until the
`parties filed their final exhibits, Exhibit 2007 in IPR2015-01031 and Exhibit
`2012 in IPR2015-00969 and IPR2015-00980, on August 30, 2016.
`
`4
`
`
`
`IPR2015-00969 (Patent 5,884,033)
`IPR2015-00980 (Patent 5,566,287)
`IPR2015-01031 (Patent 7,900,229 B2)
`
`
`Kudelski, RPX, and Apple; and the Letter Agreement No. 2
`between Kudelski and Apple, but each of the other agreements
`preclude one of the parties from disclosing it to the other of the
`parties. Specifically, the Patent License Agreement between
`Kudelski and RPX cannot be shared with Petitioner. Also, the
`Agreement between Apple and RPX cannot be shared with Patent
`Owner. The parties have thus agreed to file those two agreements
`as “available only to Board,” and to waive service of the
`agreements on each other.
`E.g., IPR2015-01031, Paper 23, 1–2 (emphasis added).
`
`The Board is not a party to the settlement (37 C.F.R. 42.74(a)), and
`the burden rests on the joint requestors to persuade us that the agreements
`include the necessary signatories and actually settle the parties’ disputes.
`Because the parties are not able to consider the contents of all of the
`agreements purporting to settle their disputes, they cannot know whether,
`and we cannot rely on their assurances that, these agreements in fact settle
`their disputes. See 37 C.F.R. § 42.74.
`In sum, (1) because we already have decided the merits of the
`proceedings; (2) because, due to the unorthodox nature of the settlement
`agreements, we are unpersuaded whether these agreements settle the parties’
`disputes completely; and (3) because of the increased public interest at this
`late stage in these proceedings, we decline to terminate these proceedings,
`and we deny the parties’ Joint Motions.
`ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that the Joint Motion in each proceeding is denied;
`
`5
`
`
`
`IPR2015-00969 (Patent 5,884,033)
`IPR2015-00980 (Patent 5,566,287)
`IPR2015-01031 (Patent 7,900,229 B2)
`
`
`FURTHER ORDERED that the parties must file any request for
`rehearing of this Decision within five (5) business days of the entry of this
`Decision; and
`FURTHER ORDERED that the parties are authorized to file a joint
`motion within ten (10) business days of the entry of this Decision in each
`proceeding, requesting that the exhibits supporting the Joint Motions be
`expunged, and that the supporting exhibits shall remain in “Board Only” or
`“Board and Parties Only” status pending our decision on any request for
`rehearing or any request to expunge.
`
`
`
`PETITIONER:
`Mark E. Miller
`Ryan K. Yagura
`Brian M. Cook
`Xin-Yi Zhou
`J. Kevin Murray
`Anne E. Huffsmith
`O’MELVENY & MYERS LLP
`markmiller@omm.com
`ryagura@omm.com
`bcook@omm.com
`vzhou@omm.com
`kmurray@omm.com
`ahuffsmith@omm.com
`
`PATENT OWNER:
`Erika H. Arner
`Joshua L. Goldberg
`Alyssa Holtslander
`Daniel Tucker
`
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
`
`6
`
`
`
`IPR2015-00969 (Patent 5,884,033)
`IPR2015-00980 (Patent 5,566,287)
`IPR2015-01031 (Patent 7,900,229 B2)
`
`erika.arner@finnegan.com
`joshua.goldberg@finnegan.com
`alyssa.holtslander@finnegan.com
`daniel.tucker@finnegan.com
`
`7
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