`571-272-7822
`
`
`
`
` Paper 21
` Entered: April 29, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`PERSONALIZED MEDIA COMMUNICATIONS LLC,
`Patent Owner.
`_______________
`
`Case IPR2016-00753
`Patent 7,752,649 B1
`_______________
`
`
`
`Before KARL D. EASTHOM, TRENTON WARD, and
`GEORGIANNA W. BRADEN, Administrative Patent Judges.
`
`BRADEN, Administrative Patent Judge.
`
`
`
`ORDER
`Granting Joint Motion to Terminate
`37 C.F.R. §§ 42.5, 42.72, 42.74(c)
`
`
`
`IPR2016-00753
`Patent 7,752,649 B1
`
`
`
`On March 9, 2017, with Board authorization, the parties filed a joint
`
`motion to terminate the proceeding (Paper 19), along with what they indicate
`
`is their written settlement agreement (Ex. 1029). According to counsel, the
`
`parties have settled their disputes, and have reached agreement to terminate
`
`this IPR proceeding, which challenged the patentability of U.S. Patent No.
`
`7,752,649 B1 (“the ’649 patent”). See Paper 19, 1. The parties further
`
`request confidential treatment of the settlement agreement, pursuant to 37
`
`C.F.R. § 42.74(c). Paper 20.
`
`The parties state the above-identified IPR petition is related to a
`
`lawsuit filed in the Eastern District of Texas, Personalized Media
`
`Communications LLC. V. Apple Inc., Case No. 2:15-cv-01366 (EDTX).
`
`Paper 19, 2. The parties state that they have resolved their disputes with
`
`regard to the ’649 patent in that district court litigation and have filed a joint
`
`stipulation of dismissal of all of the parties’ claims and counterclaims that
`
`specifically relate to the ’649 patent. Id. According to the parties, the other
`
`related lawsuits have either being terminated or dismissed. Id. The parties
`
`further indicate that the parties have moved jointly to terminate IPR2017-
`
`00141, IPR2017-00142, IPR2017-00289, and IPR2017-00290, all of which
`
`challenge the patentability of the ’649 patent. Id. at 2–3.
`
`The joint request to treat the settlement agreement as business
`
`confidential information includes a request that the settlement agreement be
`
`kept separate from the patent file. Paper 20; see also 37 C.F.R. § 42.74(c)
`
`(“A party to a settlement may request that the settlement be treated as
`
`business confidential information and be kept separate from the files of an
`
`involved patent or application.”).
`
`2
`
`
`
`
`
`IPR2016-00753
`Patent 7,752,649 B1
`
`
`The parties indicate good cause exists to terminate the above-
`
`identified IPR Proceeding. Paper 19, 1. In addition to being unopposed, the
`
`parties state that, although a Patent Owner Response was filed, Petitioner has
`
`not filed its Reply, and the Board has not issued a decision on institution,
`
`plus the co-pending district court litigation has been dismissed with
`
`prejudice. Id. Based on the facts of this case, we agree it is appropriate to
`
`terminate the proceeding, because doing so will preserve the Board’s and the
`
`parties’ resources while also furthering the Patent Office’s policy of
`
`“secur[ing] the just, speedy, and inexpensive resolution”; and this is a just
`
`and fair resolution.
`
`Accordingly, the joint motions to terminate each of the above-
`
`identified proceedings and the joint requests to treat the settlement
`
`agreement as business confidential information are granted. As requested by
`
`the parties, the settlement agreement will be treated as business confidential
`
`information and kept separate from the patent file. 37 C.F.R. § 42.74(c).
`
`This paper does not constitute a final written decision pursuant to 35 U.S.C.
`
`§ 318(a).
`
`Therefore, it is
`
`ORDERED that the joint motion to terminate IPR2016-00753 is
`
`granted;
`
`FURTHER ORDERED that the proceeding in IPR2016-00753 is
`
`terminated pursuant to 37 C.F.R. §§ 42.5, 42.72, 42.74(c); and
`
`FURTHER ORDERED that the parties’ joint request that the
`
`settlement agreement (Ex. 1029) be treated as business confidential
`
`information, be kept separate from the file of the involved patent, and made
`
`3
`
`
`
`
`
`IPR2016-00753
`Patent 7,752,649 B1
`
`available only to Federal Government agencies on written request, or to any
`
`person on a showing of good cause, under 37 C.F.R. § 42.74(c) is granted.
`
`4
`
`
`
`
`
`
`
`
`
`5
`
`IPR2016-00753
`Patent 7,752,649 B1
`
`
`PETITIONER:
`
`Marcus Sernel
`msernel@kirkland.com
`
`Joel Merkin
`joel.merkin@kirkland.com
`
`
`
`PATENT OWNER:
`
`Douglas Kline
`dkline@goodwinprocter.com
`
`Thomas Scott, Jr.
`tscott@pmcip.com
`
`Jennifer Albert
`jalbert@goodwinprocter.com
`
`Stephen Schreiner
`sschreiner@goodwinprocter.com
`
`Krupa Parikh
`kparikh@goodwinprocter.com
`
`April Weisbruch
`aweisbruch@goodwinprocter.com
`
`
`
`
`
`
`
`
`
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