Paper No.
`Filed: August 4, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________
`
`APPLE INC.
`Petitioner
`
`v.
`
`OPENTV, INC.
`Patent Owner
`__________
`
`Case IPR2016-01004
`Patent 7,055,169
`__________
`
`JOINT MOTION TO TERMINATE PROCEEDING
`
`
`
`
`
`
`
`
`Filed: August 4, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________
`
`APPLE INC.
`Petitioner
`
`v.
`
`OPENTV, INC.
`Patent Owner
`__________
`
`Case IPR2016-01004
`Patent 7,055,169
`__________
`
`JOINT MOTION TO TERMINATE PROCEEDING
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2016-01004
`U.S. Patent No. 7,055,169
`
`INTRODUCTION
`
`Petitioner Apple Inc., Patent Owner parent Kudelski S.A., and third party
`
`RPX Corporation have made five agreements that, taken together, resolve all
`
`underlying disputes between the parties, including this proceeding. In an Order
`
`dated July 18, 2016 (Paper 6), the Board authorized the parties to file upon
`
`completion of a settlement a joint motion to terminate and a joint request to file
`
`settlement agreement as business confidential information. As required by the
`
`Board, the parties are submitting true copies of the five agreements along with this
`
`joint motion to terminate and a joint request to file settlement agreement as
`
`business confidential information:
`
` Patent License Agreement between Apple and Kudelski (Ex. 2001)
`
` Patent License Agreement between Kudelski and RPX (Ex. 2002)
`
` Letter Agreement between Kudelski, RPX, and Apple (Ex. 2003)
`
` Letter Agreement No. 2 between Kudelski and Apple (Ex. 2004)
`
` Agreement between Apple and RPX (Ex. 1117)
`
`Both parties have access to the Patent License Agreement between Apple
`
`and Kudelski; the Letter Agreement between 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
`
`1
`
`
`
`
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`shared with Petitioner. Also, the Agreement between Apple and RPX cannot be
`
`
`
`IPR2016-01004
`U.S. Patent No. 7,055,169
`
`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. Indeed, it would be contrary to the intent of the parties and the
`
`express confidentiality provision of those two agreements for Petitioner or Patent
`
`Owner to have access to all of them.
`
`The parties jointly certify that aside from the five agreements the parties are
`
`filing, there are no collateral agreements or understandings made in connection
`
`with, or in contemplation of, the termination of this proceeding. Although other
`
`agreements exist, none of them relates to the termination of this proceeding.
`
`STATUS OF PROCEEDINGS
`
`The following are the only proceedings either between the parties in the
`
`United States or that involve the subject patent.
`
`
`
`
`
`2
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`
`
`IPR2016-01004
`
`U.S. Patent No. 7,055,169
`
`District Court Case
`0penTV, Inc. et al. v.
`
`U.S. Patent Nos.
`The parties have filed a joint
`5,689,799
`
`Apple Inc., Case No.
`
`3:14-cv-01622 (N.D.
`
`Cal.)
`
`0penTV, Inc. et al. v.
`Apple Inc., Case No.
`5:15—cV—02008 (N.D.
`Cal.)
`
`Time Warner Cable Inc.
`
`v. 0penTV, Inc., Case No.
`3:16—cV—02433 (N.D.
`Cal.)
`
`Yahoo! Inc. v. Kudelski
`
`5,884,033
`
`5,566,287
`
`6,985,586
`
`7,900,229
`
`6,148,081
`
`6,233,736
`
`7,055,169
`
`7,644,429
`
`7,725,740
`
`5,907,322
`
`6,530,082
`
`6,678,463
`
`6,895,595
`
`6,985,586
`
`7,055,169
`
`7,243,139
`
`7,536,704
`
`7,669,212
`
`6,148,081
`
`SA et al., Case No. 5:16-
`
`6,233,736
`
`cV—00349 (N.D. Cal.)
`
`6,758,754
`
`7,028,327
`
`7,055,169
`
`7,243,139
`
`7,409,437
`
`7,444,656
`
`7,752,642
`
`7,900,229
`
`motion to dismiss this litigation-
`
`The parties have filed a joint
`
`motion to dismiss this litigation-
`
`The Complaint was not served,
`
`and a notice of voluntary
`
`dismissal was filed August 2,
`
`20 1 6.
`
`This case was dismissed with
`
`prejudice on May 27, 2016 in
`
`View of a settlement between the
`
`parties.
`
`
`
`
`
`IPR2016-01004
`U.S. Patent No. 7,055,169
`
`This case was dismissed with
`prejudice on March 17, 2016 in
`view of a settlement between the
`parties.
`
`This case was transferred to N.D.
`Cal. (see Case No. 3:14-cv-
`01525 below) and later
`dismissed without prejudice on
`February 11, 2015 in view of a
`settlement between the parties.
`
`This case was dismissed without
`prejudice on February 11, 2015
`in view of a settlement between
`the parties.
`
`This case was dismissed without
`prejudice on February 11, 2015
`in view of a settlement between
`the parties.
`
`
`
`OpenTV, Inc. et al. v.
`Verizon Commc’ns, Inc.
`et al., Case No. 6:15-cv-
`00951 (E.D. Tex.)
`
`OpenTV Inc. v. Netflix,
`Inc., Case No. 1:12-cv-
`01733 (D. Del.)
`
`OpenTV Inc. v. Netflix,
`Inc., Case No. 3:14-cv-
`01525 (N.D. Cal.)
`
`OpenTV Inc. et al. v.
`Netflix, Inc., Case No.
`3:14-cv-01723 (N.D.
`Cal.)
`
`
`
`6,018,768
`6,233,736
`6,678,463
`7,055,169
`7,243,139
`7,900,229
`RE40,334
`
`6,018,768
`6,233,736
`7,055,169
`7,409,437
`7,490,346
`7,949,722
`8,107,786
`
`6,018,768
`6,233,736
`7,055,169
`7,409,437
`7,490,346
`7,949,722
`8,107,786
`
`6,018,768
`6,233,736
`7,055,169
`7,305,691
`7,409,437
`7,490,346
`7,644,429
`7,949,722
`8,107,786
`8,332,268
`8,621,541
`
`
`4
`
`
`
`IPR2016-01004
`
`U.S. Patent No. 7,055,169
`
`Pm case
`IPR20l5—00969
`
`us. Patent No. m
`5,884,033
`Joint motion to terminate being
`
`IPR2015-00971
`
`6,985,586
`
`Joint motion to terminate being
`
`filed on the same day as this
`
`joint motion to terminate.
`
`filed on the same day as this
`
`joint motion to terminate.
`
`IPR2015-00980
`
`5,566,287
`
`Joint motion to terminate being
`
`filed on the same day as this
`
`joint motion to tenninate.
`
`IPR20] 5-0103 1
`
`7,900,229
`
`Joint motion to terminate being
`
`filed on the same day as this
`
`joint motion to terminate.
`
`IPR2016-00961
`
`7,725,740
`
`Joint motion to terminate being
`
`filed on the same day as this
`
`joint motion to terminate.
`
`IPR2016-00971
`
`6,148,081
`
`Joint motion to terminate being
`
`filed on the same day as this
`
`joint motion to tenninate.
`
`IPR20l6—00992
`
`6,233,736
`
`Joint motion to terminate being
`
`filed on the same day as this
`
`joint motion to terminate.
`
`CBM2016—00066
`
`7,055,169
`
`Joint motion to terminate being
`
`filed on the same day as this
`
`joint motion to terminate.
`
`There are no other pending proceedings involving the subject patent- The
`
`Board requested that Patent Owner advise the Board whether any litigation or
`
`proceeding involving the subject patent is contemplated in the foreseeable future.
`
`Whether or not anything is contemplated, Patent Owner cannot do so without
`
`disclosing confidential information regarding legal strategies and thus potentially
`
`U1
`
`
`
`
`
`waiving the attorney client privilege, and requests that the Board act on the motion
`
`
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`IPR2016-01004
`U.S. Patent No. 7,055,169
`
`without requiring such disclosure.
`
`RELIEF REQUESTED
`
`Petitioner and Patent Owner jointly request that the Board terminate this
`
`proceeding in its entirety. Termination is appropriate at this stage in view of the
`
`five agreements the parties are filing. The agreements end all patent disputes
`
`between the parties, including this proceeding.
`
`Both Congress and the federal courts have expressed a strong interest in
`
`encouraging settlement in litigation. See, e.g., Delta Air Lines, Inc. v. August, 450
`
`U.S. 346, 352 (1981) (“The purpose of [Federal Rule of Civil Procedure] 68 is to
`
`encourage the settlement of litigation.”); Bergh v. Dept. of Transp., 794 F.2d 1575,
`
`1577 (Fed. Cir. 1986) (“The law favors settlement of cases.”), cert. denied, 479
`
`U.S. 950 (1986). The U.S. Court of Appeals for the Federal Circuit also places a
`
`particularly strong emphasis on settlement. See Cheyenne River Sioux Tribe v.
`
`U.S., 806 F.2d 1046, 1050 (Fed. Cir. 1986) (noting that the law favors settlement to
`
`reduce antagonism and hostility between parties). Moreover, the Board generally
`
`expects that a proceeding will terminate after the filing of a settlement. See, e.g.,
`
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 46,768 (Aug. 14, 2012).
`
`Maintaining this proceeding after Petitioner’s settlement with Patent Owner
`
`would discourage future settlements by removing a primary motivation for
`
`6
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`settlement: eliminating litigation risk by resolving the parties’ disputes and ending
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`
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`IPR2016-01004
`U.S. Patent No. 7,055,169
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`the pending proceedings between them. For patent owners, litigation risks include
`
`the potential for an invalidity ruling against their patents. If a patent owner knows
`
`that an inter partes review or covered business method review will likely continue
`
`regardless of settlement, it creates a strong disincentive for the patent owner to
`
`settle.
`
`CONCLUSION
`
`For the foregoing reasons, Petitioner and Patent Owner jointly request that
`
`the Board terminate this proceeding in its entirety.
`
`
`
`
`
`
`
`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.
`
`
`
`7
`
`Dated: August 4, 2016
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`
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`CERTIFICATE OF SERVICE
`The undersigned hereby certifies that a copy of the foregoing JOINT
`
`MOTION TO TERMINATE PROCEEDING was served via e-mail on counsel
`
`of record for the Petitioner on August 4, 2016 at the following addresses:
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`Ryan K. Yagura
`ryagura@omm.com
`Brian M. Cook
`bcook@omm.com
`John Kevin Murray
`kmurray2@omm.com
`Clarence A. Rowland
`crowland@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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`Dated: August 4, 2016
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