`571-272-7822
`
`
`
`
`
`Paper No. 12
`Filed: April 28, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`NETFLIX, INC. and ROKU, INC.,
`Petitioner,
`
`v.
`
`CONVERGENT MEDIA SOLUTIONS, LLC,
`Patent Owner.
`____________
`
`Case IPR2016-01761
`Patent 8,850,507 B2
`____________
`
`
`
`Before JAMESON LEE, KEN BARRETT, and
`JOHN F. HORVATH, Administrative Patent Judges.
`
`HORVATH, Administrative Patent Judge.
`
`ORDER
`Conduct of Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`
`
`IPR2016-01761
`Patent 8,850,507 B2
`
`
`I.
`
`INTRODUCTION
`
`On April 3, 2017, AT&T Services (“AT&T”) filed a petition
`
`challenging claims 1–17 of U.S. Patent No. 8,850,507 B2 on the same
`
`grounds raised in the Petition in this case against those claims, and a motion
`
`to join that proceeding with this proceeding. AT&T Service, Inc. v.
`
`Convergent Media Solutions, LLC, Case IPR2017-01235 (PTAB Apr. 3,
`
`2017) (Papers 1, 3) (hereafter, “the related petition”).
`
`On April 24, 2017, Netflix, Inc. and Roku Inc. (“Petitioner,”
`
`“Netflix/Roku”) and Patent Owner jointly requested authorization to file
`
`(1) a joint motion to terminate this proceeding, and (2) a request for
`
`confidential treatment of settlement papers pursuant to 37 CFR §42.74(c).
`
`On April 25, 2017, Judges Lee, Barrett, and Horvath conducted a
`
`conference call with counsel for AT&T, Netflix/Roku, and Convergent
`
`Media Solutions, LLC (“CMS”). On the call were Mr. Bernstein and
`
`Mr. Ng for Netflix/Roku, Mr. Pankratz for AT&T, and Mr. Bumgardner for
`
`CMS. During the call, the Board identified an approaching deadline for
`
`filing an opposition to AT&T’s motion for joinder, and asked whether
`
`Netflix/Roku intended to file an opposition to the motion. Mr. Bernstein
`
`indicated he would need to consult with Petitioner prior to answering the
`
`Board’s inquiry. On April 26, 2017, Mr. Bernstein emailed the Board
`
`indicating that Petitioner will not be filing an opposition to AT&T’s motion
`
`for joinder.
`
`The parties’ request to file a joint motion to terminate this proceeding is
`
`hereby granted.
`
`2
`
`
`
`IPR2016-01761
`Patent 8,850,507 B2
`
`
`II. DISCUSSION
`
`A joint motion for termination should (1) include a brief explanation
`
`as to why termination is appropriate; (2) identify all parties in any related
`
`litigation involving the patent at issue in this proceeding; (3) identify any
`
`related proceedings currently before the USPTO; and (4) discuss specifically
`
`the current status of each such related litigation or proceeding with respect to
`
`each party to the litigation or proceeding. The joint motion for termination
`
`must be accompanied by a true copy of the settlement agreement between
`
`the parties, as required by 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b). A
`
`redacted version will not be accepted as a true copy of the settlement
`
`agreement.
`
`It is hereby:
`
`III. ORDER
`
`ORDERED that the parties are authorized to file a joint motion to
`
`terminate this proceeding in accordance with 37 C.F.R. § 42.20; and
`
`FURTHER ORDERED that the parties are authorized to file a request
`
`for confidential treatment of settlement papers pursuant to 37 C.F.R.
`
`§42.74(c).
`
`
`
`
`
`
`
`3
`
`
`
`4
`
`IPR2016-01761
`Patent 8,850,507 B2
`
`
`For PETITIONER:
`
`Chun Ng
`Patrick McKeever
`Vinay Sathe
`Miguel Bombach
`Kevin Kantharia
`Matthew Bernstein
`cng@perkinscoie.com
`pmckeever@perkinscoie.com
`vsathe@perkinscoie.com
`mbombach@perkinscoie.com
`kkantharia@perkinscoie.com
`mbernstein@perkinscoie.com
`
`
`
`For PATENT OWNER:
`
`Matthew Juren
`Barry Bumgardner
`matthew@nelbum.com
`barry@nelbum.com
`
`
`
`