Trials
`Kent Shum; Trials
`Eliot.Williams@BakerBotts.com; jennifer.nall@bakerbotts.com; Jay Chung; nrubin@raklaw.com; Christopher
`Ponder; Jeffrey Liang; Harper Batts
`RE: Request to file motions: Case Nos. IPR2018-01090, -01195, -01169, -01170, -01187,, -01189 , -01227
`Monday, October 1, 2018 8:22:19 AM
`
`From:
`To:
`Cc:
`
`Subject:
`Date:
`
`Counsel,
`
`The Board has determined no call is necessary. The parties are hereby authorized to file
`concurrently in each case: (1) a Joint Motion to Terminate and (2) a Joint Request to File
`Settlement Agreement as Business Confidential Information Pursuant to 35 U.S.C. § 317(b).
`The parties shall file the Joint Motion and Joint Request no later than fifteen (15) days from
`the date of this authorization.
`
`The Joint Motion to Terminate shall refer to this authorization and must update the Board
`concerning the status of any litigation or proceeding involving the challenged patents. The
`Joint Motion to Terminate must advise the Board whether any litigation or proceeding
`involving the challenged patents is contemplated by the parties in the foreseeable future.
`
`The parties are reminded that “[a]ny agreement or understanding between the parties made in
`connection with, or in contemplation of, the termination of a proceeding shall be in writing
`and a true copy shall be filed with the Board before the termination of the trial.” See 37
`C.F.R. § 42.74(b). The Joint Motion to Terminate must include a statement certifying that the
`parties have complied fully with 37 C.F.R. § 42.74(b) by providing any such agreements or
`understandings, the agreements or understandings provided reflect final settlement and
`resolution of all disputes in this matter between the parties, and there are no other collateral
`agreements or understandings made in connection with, or in contemplation of, the
`termination sought. See 35 U.S.C. § 317(b); 37 C.F.R. § 42.74(b).
`
`Regards,
`
`Andrew Kellogg,
`Supervisory Paralegal
`Patent Trial and Appeal Board
`USPTO
`andrew.kellogg@uspto.gov
`Direct: 571-272-5366
`
`From: Kent Shum <kshum@raklaw.com>
`Sent: Wednesday, September 26, 2018 10:10 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: Eliot.Williams@BakerBotts.com; jennifer.nall@bakerbotts.com; Jay Chung
`<jchung@raklaw.com>; nrubin@raklaw.com; Christopher Ponder <CPonder@sheppardmullin.com>;
`Jeffrey Liang <JLiang@sheppardmullin.com>; Harper Batts <HBatts@sheppardmullin.com>
`Subject: Request to file motions: Case Nos. IPR2018-01090, -01195, -01169, -01170, -01187,, -01189
`, -01227
`
`Dear Sir/Madam:
`
`Ex. 3001
`
`

`

`
`Petitioners Hulu and Amazon, and Patent Owner Realtime, have reached a settlement and
`request permission to file Joint Motions to Terminate in the above-referenced IPRs.
`
`Specifically, in Case Nos. IPR2018-01090 and -01195, where Hulu is the sole petitioner, Hulu
`and Realtime request termination of the IPRs with respect to all parties. For Case Nos.
`IPR2018-01169, -01170, -01187, -01189, and -01227, where Hulu, Amazon, and Netflix are
`petitioners, Hulu, Amazon, and Realtime request termination of the IPRs with respect to Hulu
`and Amazon. Netflix will remain as a petitioner in those IPRs.
`
`Hulu, Amazon, and Realtime also seek permission to file Joint Requests to Keep Separate with
`respect to the confidential Settlement Agreements that will also be filed.
`
`Should the Board require a conference call, counsel for the parties are generally available this
`Friday between 9 a.m. and 5 p.m. (Pacific).
`
`
`Sincerely,
`
`Kent Shum
`Russ August & Kabat
`12424 Wilshire Boulevard, 12th Floor
`Los Angeles, CA 90025
`(310) 826-7474
`kshum@raklaw.com
`
`
`
`
`
`