Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`
`Paper 72
`Date: December 7, 2021
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`DISH NETWORK L.L.C., AT&T SERVICES, INC.,
`and DIRECTV, LLC,1
`Petitioner,
`
`v.
`
`BROADBAND iTV, INC.,
`Patent Owner.
`____________
`
`IPR2020-01267 (Patent 10,028,026 B2)
`IPR2020-01280 (Patent 9,998,791 B2)
`IPR2020-01359 (Patent 9,648,388 B2)
`____________
`
`
`
`Before JEFFREY S. SMITH, JUSTIN T. ARBES, and
`DANIEL J. GALLIGAN, Administrative Patent Judges.
`
`ARBES, Administrative Patent Judge.
`
`
`ORDER
`Settlement as to DISH Network L.L.C.
`35 U.S.C. § 317; 37 C.F.R. § 42.74
`
`
`
`
`1 AT&T Services, Inc. and DIRECTV, LLC filed a motion for joinder and a
`petition in Cases IPR2021-00556, IPR2021-00603, and IPR2021-00649,
`which were granted, and, therefore, have been joined as petitioners in these
`proceedings.
`
`
`Tel: 571-272-7822
`
`
`
`
`
`Paper 72
`Date: December 7, 2021
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`DISH NETWORK L.L.C., AT&T SERVICES, INC.,
`and DIRECTV, LLC,1
`Petitioner,
`
`v.
`
`BROADBAND iTV, INC.,
`Patent Owner.
`____________
`
`IPR2020-01267 (Patent 10,028,026 B2)
`IPR2020-01280 (Patent 9,998,791 B2)
`IPR2020-01359 (Patent 9,648,388 B2)
`____________
`
`
`
`Before JEFFREY S. SMITH, JUSTIN T. ARBES, and
`DANIEL J. GALLIGAN, Administrative Patent Judges.
`
`ARBES, Administrative Patent Judge.
`
`
`ORDER
`Settlement as to DISH Network L.L.C.
`35 U.S.C. § 317; 37 C.F.R. § 42.74
`
`
`
`
`1 AT&T Services, Inc. and DIRECTV, LLC filed a motion for joinder and a
`petition in Cases IPR2021-00556, IPR2021-00603, and IPR2021-00649,
`which were granted, and, therefore, have been joined as petitioners in these
`proceedings.
`
`
`
`IPR2020-01267 (Patent 10,028,026 B2)
`IPR2020-01280 (Patent 9,998,791 B2)
`IPR2020-01359 (Patent 9,648,388 B2)
`
`
`On December 2, 2021, Petitioner DISH Network L.L.C. (“DISH”) and
`Patent Owner Broadband iTV, Inc. filed, in each of the instant proceedings,
`a Joint Motion to Terminate on the basis of a settlement reached by DISH
`and Patent Owner. See Paper 68 (“Mot.”);2 35 U.S.C. § 317(a); 37 C.F.R.
`§§ 42.72, 42.74. The parties also filed a copy of their written settlement
`agreement (Exhibit 2200) as “Filing Party and Board Only” in the Board’s
`electronic filing system and filed a Joint Request (Paper 69) that the
`agreement be treated as business confidential information under 35 U.S.C.
`§ 317(b) and 37 C.F.R. § 42.74(c).
`DISH and Patent Owner represent that they will file a motion to
`dismiss the related district court case between them involving the challenged
`patents “in accordance with the terms of the Settlement Agreement.”
`Mot. 2. DISH and Patent Owner further represent that “their entire
`agreement in connection with the termination of this proceeding is embodied
`in the Settlement Agreement, which has been made in writing,” and “[t]here
`are no other agreements, oral or written, between DISH and [Patent Owner]
`made in connection with, or in contemplation of, the termination of [the
`instant proceedings] with respect to the parties.” Id. at 3–4. Under these
`circumstances, we determine that it is appropriate to terminate the instant
`proceedings with respect to DISH. See 37 C.F.R. §§ 42.72, 42.74; Mot. 1
`(“This Motion to Terminate is with respect only to Petitioner DISH Network
`
`
`2 The parties filed similar documents in each of the instant proceedings. See
`IPR2020-01267, Papers 68, 69, Ex. 2200; IPR2020-01280, Papers 59, 60,
`Ex. 2200; IPR2020-01359, Papers 55, 56, Ex. 2200. We refer to those filed
`in Case IPR2020-01267 for convenience.
`2
`
`
`
`IPR2020-01267 (Patent 10,028,026 B2)
`IPR2020-01280 (Patent 9,998,791 B2)
`IPR2020-01359 (Patent 9,648,388 B2)
`
`L.L.C., and no other Petitioner Party.”). The proceedings shall continue
`with respect to AT&T Services, Inc. and DIRECTV, LLC (collectively,
`“Petitioner”), who previously were joined as parties, under the terms set
`forth in Petitioner’s motion for joinder and our decision granting the motion
`for joinder in each proceeding.3 See IPR2020-01267, Paper 46;
`IPR2020-01280, Paper 49; IPR2020-01359, Paper 45.
`In consideration of the foregoing, it is hereby:
`ORDERED that the parties’ requests that the settlement agreement
`(Exhibit 2200) between DISH and Patent Owner be treated as business
`confidential information, kept separate from the files of U.S. Patent
`Nos. 10,028,026 B2, 9,998,791 B2, and 9,648,388 B2, and made available
`only to Federal Government agencies on written request, or to any person on
`a showing of good cause, under 35 U.S.C. § 317(b) and 37 C.F.R.
`§ 42.74(c), are granted;
`FURTHER ORDERED that the Joint Motion to Terminate as to DISH
`in each of the instant proceedings is granted; and
`FURTHER ORDERED that, for all future filings, the case caption in
`the instant proceedings shall be changed to remove DISH Network L.L.C.
`
`
`3 The remaining parties are reminded that, pursuant to 35 U.S.C. § 317(a),
`an inter partes review shall be terminated upon a joint request of the
`petitioner and patent owner “unless the Office has decided the merits of the
`proceeding before the request for termination is filed.”
`3
`
`
`
`IPR2020-01267 (Patent 10,028,026 B2)
`IPR2020-01280 (Patent 9,998,791 B2)
`IPR2020-01359 (Patent 9,648,388 B2)
`
`FOR PETITIONER DISH NETWORK L.L.C.:
`
`Alyssa Caridis
`K. Patrick Herman
`Clement Roberts
`Will Melehani
`ORRICK, HERRINGTON & SUTCLIFFE LLP
`a8cptabdocket@orrick.com
`p52ptabdocket@orrick.com
`
`FOR PETITIONERS AT&T SERVICES, INC. and DIRECTV, LLC:
`
`Robert Fulghum
`Jeffery S. Becker
`Morgan G. Mayne
`BAKER BOTTS L.L.P.
`roger.fulghum@bakerbotts.com
`jeff.becker@bakerbotts.com
`morgan.grissum@bakerbotts.com
`
`
`
`
`
`4
`
`
`
`IPR2020-01267 (Patent 10,028,026 B2)
`IPR2020-01280 (Patent 9,998,791 B2)
`IPR2020-01359 (Patent 9,648,388 B2)
`
`FOR PATENT OWNER:
`
`Sal Lim
`David Alberti
`Hong Lin
`Russell Tonkovich
`FEINBERG DAY KRAMER ALBERTI LIM TONKOVICH
`& BELLOLI LLP
`slim@feinday.com
`dalberti@feinday.com
`hlin@feinday.com
`rtonkovich@feinday.com
`
`Michael D. Specht
`Jason A. Fitzsimmons
`Richard M. Bemben
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`mspecht-ptab@sternekessler.com
`jfitzsimmons-ptab@sternekessler.com
`rbemben-ptab@sternekessler.com
`
`Kevin Greenleaf
`DENTONS US LLP
`kevin.greenleaf@dentons.com
`
`
`
`
`5
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
