`Tel: 571-272-7822
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`Paper 72
`Date: December 7, 2021
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`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
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`