Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`
`Paper 75
`Date: December 15, 2021
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`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.
`
`GALLIGAN, Administrative Patent Judge.
`
`
`TERMINATION
`Due to Settlement After Institution of Trial
`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 75
`Date: December 15, 2021
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`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.
`
`GALLIGAN, Administrative Patent Judge.
`
`
`TERMINATION
`Due to Settlement After Institution of Trial
`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 14, 2021, Petitioner AT&T Services, Inc. and
`
`DIRECTV, LLC2 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 Petitioner and Patent Owner. Paper 73 (“Mot.”);3 see
`
`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 2300) as “Filing Party and
`
`Board Only” in the Board’s electronic filing system and filed a Joint Request
`
`(Paper 74) that the agreement be treated as business confidential information
`
`under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).
`
`Petitioner and Patent Owner represent that they will file a motion to
`
`dismiss the related district court cases between them involving the
`
`challenged patents. Mot. 2. Petitioner 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
`
`[Petitioner] and [Patent Owner] made in connection with, or in
`
`contemplation of, the termination of this proceeding.” Id. at 4. Under these
`
`circumstances, we determine that it is appropriate to terminate these inter
`
`
`
`2 These proceedings were terminated as to Petitioner DISH Network L.L.C.
`on December 7, 2021. IPR2020-01267, Paper 72; IPR2020-01280, Paper
`62; IPR2020-01359, Paper 58.
`3 The parties filed similar documents in each of the instant proceedings. See
`IPR2020-01267, Papers 73, 74, Ex. 2300; IPR2020-01280, Papers 63, 64,
`Ex. 2300; IPR2020-01359, Papers 59, 60, Ex. 2300. 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)
`
`partes reviews without issuing a final written decision. See
`
`35 U.S.C. § 317(a); 37 C.F.R. §§ 42.72, 42.74.
`
`Finally, we note that a portion of the hearing in Case IPR2020-01267
`
`was closed to the public due to the discussion of confidential information.
`
`See IPR2020-01267, Papers 56, 70, 71. Patent Owner shall file a redacted
`
`version of the confidential portion of the hearing transcript (Paper 70)
`
`redacting only discussion pertaining to material for which a motion to seal
`
`was granted in the proceeding. See IPR2020-01267, Papers 57, 63.
`
`In consideration of the foregoing, it is hereby:
`
`ORDERED that Patent Owner shall file, as “Public” in the Board’s
`
`electronic filing system, by December 22, 2021, a redacted version of the
`
`confidential portion of the hearing transcript in Case IPR2020-01267;
`
`FURTHER ORDERED that the parties’ requests that the settlement
`
`agreement (Exhibit 2300) between Petitioner 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 Motions to Terminate are
`
`granted, and the proceedings are terminated; and
`
`FURTHER ORDERED that this paper does not constitute a final
`
`written decision pursuant to 35 U.S.C. § 318(a).
`
`
`
`
`
`3
`
`
`
`IPR2020-01267 (Patent 10,028,026 B2)
`IPR2020-01280 (Patent 9,998,791 B2)
`IPR2020-01359 (Patent 9,648,388 B2)
`
`
`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
`
`
`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
`
`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
`
`
`
`
`4
`
`
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
