`Tel: 571-272-7822
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`Paper 75
`Date: December 15, 2021
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`AT&T SERVICES, INC. and DIRECTV, LLC,1
`Petitioner,
`
`v.
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`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
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`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
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`DIRECTV, LLC2 and Patent Owner Broadband iTV, Inc. filed, in each of
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`the instant proceedings, a Joint Motion to Terminate on the basis of a
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`settlement reached by Petitioner and Patent Owner. Paper 73 (“Mot.”);3 see
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`35 U.S.C. § 317(a); 37 C.F.R. §§ 42.72, 42.74. The parties also filed a copy
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`of their written settlement agreement (Exhibit 2300) as “Filing Party and
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`Board Only” in the Board’s electronic filing system and filed a Joint Request
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`(Paper 74) that the agreement be treated as business confidential information
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`under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).
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`Petitioner and Patent Owner represent that they will file a motion to
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`dismiss the related district court cases between them involving the
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`challenged patents. Mot. 2. Petitioner and Patent Owner further represent
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`that “their entire agreement in connection with the termination of this
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`proceeding is embodied in the Settlement Agreement, which has been made
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`in writing,” and “[t]here are no other agreements, oral or written, between
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`[Petitioner] and [Patent Owner] made in connection with, or in
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`contemplation of, the termination of this proceeding.” Id. at 4. Under these
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`circumstances, we determine that it is appropriate to terminate these inter
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`
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`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
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`
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`IPR2020-01267 (Patent 10,028,026 B2)
`IPR2020-01280 (Patent 9,998,791 B2)
`IPR2020-01359 (Patent 9,648,388 B2)
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`partes reviews without issuing a final written decision. See
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`35 U.S.C. § 317(a); 37 C.F.R. §§ 42.72, 42.74.
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`Finally, we note that a portion of the hearing in Case IPR2020-01267
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`was closed to the public due to the discussion of confidential information.
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`See IPR2020-01267, Papers 56, 70, 71. Patent Owner shall file a redacted
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`version of the confidential portion of the hearing transcript (Paper 70)
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`redacting only discussion pertaining to material for which a motion to seal
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`was granted in the proceeding. See IPR2020-01267, Papers 57, 63.
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`In consideration of the foregoing, it is hereby:
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`ORDERED that Patent Owner shall file, as “Public” in the Board’s
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`electronic filing system, by December 22, 2021, a redacted version of the
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`confidential portion of the hearing transcript in Case IPR2020-01267;
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`FURTHER ORDERED that the parties’ requests that the settlement
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`agreement (Exhibit 2300) between Petitioner and Patent Owner be treated as
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`business confidential information, kept separate from the files of U.S. Patent
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`Nos. 10,028,026 B2, 9,998,791 B2, and 9,648,388 B2, and made available
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`only to Federal Government agencies on written request, or to any person on
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`a showing of good cause, under 35 U.S.C. § 317(b) and 37 C.F.R.
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`§ 42.74(c), are granted;
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`FURTHER ORDERED that the Joint Motions to Terminate are
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`granted, and the proceedings are terminated; and
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`FURTHER ORDERED that this paper does not constitute a final
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`written decision pursuant to 35 U.S.C. § 318(a).
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`
`3
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`
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`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
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`4
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