Trials@uspto.gov
`571.272.7822
`
`
` Paper No. 6
` Entered: June 15, 2022
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ROKU, INC.,
`Petitioner,
`
`v.
`
`MEDIA CHAIN LLC,
`Patent Owner.
`____________
`
`IPR2022-00389 (Patent 9,715,581 B1)
`IPR2022-00390 (Patent 9,898,590 B2)
`IPR2022-00391 (Patent 10,489,560 B2)
`IPR2022-00392 (Patent 10,515,191 B2)
` IPR2022-00393 (Patent 10,860,691 B2)
`IPR2022-00394 (Patent 10,885,154 B2)1
`____________
`
`
`
`Before JUSTIN T. ARBES, TERRENCE W. McMILLIN, DANIEL J.
`GALLIGAN, and SCOTT RAEVSKY, Administrative Patent Judges.2
`
`McMILLIN, Administrative Patent Judge.
`
`
`DECISION
`Settlement Prior to Institution of Trial
`37 C.F.R. § 42.74
`
`
`1 This Decision applies to all of the above-listed proceedings. We exercise
`our discretion to issue one order to be filed in each case. The parties are not
`authorized to use this style heading.
`2 This is not an expanded panel. Each of the listed judges is part of a three-
`judge panel assigned to the listed proceedings.
`
`
`
`
`571.272.7822
`
`
` Paper No. 6
` Entered: June 15, 2022
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ROKU, INC.,
`Petitioner,
`
`v.
`
`MEDIA CHAIN LLC,
`Patent Owner.
`____________
`
`IPR2022-00389 (Patent 9,715,581 B1)
`IPR2022-00390 (Patent 9,898,590 B2)
`IPR2022-00391 (Patent 10,489,560 B2)
`IPR2022-00392 (Patent 10,515,191 B2)
` IPR2022-00393 (Patent 10,860,691 B2)
`IPR2022-00394 (Patent 10,885,154 B2)1
`____________
`
`
`
`Before JUSTIN T. ARBES, TERRENCE W. McMILLIN, DANIEL J.
`GALLIGAN, and SCOTT RAEVSKY, Administrative Patent Judges.2
`
`McMILLIN, Administrative Patent Judge.
`
`
`DECISION
`Settlement Prior to Institution of Trial
`37 C.F.R. § 42.74
`
`
`1 This Decision applies to all of the above-listed proceedings. We exercise
`our discretion to issue one order to be filed in each case. The parties are not
`authorized to use this style heading.
`2 This is not an expanded panel. Each of the listed judges is part of a three-
`judge panel assigned to the listed proceedings.
`
`
`
`
`
`IPR2022-00389 (Patent 9,715,581 B1)
`IPR2022-00390 (Patent 9,898,590 B2)
`IPR2022-00391 (Patent 10,489,560 B2)
`IPR2022-00392 (Patent 10,515,191 B2)
`IPR2022-00393 (Patent 10,860,691 B2)
`IPR2022-00394 (Patent 10,885,154 B2)
`
`INTRODUCTION
`I.
`On June 1, 2022, with our authorization, Petitioner, Roku, Inc., filed
`Unopposed Motions to Dismiss the Petitions for Inter Partes Review in the
`above-referenced proceedings (collectively, “Unopposed Motions”).
`Paper 4.3 Along with the Unopposed Motions, Petitioner filed copies of a
`Settlement Agreement between the Parties (Ex. 1100), as well as Unopposed
`Requests to File Settlement Agreement as Business Confidential Information
`Pursuant to 35 U.S.C. § 317(b) (collectively, “Unopposed Requests to Keep
`Settlement Agreement Confidential”). Paper 5.
`II. DISCUSSION
`In the Unopposed Motions, Petitioner represents that “[t]he parties
`have settled all disputes relating to the challenged patent[s].” Paper 4, 2.
`Petitioner also represents that the parties have agreed to terminate the district
`court litigation between the parties associated with the challenged patents
`and that “[t]he parties do not contemplate any other litigation or proceeding
`between the parties concerning the [challenged] patent[s] in the foreseeable
`future.” Id.
`With regard to the Settlement Agreement (Ex. 1100), the Unopposed
`Motions state:
`Petitioner is filing herewith as Exhibit 1100 a true copy
`of the confidential settlement agreement entered between the
`parties. See 37 C.F.R. § 42.74(c). The confidential settlement
`
`3 All citations are to the record in IPR2022-00389 as the pertinent papers and
`exhibits in all six proceedings have substantially the same substantive
`content.
`
`2
`
`
`
`IPR2022-00389 (Patent 9,715,581 B1)
`IPR2022-00390 (Patent 9,898,590 B2)
`IPR2022-00391 (Patent 10,489,560 B2)
`IPR2022-00392 (Patent 10,515,191 B2)
`IPR2022-00393 (Patent 10,860,691 B2)
`IPR2022-00394 (Patent 10,885,154 B2)
`
`agreement was entered into in contemplation of the dismissal of
`the Petition. There are no collateral agreements or
`understandings made in connection with, or in contemplation
`of, the dismissal of the Petition. See 37 C.F.R. § 42.74(b).
`
`Id. at 1–2. Further, in the Unopposed Requests to Keep Settlement
`Agreement Confidential, Petitioner requests that the Settlement Agreement
`be treated as business confidential information and be kept separate from the
`files of the respective patents involved in the above-identified inter partes
`review proceedings. Paper 5, 1.
`In the Unopposed Requests to Keep Settlement Agreement
`Confidential, Petitioner additionally requests “that the Board order that in
`the event a person or entity makes a written request for access to the
`settlement agreement, . . . any such written request be served upon Petitioner
`and Patent Owner on the day the written request is provided to the Board.”
`Paper 5, 1. We have no such procedure to serve upon the parties a request
`for access to the Agreement, and, further, our regulations do not require us
`to do so. Therefore, we decline to issue an order regarding requiring that
`any requests to access the Settlement Agreement be served upon any of the
`parties.
`Patent Owner has not properly appeared in any of these proceedings.
`Patent Owner was required by 37 C.F.R. § 42.8 to file with the Board within
`21 days of service of the Petitions its mandatory notices. As the Petitions
`were filed and served on January 10, 2022 (see Paper 2, attached un-
`numbered page titled Certification of Service (37 C.F.R. §§ 42.6(e),
`42.105(a)), Patent Owner’s mandatory notices are long overdue but have not
`
`3
`
`
`
`IPR2022-00389 (Patent 9,715,581 B1)
`IPR2022-00390 (Patent 9,898,590 B2)
`IPR2022-00391 (Patent 10,489,560 B2)
`IPR2022-00392 (Patent 10,515,191 B2)
`IPR2022-00393 (Patent 10,860,691 B2)
`IPR2022-00394 (Patent 10,885,154 B2)
`
`been filed. Pursuant to 37 C.F.R. § 42.10(b), “[a] power of attorney must be
`filed with the designation of counsel.” Patent Owner has not filed a power
`of attorney in any of these proceedings or otherwise designated or identified
`counsel.
`
`At the request of Christopher A. Estes, who represented to us that he
`is the Managing Partner of Media Chain LLC (Patent Owner), a
`teleconference was held in these proceedings on May 31, 2022, including
`Mr. Estes, Petitioner’s counsel Lestin L. Kenton,4 and the Board. The Board
`informed Mr. Estes that mandatory notices and designation or identification
`of counsel were required and long overdue. Mr. Estes indicated that he was
`aware of the settlement of the litigation, had been provided with copies of
`the Unopposed Motions and the Unopposed Requests to Keep Settlement
`Agreement Confidential,5 and wished the Board to terminate these
`proceedings.
`We determine that Patent Owner has been provided with notice of
`these proceedings, has failed to comply with 37 C.F.R. § 42.8 by failing to
`file its mandatory notices, and has waived its right to appear in these
`proceedings.6
`
`4 Mr. Kenton agreed to provide a copy of this Decision to Mr. Estes. This
`courtesy is appreciated.
`5 In addition, the Unopposed Motions and the Unopposed Requests to Keep
`Settlement Agreement Confidential each include a “Certification of Service”
`certifying that true and correct copies were sent by email to Mr. Estes.
`Paper 4, un-numbered last page; Paper 5, un-numbered last page.
`6 However, even in the absence of this waiver, our determination to
`terminate these proceedings would be the same.
`
`4
`
`
`
`IPR2022-00389 (Patent 9,715,581 B1)
`IPR2022-00390 (Patent 9,898,590 B2)
`IPR2022-00391 (Patent 10,489,560 B2)
`IPR2022-00392 (Patent 10,515,191 B2)
`IPR2022-00393 (Patent 10,860,691 B2)
`IPR2022-00394 (Patent 10,885,154 B2)
`
`These proceedings are at an early stage, and we have not yet decided
`whether to institute a trial in any of these proceedings. Petitioner moves to
`dismiss these proceedings, and Patent Owner has failed to properly appear in
`any of these proceedings. Further, both Petitioner and Mr. Estes desire that
`these proceedings be terminated. And Petitioner represents that “Petitioner
`and Patent Owner have agreed to terminate [the district court] litigation
`pursuant to their confidential settlement agreement.” Paper 4, 2. Under
`these circumstances, it is appropriate to terminate these proceedings and not
`institute trial in any of these proceedings.
`Further, we find that the Settlement Agreement contains confidential
`business information regarding the terms of settlement. We determine that
`good cause exists to treat the Settlement Agreement as business confidential
`information and to keep the Settlement Agreement separate from the files of
`the patents in the above-identified inter partes review proceedings pursuant
`to 37 C.F.R. § 42.74(c).
`Finally, we want to provide Patent Owner with an additional
`opportunity to appear in these proceedings by filing mandatory notices and
`designating or identifying counsel. And, if Patent Owner avails itself of the
`opportunity to properly appear in any of these proceedings, we want to
`provide Patent Owner with the opportunity to object or otherwise respond to
`this Decision and the Unopposed Motions to Dismiss and the Unopposed
`
`5
`
`
`
`IPR2022-00389 (Patent 9,715,581 B1)
`IPR2022-00390 (Patent 9,898,590 B2)
`IPR2022-00391 (Patent 10,489,560 B2)
`IPR2022-00392 (Patent 10,515,191 B2)
`IPR2022-00393 (Patent 10,860,691 B2)
`IPR2022-00394 (Patent 10,885,154 B2)
`
`Requests to Keep Settlement Agreement Confidential.7
`This Order does not constitute a final written decision pursuant to
`35 U.S.C. § 318(a).
`
`III. ORDER
`Accordingly, for the reasons discussed above, it is:
`ORDERED that the Unopposed Motions to Dismiss the Petitions for
`Inter Partes Review in IPR2022-00389, IPR2022-00390, IPR2022-00391,
`IPR2022-00392, IPR2022-00393, and IPR2022-00394 are granted, and the
`aforementioned proceedings are terminated;
`FURTHER ORDERED that the Unopposed Requests to Keep
`Settlement Agreement Confidential are granted, and the Settlement
`Agreement (Ex. 1100) shall be kept separate from the files of the challenged
`patents and made available only to Federal Government agencies on written
`request, or to any person on a showing of good cause, pursuant to 37 C.F.R.
`§ 42.74(c); and
`FURTHER ORDERED that Patent Owner shall have thirty (30) days
`from the date of this Decision to file its mandatory notices and designate or
`otherwise identify counsel in each of these proceedings and that, upon doing
`so, Patent Owner is authorized to file a request for rehearing of this
`Decision.
`
`
`
`
`
`7 We direct Patent Owner’s attention to 37 C.F.R. § 42.71(d) that provides
`“[a] party dissatisfied with a decision may file a single request for rehearing
`. . . [w]ithin 30 days of the entry of . . . a decision not to institute a trial.”
`
`6
`
`
`
`IPR2022-00389 (Patent 9,715,581 B1)
`IPR2022-00390 (Patent 9,898,590 B2)
`IPR2022-00391 (Patent 10,489,560 B2)
`IPR2022-00392 (Patent 10,515,191 B2)
`IPR2022-00393 (Patent 10,860,691 B2)
`IPR2022-00394 (Patent 10,885,154 B2)
`
`
`
`
`PETITIONER:
`
`Lestin Kenton
`Jon Wright
`Nirav Desai
`Richard Crudo
`Tim Tang
`
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`lkenton-ptab@sternekessler.com
`
`jwright-ptab@sternekessler.com
`
`ndesai-ptab@sternekessler.com
`rcrudo-ptab@sternekessler.com
`ttang-ptab@sternekessler.com
`
`PATENT OWNER:
`
`THE BRICKELL IP GROUP PLLC
`1101 Brickell Avenue
`South Tower
`Suite 800
`Miami, FL 33131
`
`WOOD, HERRON & EVANS, LLP
`2700 CAREW TOWER
`441 VINE STREET
`CINCINNATI OH 45202
`UNITED STATES
`
`
`7
`
`
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
