`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
`
`