`571-272-7822
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`Paper No. 15
`Entered: August 25, 2016
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APPLEINC.,
`Petitioner,
`
`V.
`
`OPENTV,INC.,
`Patent Owner.
`
`Case IPR2016-00992
`Patent 6,233,736 Bl
`
`Before JAMESON LEE, SALLY C. MEDLEY,and
`MICHAELR. ZECHER,Administrative Patent Judges.
`
`MEDLEY,Administrative Patent Judge.
`
`JUDGMENT
`Granting Joint Motion to Terminate Proceeding and
`Granting Request to Treat Agreements as Business Confidential Information
`37 CFR. §§ 42.72 and 42.74
`
`
`
`IPR2016-00992
`Patent 6,233,736 Bl
`
`I.
`
`INTRODUCTION
`
`On August 4, 2016, the parties filed a Joint Motion to Terminate
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`Proceeding (Paper8, “Mot.”), and a joint request to treat the settlement
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`agreements as business confidential information under 35 U.S.C. § 317(b)
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`- and 37 C.F.R. § 42.74(c) (Paper 9). A conference call was held on August9,
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`2016, and we issued an Order on August 10, 2016 (Paper 11) instructing the
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`parties that they reduce to writing any agreementor understanding between
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`them in contemplation of termination. We observed that none ofthe
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`agreements filed by the parties on August 4, 2016,i.e., Exhibits 1017, 2001,
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`2002, 2003, and 2004, reflects any understanding betweenthe Petitioner and
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`the Patent Owner. Paper 11, 2. We also observed that Exhibits 2001 and
`2002 appear to be incomplete. Jd. at 2-3.
`.
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`On August 19, 2016, the parties filed Exhibit 2005, which is a writing
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`reflecting an understanding between the Petitioner and Patent Ownerin
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`contemplation of termination of proceeding, and a joint requestto treat this
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`exhibit as confidential business information under 35 U.S.C. § 317(b) and
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`37 C.F.R. § 42.74(c) (Paper 13). Also on August 17, 2016, the partiesfiled
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`replacement copies of Exhibits 2001 and 2002. Further on August 17, 2016,
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`Patent Ownerfiled an updated Mandatory Notice to identify its parent
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`entities and to list additional real parties in interest. Paper 12.
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`Il.
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`DISCUSSION
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`The parties represent in the Joint Motion to Terminate Proceeding that
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`the filed agreements “end all patent disputes betweenthe parties, including
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`this proceeding.” Mot. 6. The parties also indicate that all related district
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`IPR2016-00992
`Patent 6,233,736 Bl
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`court cases involving U.S. Patent No. 6,233,736 B1 have either been
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`dismissed or are subject to pending joint motions to terminate. Jd. at 3-5.
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`This proceedingis still in a preliminary stage. Patent Ownerhas yet
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`to file a Preliminary Response and we have yet to decide whetherto institute
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`a trial. Under the circumstances presented here, we determinethatit is
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`appropriate to terminate this proceeding with respect to both Petitioner and
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`Patent Owner without rendering any further decisions. See 37 C.F.R.
`
`§ 42.72.
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`II. ORDER
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`It consideration of the foregoing,it is hereby
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`ORDEREDthatthe parties’ Joint Motion to Terminate Proceeding,
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`both as to Petitioner and Patent Owner,is granted;
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`FURTHER ORDEREDthatthe parties’ joint request (Paper9) to treat
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`Exhibits 1017, 2001, 2002, 2003, and 2004 as business confidential
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`information under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) is granted;
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`FURTHER ORDEREDthatthe parties’ joint request (Paper 13) to
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`treat Exhibit 2005 as business confidential information under 35 U.S.C.
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`§ 317(b) and 37 C.F.R. § 42.74(c) is granted;
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`FURTHER ORDEREDthatthe parties’ request to accept the filing of
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`Exhibits 1017 and 2002 underthe access category of “available only to
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`Board” in the Board’s electronic filing system is granted;' and
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`FURTHER ORDEREDthatthis proceeding is terminated with respect
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`to both Petitioner and Patent Owner.
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`| See Paper 11, 3.
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`
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`IPR2016-00992
`Patent 6,233,736 Bl
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`For PETITIONER:
`
`Mark E. Miller
`Ryan K. Yagura
`Anne FE. Huffsmith
`Brian M. Cook
`Xin-Yi Zhou
`John Kevin Murray
`O’Melveny & Myers LLP
`markmiller@omm.com
`ryagura@omm.com
`ahuffsmith@omm.com
`bcook@omm.com
`vzhou@omm.com
`kmurray2@omm.com
`
`For PATENT OWNER:
`
`Joshua L. Goldberg
`Erika H. Arner
`Daniel G. Chung
`Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
`josha.goldberg@finnegan.com
`erika.arner@finnegan.com
`daniel.chung@finnegan.com
`
`