Trials@uspto.gov
`571.272.7822
`
`Paper No. 15
`Entered: May 11, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`NETFLIX, INC. and AT&T SERVICES, INC.,
`Petitioners,
`
`V.
`
`CONVERGENT MEDIA SOLUTIONS, LLC,
`
`Patent Owner.
`
`Case IPR2016-01814
`
`Case IPR2017-01237
`
`Patent 8,914,840 B21
`
`Before JAIVIESON LEE, KEN B. BARRETT, and JOHN F. HORVATH,
`
`Administrative Patent Judges.
`
`HORVATH, Administrative Patent Judge.
`
`ORDER
`
`Granting-impart Joint Motion to Terminate
`37 CFR. §42. 72
`
`and
`
`Granting Request to Treat Settlement Documents
`As Business Confidential Information
`
`37 C.F.R. § 42. 74(c)
`
`1 Case IPR2017-01237 has been joined to Case IPR2016-01814
`
`

`

`IPR2016-01814
`
`IPR2017-01237
`
`Patent 8,914,840 B2
`
`I.
`
`INTRODUCTION
`
`On May 1, 2017, Netflix, Inc. (“Netflix”) and Convergent Media
`
`Solutions, Inc. (“CMS”) jointly filed a motion to terminate IPR2016-018l4
`
`(Paper 12, “Mot.”), and a request to treat settlement documents as Business
`
`Confidential Information (Paper 13, “Req.”). On May 9, 2017, we joined
`
`IPR2017-01237 to IPR2016-018l4. See Paper 14, 29. For the reasons
`
`discussed below, the parties’ joint motion to terminate IPR2016-01814 is
`
`granted-in-part as to Netflix and denied-impart as to CMS, and the parties’
`
`joint request to treat settlement documents as business confidential
`
`information is granted.
`
`II. DISCUSSION
`
`The parties’ joint motion to terminate requests termination of
`
`IPR2016-01814 because the parties have settled their dispute regarding US.
`
`Patent No. 8,914,840 B2 (“the ’840 patent”) in this proceeding and in
`
`Convergent Media Solutions, LLC v. Netflix, Inc., No. 3:15-cv-02160 (ND.
`
`Tex), the related District Court litigation. Mot., 3—5. The parties filed a true
`
`copy of their Settlement Agreement as an exhibit to this proceeding, and
`
`aver that the Settlement Agreement they filed constitutes the entire
`
`understanding and agreement between the parties. Id; see also Ex. 2001.
`
`Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under
`
`this chapter shall be terminated with respect to any petitioner upon the joint
`
`request of the petitioner and patent owner, unless the Office has decided the
`
`merits of the proceeding before the request for termination is filed.” The
`
`

`

`IPR2016-01814
`
`IPR2017-01237
`
`Patent 8,914,840 B2
`
`requirement for terminating this proceeding with respect to Netflix,
`
`therefore, is met.
`
`Under 35 U.S.C. § 317(a), “If no petitioner remains in the inter partes
`
`review, the Office may terminate the review or proceed to a final written
`
`decision under section 318(a).” Due to the joinder of this proceeding and
`
`IPR2017-01237, AT&T Services, Inc. remains a petitioner in this
`
`proceeding after the termination of Netflix. Therefore, it is inappropriate to
`
`terminate CMS from this proceeding.
`
`III. ORDER
`
`It is hereby:
`
`ORDERED that the Joint Motion to Terminate Proceeding is granted-
`
`in-part;
`
`FURTHER ORDERED that this inter partes review is terminated as
`
`to Netflix, Inc., but is not terminated as to Convergent Media Solutions,
`
`LLC;
`
`FURTHER ORDERED that the Joint Motion to Treat Settlement
`
`Agreement as Business Confidential Information is granted; and
`
`FURTHER ORDERED that Exhibit 2001 (“Settlement and License
`
`Agreement”) be maintained as business confidential information and kept
`
`separate from the files of US. Patent No. 8,914,840 B2.2
`
`2 The Board designatcd the status of Exhibit 2001 as “Board only” prior to
`entering the decision to institute trial in IPR2017-01237 and granting the
`motion to join that case to IPR2016-01814.
`
`

`

`IPR2016-01814
`
`IPR2017-01237
`
`Patent 8,914,840 B2
`
`For PETITIONERS:
`
`Chun Ng
`Patrick McKeever
`
`Vinay Sathe
`Miguel Bombach
`Kevin Kantharia
`
`Matthew C. Bernstein
`
`cng@perkinscoie.com
`pmckeever@p_erkinscoie.com
`vsathe@perkinscoie.com
`mbombacthperkinscoie.com
`kkantharia@perkinscoie.com
`mbernstein@perkinscoie.com
`
`Kurt Pankratz
`
`Brian Johnston
`
`Roger Flughum
`Eliot Williams
`
`kurt.pankratz@bakerbotts.com
`brian.johnston@bakerbotts.com
`roger.fulghum@bakerbotts.com
`eliot.williams
`bakerbotts.com
`
`For PATENT OWNER:
`
`Matthew Juren
`
`Barry Bumgardner
`matthew(c'1)znelbum.com
`barr
`nelbum.com
`
`

Accessing this document will incur an additional charge of $.

After purchase, you can access this document again without charge.

Accept $ Charge

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.

Become a Member

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

We are redirecting you
to a mobile optimized page.

We are unable to display this document.

PTO Denying Access

Refresh this Document
Go to the Docket