Trials@uspto.gov
`571.272.7822
`
`Paper No. 13
`Entered: June 8, 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 JAMESON LEE, KEN B. BARRETT, and JOHN F. HORVATH,
`Administrative Patent Judges.
`
`HORVATH, Administrative Patent Judge.
`
`ORDER
`
`Granting A T& T Services Joint Motion to Terminate
`Granting Convergent Media Solutions Motion to Terminate
`37 C.F.R. §42. 72
`
`and
`
`Granting Request to Treat Settlement Documents
`As Business Confidential Information
`
`37 CFR. § 42. 74(c)
`
`‘ Case IPR2017-01237 has been joined to Case IPR2016—01814
`
`

`

`IPR2016-01814
`
`IPR2017-01237
`
`Patent 8,914,840 B2
`
`I.
`
`INTRODUCTION
`
`On June 5, 2017, AT&T Services, Inc. (“AT&T”) and Convergent
`
`Media Solutions, Inc. (“CMS”) jointly filed a motion to terminate Petitioner
`
`AT&T from IPR2017-01237 and IPR2016-01814, two proceedings which
`have been joined (Paper 16, “Joint Mot”), and a request to treat settlement
`
`documents as Business Confidential Information (Paper 17, “Req.”). The
`
`same day, CMS filed an unopposed motion to terminate IPR2017-01237 and
`
`IPR2016-01814 in their entirety (Paper 18, “PO Mot.”). For the reasons
`
`discussed below, the joint motion to terminate AT&T from IPR2017-01237
`
`and IPR2016-01814, and CMS’s unopposed motion to terminate these
`
`proceedings in their entirety are granted, 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 AT&T
`
`from IPR2017-01237 and IPR2016-01814 because the parties have settled
`
`their dispute regarding US. Patent No. 8,914,840 B2 (“the ’840 patent”) in
`
`the joined proceedings and in Convergent Media Solutions, LLC v. AT&T
`
`Services, Inc., No. 3:15-cv-02156 (N.D. Tex) (“the District Court
`
`litigation”). Joint Mot., 1. CMS’s motion to terminate requests termination
`
`of IPR2017-01237 and IPR2016-01814 for the same reasons, and because
`
`with AT&T’s termination from the joined proceedings no Petitioner will
`
`remain in the joined proceedings. PO Mot., 2—3. CMS avers its motion to
`
`

`

`IPR2016-01814
`
`IPR2017-01237
`
`Patent 8,914,840 B2
`
`terminate IPR2017-01237 and IPR2016-01814 in their entirety is
`
`unopposed. Id. at 2. The parties aver they have filed a true and correct copy
`
`of their Settlement Agreement as an exhibit to the joined proceedings. Joint
`
`Mot, 1—2; see also Ex. 2002.
`
`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.” These
`
`proceedings are at an early stage, and the Board has not reached a final
`
`decision on the merits. Therefore, the requirements for terminating AT&T
`
`from the joined proceedings are met, and AT&T is hereby terminated from
`
`IPR2017-01237 and IPR2016-01814.
`
`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).” Netflix, Inc. was previously terminated from
`
`the joined proceedings. See Paper 15, 3. Therefore, given the termination of
`
`AT&T from the joined proceedings, the Board has discretion to terminate
`
`the joined proceedings. Under these circumstances, termination of the
`
`joined proceedings in their entirety is appropriate.
`
`III. ORDER
`
`It is hereby:
`
`ORDERED that the Joint Motion to Terminate AT&T from IPR2017-
`
`01237 and IPR2016-018l4 is granted;
`
`

`

`IPR2016-01814
`
`IPR2017-01237
`
`Patent 8,914,840 B2
`
`FURTHER ORDERED that CMS’s motion to terminate IPR2017-
`
`01237 and IPR2016-018l4 in their entirety is granted;
`
`FURTHER ORDERED that the Joint Motion to Treat Settlement
`
`Agreement as Business Confidential Information is granted; and
`
`FURTHER ORDERED that Exhibit 2002 (“Settlement Agreement”)
`
`be maintained as Business Confidential Information and kept separate from
`
`the files of US. Patent No. 8,914,840 B2; and
`
`FURTHER ORDERED that the joined proceedings IPR2017-01237
`
`and IPR2016-01814 are terminated in their entirety.
`
`

`

`IPR2016-01814
`
`IPR2017-01237
`
`Patent 8,914,840 B2
`
`For PETITIONERS:
`
`Chun M. Ng
`Patrick J. McKeever
`
`Vinay P. Sathe
`Miguel J. Bombach
`Kevin E. Kantharia
`
`Matthew Bernstein
`
`PERKINS COIE LLP
`
`CNg@p_erkinscoie.com
`pmckeeveerperkinscoie.com
`vsathe@p_erkinscoie.com'
`mbombach@perkinscoie.com
`kkantharia@perkinscoie.com
`mbernstein@perkinscoie.com
`
`Kurt Pankratz
`
`Roger Flughum
`Brian Johnston
`
`Eliot Williams
`
`BAKER BOTTS L.L.P.
`
`kurt.pankratz@bakerbotts.com
`roger.fulghum@bakerbotts.com
`brian.johnston@bakerbotts.com
`eliot.williams@bakerbotts.com
`DLInternalATTConvergent@bakerbotts.com
`
`For PATENT OWNER:
`
`Matthew Juren
`
`Barry Bumgardner
`NELSON BUMGARDNER, P.C.
`
`matthew@nelbum.com
`barr
`nelbum.com
`
`

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