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)!
`
`Before JUSTIN T. ARBES, TERRENCE W. McMILLIN, DANIELJ.
`GALLIGAN,and SCOTT RAEVSKY,Administrative Patent Judges.”
`
`McMILLIN, Administrative Patent Judge.
`
`DECISION
`Settlement Prior to Institution of Trial
`37 C.F.R. $ 42.74
`
`! This Decision appliesto all of the above-listed proceedings. Weexercise
`our discretion to issue one orderto be filed in each case. The parties are not
`authorized to use this style heading.
`* This is not an expanded panel. Eachofthe listed judgesis 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)!
`
`Before JUSTIN T. ARBES, TERRENCE W. McMILLIN, DANIELJ.
`GALLIGAN,and SCOTT RAEVSKY,Administrative Patent Judges.”
`
`McMILLIN, Administrative Patent Judge.
`
`DECISION
`Settlement Prior to Institution of Trial
`37 C.F.R. $ 42.74
`
`! This Decision appliesto all of the above-listed proceedings. Weexercise
`our discretion to issue one orderto be filed in each case. The parties are not
`authorized to use this style heading.
`* This is not an expanded panel. Eachofthe listed judgesis 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)
`
`—
`
`I,
`
`INTRODUCTION
`
`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 4.2 Along with the Unopposed Motions, Petitionerfiled copies of a
`Settlement Agreement betweentlie 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.
`Il.
`DISCUSSION |
`In the Unopposed Motions, Petitioner represents that “[t]he parties
`havesettled 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 partiés concerning the [challenged] patent[s] in the foreseeable
`
`future.” Id.
`
`.
`
`With regard to the Settlement Agreement (Ex. 1100), the Unopposed
`
`Motions state:
`Petitioneris 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
`
`‘> 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.
`
`
`
`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 wasentered 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. Paper5, 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 uponPetitioner
`
`and Patent Owneron 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 uponanyof the
`parties.
`
`Patent Ownerhas not properly appeared in any of these proceedings.
`Patent Owner wasrequired 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
`werefiled and served on January 10, 2022 (see Paper 2, attached un-
`numberedpagetitled Certification of Service (37C.F.R. §§ 42.6(e),
`42.105(a)), Patent Owner’s mandatory notices are long overdue but have not
`
`
`
`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 CFR. § 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 washeld in these proceedings on May 31, 2022, including
`Mr. Estes, Petitioner’s counsel Lestin L. Kenton,’ 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 ofthe settlementof the litigation, had been provided with copies of
`the Unopposed Motions and the Unopposed Requests to Keep Settlement
`Agreement Confidential,* and wished the Board to terminate these
`proceedings.
`Wedetermine that Patent Ownerhas.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.®
`
`4 Mr. Kenton agreed to provide a copy of this Decision to Mr. Estes. This
`courtesy is appreciated.
`>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-numberedlast page.
`6 However, even in the absenceof 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 notyet decided
`
`whetherto institute a trial in any of these proceedings. Petitioner movesto
`
`dismiss these proceedings, and Patent Ownerhasfailed 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 haveagreed to terminate [the district court] litigation
`
`pursuantto 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 determinethat
`
`good causeexists to treat the Settlement Agreementas business confidential
`
`information and to keep the Settlement Agreement separate from thefiles 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 proceedingsby filing mandatory notices and
`
`designating or identifying counsel. And, if Patent Owneravails itself of the
`| opportunity to properly appear in any ofthese proceedings, we want to
`provide Patent Ownerwith the opportunity to object or otherwise respond to
`
`this Decision and the Unopposed Motions to Dismiss and the Unopposed
`
`
`
`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)
`TPR2022-00394 (Patent 10,885,154 B2)
`
`Requests to Keep Settlement Agreement Confidential.’
`
`This Order does not constitute a final written decision pursuant to
`
`35 U.S.C. § 318(a).
`
`- Accordingly, for the reasons discussed above,it is:
`
`TI. ORDER
`
`ORDEREDthat 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 ORDEREDthat 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 toany person on a showing of good cause, pursuant to 37 C.F.R.
`§ 42.74(c); and
`
`FURTHER ORDEREDthat Patent Ownershall havethirty (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 Owneris authorizedto file a request for rehearing ofthis
`
`Decision.
`
`7 We direct Patent Owner’s attention to 37 C.F.R. § 42.71(d) that provides
`“[a] party dissatisfied with a decision mayfile 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
`
`
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