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Vonage Holdings Corporation, et al. v. Straight Path IP Group, Inc.

Docket IPR2014-01225, Patent Trial and Appeal Board (Aug. 1, 2014)
Bart Gerstenblith, Kalyan Deshpande, Thomas Giannetti, Trenton Ward, presiding
Case TypeInter Partes Review
Patent
6009469
Petitioner Vonage Holdings Corporation, et al.
Patent Owner Straight Path IP Group, Inc.
Assignee STRAIGHT PATH COMMUNICATIONS INC.
...
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14 Refund Approval: Notice of Refund

Document IPR2014-01225, No. 14 Refund Approval - Notice of Refund (P.T.A.B. Feb. 10, 2015)

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12 Notice: ORDER Motion to Terminate

Document IPR2014-01225, No. 12 Notice - ORDER Motion to Terminate (P.T.A.B. Oct. 30, 2014)
Along with each of the motions, Netflix, Inc. and Straight Path IP Group, Inc. filed a copy of a document they described as the written settlement agreement (IPR2014-01223, Ex. 1025; IPR2014-01224, Ex. 1028; IPR2014-01225, Ex. 1029; IPR2014-01234, Ex. 1028; and IPR2014-01241, Ex. 1024), as well as a separate joint request to treat the settlement agreement as business confidential information under the provisions of 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).
Similarly, Vonage stated in its joint motions that Patent Owner and Vonage have settled their dispute and have reached an agreement to terminate these proceedings.
Generally, the Board expects that a proceeding will terminate after the filing of a settlement agreement.
The Board is persuaded that, under these circumstances, it is appropriate to terminate these proceedings with respect to all parties.
Accordingly, it is: ORDERED that the joint motions to terminate these proceedings are GRANTED and each of these proceedings is hereby terminated; FURTHER ORDERED that the joint request of Netflix, Inc. and Straight Path IP Group, Inc. that the settlement agreement (IPR2014-01223, Ex. 1025; IPR2014-01224, Ex. 1028; IPR2014-01225, Ex. 1029; IPR2014-01234, Ex. 1028; and IPR2014-01241, Ex. 1024) be treated as business confidential information, kept separate from the file of the involved patent, and made available only to Federal Government agencies on written request, or to any person on a showing of good cause, under the provisions of 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), is GRANTED; and FURTHER ORDERED that the joint request of Vonage and Straight Path IP Group, Inc. that the settlement agreement (IPR2014-01223, Ex. 1026; IPR2014- 01224, Ex. 1029; IPR2014-01225, Ex. 1030; IPR2014-01234, Ex. 1029; and IPR2014-01241, Ex. 1025) be treated as business confidential information, kept separate from the file of the involved patent, and made available only to Federal Government agencies on written request, or to any person on a showing of good cause, under the provisions of 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), is
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7 Notice: Order Conduct of the Proceeding

Document IPR2014-01225, No. 7 Notice - Order Conduct of the Proceeding (P.T.A.B. Sep. 9, 2014)
Before KALYAN K. DESHPANDE, THOMAS L. GIANNETTI, and TRENTON A. WARD, Administrative Patent Judges.
A conference call was held on September 5, 2014 and attended by Administrative Patent Judges Ward and Deshpande and respective counsel for the parties to discuss a request for authorization to file a motion to terminate.
Counsel for the Vonage Parties and counsel for the Patent Owner acknowledged that even if the joint motion to terminate these proceedings with respect to Netflix is granted, these proceedings will continue forward with the Vonage Parties and the Patent Owner.
The Board authorizes filing of a Joint Motion to Terminate the Proceeding as to Netflix.
Accordingly, it is: ORDERED that the parties are authorized to file a Joint Motion to Terminate these proceedings with respect to Netflix; FURTHER ORDERED that the Joint Motion is due by September 19, 2014; and FURTHER ORDERED that the Joint Motion shall meet all the requirements of 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b), including those discussed above, regarding filing of settlement documents.
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4 Notice of Filing Date Accorded to Petition: Notice of Filing Date Accorded

Document IPR2014-01225, No. 4 Notice of Filing Date Accorded to Petition - Notice of Filing Date Accorded (P.T.A.B. Aug. 13, 2014)
The petition for inter partes review in the above proceeding has been accorded the filing date of August 1, 2014.
For more information, please consult the Office Patent Trial Practice Guide, 77 Fed. Reg. 48756 (Aug. 14, 2012), which is available on the Board Web site at http://www.uspto.gov/PTAB.
Patent Owner is advised of the requirement to submit mandatory notice information under 37 C.F.R. § 42.8(a)(2) within 21 days of service of the petition.
The parties are advised that under 37 C.F.R. § 42.10(c), recognition of counsel pro hac vice requires a showing of good cause.
Such motions shall be filed in accordance with the “Order -- Authorizing Motion for Pro Hac Vice Admission” in Case IPR2013-00639, Paper 7, a copy of which is available on the Board Web site under “Representative Orders, Decisions, and Notices.” The parties are reminded that unless otherwise permitted by 37 C.F.R. § 42.6(b)(2), all filings in this proceeding must be made electronically in the Patent Review Processing System (PRPS), accessible from the Board Web site at http://www.uspto.gov/PTAB.
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11 Motion: Joint Request to File Agreement as Business Confidential Pursuant to 35 USC Section 317

Document IPR2014-01225, No. 11 Motion - Joint Request to File Agreement as Business Confidential Pursuant to 35 USC Section 317 (P.T.A.B. Oct. 22, 2014)
Petitioners Vonage Holdings Corp., Vonage America, Inc., and Vonage Marketing LLC (“Vonage”) and Patent Owner Straight Path IP Group, Inc (“Straight Path”) hereby jointly request that the Settlement and Patent License Agreement filed concurrently herewith as Exhibit 1030 be treated as business confidential information, be treated as “Parties and Board Only,” be kept separate from the file of the involved U.S. Patent No. 6,009,469 and the Inter Partes Review styled IPR2014-01225, and be made available only to Federal Government agencies on written request or to any person on a showing of good cause, pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).
CERTIFICATE OF SERVICE UNDER 37 C.F.R. § 42.6(e)(4) The undersigned hereby certifies that a copy of the foregoing
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10 Motion: Joint Motion to Terminate Proceeding Pursuant to 35 USC Section 317

Document IPR2014-01225, No. 10 Motion - Joint Motion to Terminate Proceeding Pursuant to 35 USC Section 317 (P.T.A.B. Oct. 22, 2014)
Petitioner Netflix1 and Vonage filed this Petition for Inter Partes Review of the ‘469 Patent on August 1, 2014.
The parties have settled their dispute, and have reached agreement to terminate this Inter Partes Review.
The parties desire that the Settlement Agreement be maintained as business confidential information under 37 C.F.R. §42.74(c), and a separate joint request to that effect is being filed on even date herewith.
2 The Settlement Agreement is being filed electronically via the Patent Review Processing System (PRPS) as “Parties and Board Only.” ActiveUS 136868852v.1
Pursuant to the Settlement Agreement, Petitioner Vonage will not bring or assist with any action challenging the validity of the Licensed Patents.
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8 Motion: Netflix, Inc and Straight Path IP Group, Incs Joint Motion to Terminate Pr...

Document IPR2014-01225, No. 8 Motion - Netflix, Inc and Straight Path IP Group, Incs Joint Motion to Terminate Proceeding (P.T.A.B. Sep. 19, 2014)

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