`571.272.7822
`
`
`
`
`
`Paper No. 6
`Entered: July 18, 2016
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`APPLE INC.,
`Petitioner,
`
`v.
`
`OPENTV, INC.,
`Patent Owner.
`_______________
`
`Case IPR2016-00992
`Patent 6,233,736 B1
`_______________
`
`
`
`Before JAMESON LEE and SALLY C. MEDLEY,
`Administrative Patent Judge.
`
`LEE, Administrative Patent Judge.
`
`
`ORDER
`Denial of Extension of Time
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`IPR2016-00992
`Patent 6,233,736 B1
`
`
`
`On July 13, 2016, 2016, the parties, by email (Exhibit 3001) requested
`
`an extension of time of the due date for Patent Owner’s preliminary response
`
`from August 4, 2016, to August 31, 2016. The parties represent that they
`
`“have agreed to settlement terms ending all disputes between them involving
`
`the patents at issue in these proceedings [including IPR2016-00992], and
`
`expect to complete their settlement in the coming weeks.” Ex. 3001.
`
`
`
`The referenced settlement is not yet complete, or near complete, given
`
`that it still takes “weeks” to finalize the parties’ agreement. Also, if the
`
`parties truly have settled, there would be no need for Patent Owner to file
`
`any preliminary response and, thus, the preliminary response can be waived
`
`by Patent Owner. The fact that Patent Owner still desires to preserve the
`
`opportunity to file a preliminary response indicates that the referenced
`
`settlement only is tentative and cannot be treated as complete. Generally,
`
`settlement discussions should proceed in parallel with the proceeding, not
`
`in lieu of the proceeding, or while the proceeding is stayed.
`
`
`
`Accordingly, the parties have not shown good cause to extend the due
`
`date for Patent Owner’s preliminary response.
`
`Upon completion of a settlement, the parties are authorized to file
`
`(1) a Joint Motion to Terminate (as a Paper), and (2) a Joint Request to File
`
`Settlement Agreement as Business Confidential Information Pursuant to
`
`35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) (as a separate Paper).
`
`The Joint Motion to Terminate must update the Board concerning the
`
`status of any litigation or proceeding, including, but not limited to,
`
`proceedings in the U.S. Patent and Trademark Office, involving the subject
`
`patent, and advise the Board whether any litigation or proceeding involving
`
`the subject patent is contemplated in the foreseeable future. The Joint
`
`2
`
`
`
`
`
`IPR2016-00992
`Patent 6,233,736 B1
`
`Motion to Terminate also must include a true copy of any agreement or
`
`understanding (as an Exhibit to the Motion) and include a statement
`
`certifying that there are no collateral agreements or understandings made in
`
`connection with, or in contemplation of, the termination of the inter partes
`
`review. See 35 U.S.C. § 317(b); 37 C.F.R. § 42.74(b). Any Joint Request to
`
`File the Settlement Agreement as Business Confidential Information must be
`
`filed with the Joint Motion to Terminate. See 35 U.S.C. § 317(b); 37 C.F.R.
`
`§ 42.74(c).
`
`
`
`
`
`It is
`
`ORDERED that the request for an extension of the due date for Patent
`
`Owner’s preliminary response from August 4, 2016, to August 31, 2016, is
`
`denied.
`
`
`
`3
`
`
`
`
`
`
`
`IPR2016-00992
`Patent 6,233,736 B1
`
`For PETITIONER:
`
`
`Mark E. Miller
`Ryan K. Yagura
`Anne Huffsmith
`Brian M. Cook
`Xin-Yi Zhou
`John Kevin Murray
`markmiller@omm.com
`ryagura@omm.com
`ahuffsmith@omm.com
`bcook@omm.com
`vzhou@omm.com
`kmurray2@omm.com
`
`
`
`For PATENT OWNER:
`
`Daniel G. Chung
`Joshua L. Goldberg
`Erika H. Arner
`erika.arner@finnegan.com
`josha.goldberg@finnegan.com
`daniel.chung@finnegan.com
`
`
`4
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