`571.272.7822
`
`
`
`
`
`Paper No. 11
`Entered: August 10, 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, SALLY C. MEDLEY, and
`MICHAEL R. ZECHER, Administrative Patent Judges.
`
`LEE, Administrative Patent Judge.
`
`
`ORDER
`Conduct of Proceedings
`37 C.F.R. § 42.5
`
`On August 9, 2016, a telephone conference call was held. The
`participants were respective counsel for the parties and Judges Lee, Medley,
`and Zecher. The purpose of the call was to discuss the parties’ Joint Motion
`to Terminate Proceeding (Paper 8).
`
`
`
`
`
`IPR2016-00992
`Patent 6,233,736 B1
`
`
`1.
`We noted that none of the settlement agreements filed in support of
`the Joint Motion to Terminate explicitly mention the Patent Owner, and
`asked the parties to review whether there is an understanding or agreement
`involving the Patent Owner in contemplation of termination of the
`proceeding. Counsel for the parties replied that there is such an
`understanding and expectation by “everyone.”1 We directed the parties to
`comply with 37 C.F.R. § 42.74(b) with respect to that understanding.
`2.
`Because some of the settlement agreements filed in support of the
`
`Joint Motion to Terminate involve Kudelski S.A., the alleged “parent” of
`Patent Owner, we asked Patent Owner to update its Mandatory Notices, to
`indicate that Kudelski S.A. is its parent company. We also asked Patent
`Owner to review, while updating its Mandatory Notices, whether Kudelski
`S.A. should be identified as a real party in interest.
`3.
`We noted that Schedule A-1 to Exhibit 2001, which purports to list
`the licensed patents, appears to be missing an attachment and asked the
`parties to check in that regard. The same is true with respect to Schedule A-
`1 in Exhibit 2002. We, however, take this opportunity to remind the parties
`that Petitioner does not have access to Exhibit 2002. Thus, Patent Owner
`alone will perform that checking for Exhibit 2002.
`Counsel for the parties inquired how they would correct a missing
`attachment in these exhibits, if any. We directed them to file a complete
`agreement under the same exhibit number, but also to ask for expungement
`
`1 “Everyone” includes Petitioner and Patent Owner.
`
`2
`
`
`
`
`
`IPR2016-00992
`Patent 6,233,736 B1
`
`of the incomplete agreement. This may be done by contacting the Board
`administrative staff at Trials@uspto.gov or 571-272-7822.
`4.
`The parties have filed Joint Motions for termination in other
`
`proceedings now pending before the Board. We inquired whether the parties
`intend that all proceedings are terminated or none is terminated, or that there
`is no such restrictive contingency requirement. Counsel for the parties
`replied that there is no such restrictive contingency.
`5.
`The parties intend that Petitioner does not have access to Exhibit 2002
`and that Patent Owner does not have access to Exhibit 1017. For that
`reason, they have filed Exhibits 1017 and 2002 as “available only to Board.”
`We explained that the Board is not a party to such an agreement regarding
`restrictive access, and we simply authorize the filing of these two exhibits as
`“available only to Board.”
`
`ORDER
`
`It is
`ORDERED that within one week of entry of this Order, Patent Owner
`
`shall file updated Mandatory Notices consistent with the above discussion;
`
`FURTHER ORDERED that within one week of entry of this Order,
`the parties shall file replacement Exhibits 2001 and 2002, if any is necessary
`according to the above discussion; and
`
`FURTHER ORDERED that within three weeks of entry of this Order,
`the Patent Owner shall file a true copy of a writing that reflects an agreement
`or understanding between Petitioner and Patent Owner made in connection
`
`3
`
`
`
`
`
`IPR2016-00992
`Patent 6,233,736 B1
`
`with or in contemplation of termination of this proceeding.2 See 37 C.F.R.
`§ 42.74(b).
`
`
`
`
`
`For PETITIONER:
`
`Mark E. Miller
`Ryan K. Yagura
`Anne E. 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:
`
`Joshua L. Goldberg
`Erika H. Arner
`Daniel G. Chung
`josha.goldberg@finnegan.com
`erika.arner@finnegan.com
`daniel.chung@finnegan.com
`
`2 During the conference call, we indicated that the agreement to be filed
`needs to involve Patent Owner, but not necessarily Petitioner. However,
`37 C.F.R. § 42.74(b) refers to agreement or understanding between the
`parties. Accordingly, we now make this requirement for an agreement or
`understanding between Petitioner and Patent Owner. The existence of such
`an “understanding” was acknowledged by counsel for the parties during the
`conference call.
`
`4
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
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.
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
