`571-272-7822
`
`
`
`Paper No. 15
`Entered: August 25, 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.
`
`MEDLEY, Administrative Patent Judge.
`
`
`JUDGMENT
`Granting Joint Motion to Terminate Proceeding and
`Granting Request to Treat Agreements as Business Confidential Information
`37 C.F.R. §§ 42.72 and 42.74
`
`
`
`
`
`
`IPR2016-00992
`Patent 6,233,736 B1
`
`
`
`
`
`INTRODUCTION
`I.
`On August 4, 2016, the parties filed a Joint Motion to Terminate
`Proceeding (Paper 8, “Mot.”), and a joint request to treat the settlement
`agreements as business confidential information under 35 U.S.C. § 317(b)
`and 37 C.F.R. § 42.74(c) (Paper 9). A conference call was held on August 9,
`2016, and we issued an Order on August 10, 2016 (Paper 11) instructing the
`parties that they reduce to writing any agreement or understanding between
`them in contemplation of termination. We observed that none of the
`agreements filed by the parties on August 4, 2016, i.e., Exhibits 1017, 2001,
`2002, 2003, and 2004, reflects any understanding between the Petitioner and
`the Patent Owner. Paper 11, 2. We also observed that Exhibits 2001 and
`2002 appear to be incomplete. Id. at 2–3.
`On August 19, 2016, the parties filed Exhibit 2005, which is a writing
`reflecting an understanding between the Petitioner and Patent Owner in
`contemplation of termination of proceeding, and a joint request to treat this
`exhibit as confidential business information under 35 U.S.C. § 317(b) and
`37 C.F.R. § 42.74(c) (Paper 13). Also on August 17, 2016, the parties filed
`replacement copies of Exhibits 2001 and 2002. Further on August 17, 2016,
`Patent Owner filed an updated Mandatory Notice to identify its parent
`entities and to list additional real parties in interest. Paper 12.
`
`
`II. DISCUSSION
`The parties represent in the Joint Motion to Terminate Proceeding that
`the filed agreements “end all patent disputes between the parties, including
`this proceeding.” Mot. 6. The parties also indicate that all related district
`
`2
`
`
`
`
`
`
`IPR2016-00992
`Patent 6,233,736 B1
`
`
`court cases involving U.S. Patent No. 6,233,736 B1 have either been
`dismissed or are subject to pending joint motions to terminate. Id. at 3–5.
`This proceeding is still in a preliminary stage. Patent Owner has yet
`to file a Preliminary Response and we have yet to decide whether to institute
`a trial. Under the circumstances presented here, we determine that it is
`appropriate to terminate this proceeding with respect to both Petitioner and
`Patent Owner without rendering any further decisions. See 37 C.F.R.
`§ 42.72.
`
`III. ORDER
` It consideration of the foregoing, it is hereby
`ORDERED that the parties’ Joint Motion to Terminate Proceeding,
`both as to Petitioner and Patent Owner, is granted;
`FURTHER ORDERED that the parties’ joint request (Paper 9) to treat
`Exhibits 1017, 2001, 2002, 2003, and 2004 as business confidential
`information under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) is granted;
`FURTHER ORDERED that the parties’ joint request (Paper 13) to
`treat Exhibit 2005 as business confidential information under 35 U.S.C.
`§ 317(b) and 37 C.F.R. § 42.74(c) is granted;
`FURTHER ORDERED that the parties’ request to accept the filing of
`Exhibits 1017 and 2002 under the access category of “available only to
`Board” in the Board’s electronic filing system is granted;1 and
`FURTHER ORDERED that this proceeding is terminated with respect
`to both Petitioner and Patent Owner.
`
`
`1 See Paper 11, 3.
`
`
`
`
`
`3
`
`
`
`
`
`
`
`
`IPR2016-00992
`Patent 6,233,736 B1
`
`For PETITIONER:
`
`Mark E. Miller
`Ryan K. Yagura
`Anne E. Huffsmith
`Brian M. Cook
`Xin-Yi Zhou
`John Kevin Murray
`O’Melveny & Myers LLP
`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
`Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
`josha.goldberg@finnegan.com
`erika.arner@finnegan.com
`daniel.chung@finnegan.com
`
`4
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