throbber
Trials@uspto.gov
`571.272.7822
`
`
`
`
`Paper No. 11
`Entered: January 10, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`
`SAMSUNG ELECTRONICS CO., LTD. and
`SAMSUNG ELECTRONICS AMERICA,
`INC.,
`Petitioner,
`
`v.
`
`TIVO INC.
`Patent
`Owner.
`
`Case IPR2016-01524 Patent 6,233,389
`Case IPR2016-01552 Patent 7,558,472
`Case IPR2016-01553 Patent 7,558,472
`Case IPR2016-01554 Patent 8,457,476
`Case IPR2016-01555 Patent 8,457,476
`Case IPR2016-01712 Patent 6,233,389
`
`
`
`
`Before JENNIFER S. BISK, GEORGIANNA W. BRADEN, and CARL L.
`SILVERMAN, Administrative Patent Judges.
`
`
`SILVERMAN, Administrative Patent Judge
`
`
`ORDER
`Termination of the Proceeding
`37 C.F.R. §§ 42.5, 42.71(a), 42.74(c)
`
`

`

`Case IPR2016-01524 Patent 6,233,389
`Case IPR2016-01552 Patent 7,558,472
`Case IPR2016-01553 Patent 7,558,472
`Case IPR2016-01554 Patent 8,457,476
`Case IPR2016-01555 Patent 8,457,476
`Case IPR2016-01712 Patent 6,233,389
`
`
`
`On January 5, 2017, with Board authorization, the parties filed a joint
`
`motion to terminate the proceeding, notice of settlement, and joint request to
`
`treat the settlement agreement as business confidential (Papers 8, 9), along
`
`with what they indicate is their written settlement agreement (Paper 10).
`
`On November 9, 2016, the parties referred to “Pending settlement in
`
`IPR2016-01524, IPR 2016-01552, IPR 2016-01553, IPR 2016-01554, and
`
`IPR 2016-01555” and stated:
`
`The Parties have reached an agreement in principle to resolve their
`disputes, including settlement of all matters in controversy between
`the Parties related thereto. The Parties are now working on detailed
`written agreements that implement the terms of this agreement. See
`Paper 6.
`
`The parties state the above-identified IPR petitions are related to a
`
`lawsuit filed in the Eastern District of Texas (TiVo Inc. v. Samsung
`
`Electronics Co., LTD., et al., Civil Action No. 2:15-cv- 01503). Paper 8.
`
`On January 4, 2017, the parties filed a Stipulation of Dismissal of the
`
`lawsuit. Id. All parties involved in the litigation are as follows: TIVO
`
`INC., SAMSUNG ELECTRONICS CO., LTD., and SAMSUNG
`
`ELECTRONICS AMERICA, INC. Id.
`
`The joint request to treat the settlement agreement as business
`
`confidential information includes a request that the settlement agreement
`
`be kept separate from the patent file. Paper 9; see also 37 C.F.R.
`
`§ 42.74(c) (“A party to a settlement may request that the settlement be
`
`

`

`Case IPR2016-01524 Patent 6,233,389
`Case IPR2016-01552 Patent 7,558,472
`Case IPR2016-01553 Patent 7,558,472
`Case IPR2016-01554 Patent 8,457,476
`Case IPR2016-01555 Patent 8,457,476
`Case IPR2016-01712 Patent 6,233,389
`
`treated as business confidential information and be kept separate from the
`
`files of an involved patent or application.”).
`
`
`
`The parties state good cause exists to dismiss the Petition and
`
`terminate the above-identified IPR Petitions. Paper 8. In addition to being
`
`unopposed, the parties state: no Preliminary Response has been filed and the
`
`Board has not issued a decision on institution; dismissal will preserve the
`
`Board’s resources and the parties’ resources while also epitomizing the
`
`Patent Office’s policy of “secur[ing] the just, speedy, and inexpensive
`
`resolution”; and this is a just and fair resolution. Id.
`
`We agree that this proceeding is at an early stage. The Patent Owner,
`
`TIVO INC., has not filed a preliminary response, and the Board has not
`
`issued a decision on whether to institute trial. Based on the facts of this
`
`case, it is appropriate to dismiss the Petition for Inter Partes Review.
`
`Therefore, the joint motion to terminate the proceeding and the joint request
`
`to treat the settlement agreement as business confidential information are
`
`granted. As requested by the parties, the settlement agreement will be
`
`treated as business confidential information and kept separate from the
`
`patent file. 37 C.F.R. § 42.74(c). This paper does not constitute a final
`
`written decision pursuant to 35 U.S.C. § 318(a).
`
`
`
`Accordingly, it is
`
`

`

`Case IPR2016-01524 Patent 6,233,389
`Case IPR2016-01552 Patent 7,558,472
`Case IPR2016-01553 Patent 7,558,472
`Case IPR2016-01554 Patent 8,457,476
`Case IPR2016-01555 Patent 8,457,476
`Case IPR2016-01712 Patent 6,233,389
`
`ORDERED that the joint motion to terminate the above-captioned
`
`proceedings is granted;
`
`FURTHER ORDERED that the proceedings in IPR2016-01524,
`
`IPR2016-01552, IPR2016-01553, IPR2016-01554, IPR2016-01555,
`
`a n d IPR2016-01712 are terminated pursuant to 37 C.F.R. §§ 42.5, .71;
`
`and
`
`FURTHER ORDERED that the parties’ joint request that the
`
`settlement agreement (Paper 10) be treated as business confidential
`
`information, be kept separate from the file of each involved patent, and
`
`made available only to Federal Government agencies on written request, or
`
`to any person on a showing of good cause, under 37 C.F.R. § 42.74(c) is
`
`granted.
`
`

`

`Case IPR2016-01524 Patent 6,233,389
`Case IPR2016-01552 Patent 7,558,472
`Case IPR2016-01553 Patent 7,558,472
`Case IPR2016-01554 Patent 8,457,476
`Case IPR2016-01555 Patent 8,457,476
`Case IPR2016-01712 Patent 6,233,389
`
`PETITIONER:
`
`W. Karl Renner,
`Jeremy Monaldo
`Stuart A. Nelson
`Timothy Riffe
`Brian Goldberg
`I-Wei Hsieh
`FISH & RICHARDSON P.C.
`axf-ptab@fr.com
`jjm@fr.com
`snelson@fr.com
`riffe@fr.com
`bgoldberg@fr.com
`ahsieh@fr.com
`
`
`
`PATENT OWNER:
`
`Ben J. Yorks
`Benjamin Haber
`IRELL & MANELLA LLP
`byorks@irell.com
`bhaber@irell.com
`
`

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