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Trials@uspto.gov Paper No. 7
`571.272.7822 Entered: January 3, 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.
`
`PER CURIAM
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`

`
`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 December 30, 2016, counsel for the parties requested
`authorization to file a Joint Motion to Dismiss in each of the following IPR
`proceedings: IPR2016-01524, IPR2016-01552, IPR2016-01553, IPR2016-
`01554, IPR2016-01555, and IPR2016-01712. According to counsel, the
`motion would be for dismissal prior to institution based on the Board’s
`authority under at least 37 C.F.R. §§ 42.5(a) and 42.71(a). Counsel states
`the parties have conferred and agree on this motion.
`A joint motion for dismissal should: (1) include a brief explanation as
`to why dismissal is appropriate; (2) identify all parties in any related
`litigation involving the patent at issue in this proceeding; (3) identify any
`related proceedings currently before the USPTO; and (4) discuss specifically
`the current status of each such related litigation or proceeding with respect to
`each party to the litigation or proceeding. The joint motion for dismissal
`must be accompanied by a true copy of the settlement agreement between
`the parties, as required by 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b). A
`redacted version will not be accepted as a true copy of the settlement
`agreement.
`Therefore, it is
`ORDERED that the parties are authorized to file a joint motion to
`dismiss this proceeding in accordance with 37 C.F.R. § 42.20.
`
`
`
`
`
`

`
`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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