`571.272.7822
`
`
`
`
`
`Paper No. 14
`Entered: May 11, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`ROKU, INC.,
`Petitioner,
`
`v.
`
`CONVERGENT MEDIA SOLUTIONS, LLC,
`Patent Owner.
`_______________
`
`Case IPR2016-01762
`Patent 8,893,212 B2
`_______________
`
`Before JAMESON LEE, KEN B. BARRETT, and JOHN F. HORVATH,
`Administrative Patent Judges.
`
`HORVATH, Administrative Patent Judge.
`
`
`ORDER
`
`Granting Motion to Terminate
`37 C.F.R. §42.72
`and
`
`Granting Request to Treat Settlement Documents
`As Business Confidential Information
`37 C.F.R. § 42.74(c)
`
`
`
`
`
`
`
`IPR2016-01762
`Patent 8,893,212 B2
`
`
`
`
`
`I. INTRODUCTION
`
`On May 1, 2017, Petitioner and Patent Owner (“the parties”) jointly
`filed a motion to terminate this proceeding (Paper 12, “Mot.”), and a request
`to treat settlement documents as Business Confidential Information (Paper
`13, “Req.”). For the reasons discussed below, the parties’ joint motion to
`terminate this proceeding is granted, and the parties’ joint request to treat
`settlement documents as Business Confidential Information is granted.
`
`II. DISCUSSION
`
`The parties’ joint motion to terminate requests termination of this
`proceeding because the parties have settled their dispute regarding U.S.
`Patent No. 8,893,212 B2 (“the ’212 patent”) in this proceeding and in
`Convergent Media Solutions, LLC v. Roku, Inc., No. 3:15-cv-02163 (N.D.
`Tex), the related District Court litigation. Mot., 3–5. The parties filed a true
`copy of their Settlement Agreement as an exhibit to this proceeding, and
`aver that the filed Settlement Agreement constitutes the entire understanding
`and agreement between the parties. Id.; see also Ex. 2001.
`These proceedings are at a relatively early stage. Petitioner filed a
`Petition for Inter Partes Review of claims 1–23 of the ’212 patent on
`September 8, 2016. Paper 2. Patent Owner did not file a Preliminary
`Response. Mot. 3. We instituted trial on claims 1–22 on March 3, 2017.
`See Paper 7, 26. Patent Owner’s Response to the Petition is due June 6,
`2017. See Paper 8, 6. No other proceedings involving the ’212 patent are
`pending before the Board. Mot. 5.
`
`2
`
`
`
`
`
`IPR2016-01762
`Patent 8,893,212 B2
`
`
`Under the foregoing circumstances, we determine it is appropriate to
`terminate this proceeding. See 37 C.F.R. § 42.72. We also determine it is
`appropriate to treat the parties’ Settlement Agreement as Business
`Confidential Information, and to keep this document separate from the files
`of the ’212 patent.
`This paper does not constitute a final written decision pursuant to 35
`U.S.C. § 318(a).
`
`III. ORDER
`
`
`It is hereby:
`
`ORDERED that the Joint Motion of Petitioner and Patent Owner to
`Terminate Proceeding is granted;
`FURTHER ORDERED that the trial instituted for IPR2016-01762 is
`terminated;
`FURTHER ORDERED that the Joint Motion of Petitioner and Patent
`Owner to Treat Settlement Agreement as Business Confidential Information
`is granted; and
`FURTHER ORDERED that Exhibit 2001 (“Settlement and License
`Agreement”) be maintained as Business Confidential Information and kept
`separate from the files of U.S. Patent No. 8,893,212 B2.
`
`
`
`
`
`
`3
`
`
`
`
`
`IPR2016-01762
`Patent 8,893,212 B2
`
`For PETITIONER:
`
`Chun Ng
`Patrick McKeever
`Vinay Sathe
`Miguel Bombach
`Kevin Kantharia
`Matthew C. Bernstein
`cng@perkinscoie.com
`pmckeever@perkinscoie.com
`vsathe@perkinscoie.com
`mbombach@perkinscoie.com
`kkantharia@perkinscoie.com
`mbernstein@perkinscoie.com
`
`For PATENT OWNER:
`
`Matthew Juren
`Barry Bumgardner
`matthew@nelbum.com
`barry@nelbum.com
`
`
`
`4
`
`
`
`
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