UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
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`Paper 12
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`NETFLIX, INC.,
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`Petitioner,
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`v.
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`CONVERGENT MEDIA SOLUTIONS, LLC,
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`Patent Owner.
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`________________
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`INTER PARTES REVIEW OF U.S. PATENT NO. 8,640,183 B2
`Case IPR No.: IPR2016-01812
`________________
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`JOINT MOTION OF PETITIONER AND PATENT OWNER TO TERMINATE
`PROCEEDING PURSUANT TO 35 U.S.C. §317 AND 37 C.F.R. §42.74
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`________________
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`Paper 12
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
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`NETFLIX, INC.,
`
`Petitioner,
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`v.
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`CONVERGENT MEDIA SOLUTIONS, LLC,
`
`Patent Owner.
`
`________________
`
`
`
`INTER PARTES REVIEW OF U.S. PATENT NO. 8,640,183 B2
`Case IPR No.: IPR2016-01812
`________________
`
`
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`JOINT MOTION OF PETITIONER AND PATENT OWNER TO TERMINATE
`PROCEEDING PURSUANT TO 35 U.S.C. §317 AND 37 C.F.R. §42.74
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`Case IPR2016-01812
`U.S. Patent No. 8,640,183 B2
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`STATEMENT OF PRECISE RELIEF REQUESTED
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`Pursuant to 35 U.S.C. § 317, 37 C.F.R. § 42.74, and the Board’s
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`authorization provided on April 28, 2017, Petitioner Netflix, Inc. (“Petitioner” or
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`“Netflix”) and Patent Owner Convergent Media Solutions, LLC (“Patent Owner”
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`or “CMS”) (collectively, the “Parties”) jointly request termination of Inter Partes
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`Review No. IPR2016-01812 pursuant to settlement. As there are no other
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`petitioners in this proceeding and the proceeding is still at an early stage, the
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`Parties respectfully submit that termination of this proceeding is appropriate.
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`STATEMENT OF FACTS
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`Petitioner filed their petition in this proceeding for Inter Partes Review of
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`U.S. Patent No. 8,640,183 (the “’183 Patent”) on September 15, 2016.
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`The Board entered a final written decision on the ’183 Patent in related
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`proceeding IPR2016-00047, filed by Unified Patents Inc., on March 29, 2017,
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`finding claims 1-5, 16, 18, 24-26, 32-38, 40-42, 49, 51-53, 55, 58, and 59
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`unpatentable. IPR2016-00047, Paper 23. Further, the Board entered an adverse
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`judgment on claims 60 and 61 of the ’183 Patent at Patent Owner’s request. Id.
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`Petitioner challenges the same claims which are the subject of the final written
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`decision in IPR2016-00047 plus additional claims 19, 20, 44, 47, 50, and 54. No
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`other petitions related to the ’183 Patent are pending.
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`- 2 -
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`Case IPR2016-01812
`U.S. Patent No. 8,640,183 B2
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`Patent Owner elected not to file a Preliminary Response. Petitioner and
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`Patent Owner have reached a Settlement Agreement to end their disputes in this
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`proceeding and the underlying litigation. Pursuant to 35 U.S.C. §317(b) and
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`37 C.F.R. §42.74(b), the agreement between the Parties is in writing, constitutes
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`the entire understanding and agreement between the Parties, and a copy of the
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`Settlement Agreement is submitted herewith as Exhibit 2001.
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`The Parties jointly request that the Settlement Agreement filed as Exhibit
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`2001 be treated as business confidential information and kept separate from the
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`underlying patent file, as provided in 35 U.S.C. §317(b) and 37 C.F.R. §42.74(c),
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`to maintain confidentiality of the settlement agreement.
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`ARGUMENT
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`A joint motion to terminate generally “must (1) include a brief explanation
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`as to why termination is appropriate; (2) identify all parties in any related litigation
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`involving the patents at issue; (3) identify any related proceedings currently before
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`the Office, and (4) discuss specifically the current status of each such related
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`litigation or proceeding with respect to each party to the litigation or proceeding.”
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`Heartland Tanning, Inc. v. Sunless, Inc., IPR2014-00018, Paper 26 at 2 (PTAB Jul.
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`28, 2014).
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`The Board should terminate this proceeding as the Parties jointly request, for
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`- 3 -
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`Case IPR2016-01812
`U.S. Patent No. 8,640,183 B2
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`the following reasons.
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`1.
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`Brief Explanation as to Why Termination Is Appropriate
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`The Parties have met the statutory requirement that they file a “joint request”
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`to terminate before the office “has decided the merits of the proceeding.”
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`35 U.S.C. §317(a). The proceeding is still at an early stage. Patent Owner elected
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`not to file a Preliminary Response. The Board entered an institution decision as to
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`claims 1-5, 16, 18-20, 24, 32, 34, 35, 37, 38, 42, 44, 47, and 50-55. Patent Owner’s
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`Response is due on June 6, 2017.
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`The Parties have reached a settlement as to the ’183 Patent to end this
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`dispute. A copy of the confidential Settlement Agreement pertaining to this case is
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`filed concurrently herewith. See Ex. 2001. The Parties further jointly certify that
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`there is no other agreement or understanding between them, including any other
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`collateral agreements, made in connection with, or in contemplation of, the
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`termination of the instant proceeding as set forth in 35 U.S.C. §317(b).
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`The Parties respectfully submit that termination of this proceeding is
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`appropriate because (a) this proceeding is at an early stage and no motions are
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`outstanding; (b) the Parties have reached agreement to end their dispute concerning
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`the ’183 Patent; (c) the Parties have agreed to dismiss the related district court
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`litigation between themselves with respect to the ’183 Patent; (d) the Parties agree
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`- 4 -
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`Case IPR2016-01812
`U.S. Patent No. 8,640,183 B2
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`that this Inter Partes Review should be terminated; and (e) termination of this
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`proceeding will preserve the Board’s resources and obviate the need for any more
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`Board involvement in the present proceeding.
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`2. Identity and Status of Parties in Related Litigation Involving the Patent
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`The ’183 Patent was in dispute against Petitioner in Convergent Media
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`Solutions, LLC v. Netflix, Inc., No. 3:15-cv-02160-M (N.D. Tex.). This case has
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`been dismissed pursuant to the settlement agreement between the Parties. This case
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`was consolidated for pre-trial purposes with lead case Convergent Media Solutions,
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`LLC v. AT&T, Inc. 3:15-cv-2156-M (N.D. Tex.), which is still on-going. There are
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`no other current or contemplated pending litigation proceedings involving the ’183
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`Patent.
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` 3.
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`Identity and Status of Any Related Proceedings Before the Office
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`The Board entered a final written decision on the ’183 Patent in related
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`proceeding IPR2016-00047, filed by Unified Patents Inc., on March 29, 2017,
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`finding claims 1-5, 16, 18, 24-26, 32-38, 40-42, 49, 51-53, 55, 58, and 59
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`unpatentable. IPR2016-00047, Paper 23. Further, the Board entered an adverse
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`judgment on claims 60 and 61 of the ’183 Patent at Patent Owner’s request. Id. No
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`other petitions related to the ’183 Patent are pending.
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`CONCLUSION
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`Case IPR2016-01812
`U.S. Patent No. 8,640,183 B2
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`For at least the foregoing reasons, Petitioner and Patent Owner respectfully
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`request termination of this Inter Partes Review.
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`Respectfully Submitted,
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`/s/ Matthew C. Juren
`Matthew C. Juren
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`Registration No. 68,233
`NELSON BUMGARDNER, P.C.
`3131 W. 7th Street, Suite 300
`Fort Worth, Texas 76107
`Telephone: (817) 377-9111
`Facsimile: (817) 377-3485
`matthew@nelbum.com
`Counsel for Patent Owner
`
`/s/ Chun M. Ng
`Chun M. Ng
`USPTO Reg. No. 36,878
`Perkins Coie LLP
`1201 Third Avenue, Suite 4900
`Seattle, WA 98101-3099
`Phone: 206-359-6488
`Fax: 206-359-7488
`CNg@perkinscoie.com
`Counsel for Petitioner
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`- 6 -
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`Dated: May 1, 2017
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`Case IPR2016-01812
`U.S. Patent No. 8,640,183 B2
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`CERTIFICATE OF SERVICE
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`
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`I hereby certify that on May 1, 2017, a copy of the JOINT MOTION OF
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`PETITIONER AND PATENT OWNER TO TERMINATE PROCEEDING PURSUANT TO 35
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`U.S.C. §317 AND 37 C.F.R. §42.74 has been served in its entirety via email on the
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`following:
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`Chun M. Ng (Reg. No. 36,878)
`Vinay P. Sathe (Reg. No. 55,595)
`Patrick J. McKeever (Reg. No. 66,019)
`Miguel J. Bombach (Reg. No. 68,636)
`Kevin E. Kantharia (Reg. No. 71,071)
`Matthew C. Bernstein (Pro Hac Vice)
`Perkins Coie LLP
`11988 El Camino Real, Suite 350
`San Diego, CA 92130
`Phone: 858-720-5700
`Fax: 858-720-5799
`Service Email: PerkinsServiceConvergentMediaIPR@perkinscoie.com
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`Respectfully Submitted,
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`/s/ Matthew C. Juren
`Matthew C. Juren
`Registration No. 68,233
`Attorney for Patent Owner
`NELSON BUMGARDNER, P.C.
`3131 W. 7th Street, Suite 300
`Fort Worth, Texas 76107
`Telephone: (817) 377-9111
`Facsimile: (817) 377-3485
`matthew@nelbum.com
`Counsel for Patent Owner
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`Dated: May 1, 2017
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