`571.272.7822
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`Paper No. 14
`Entered: May 11, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`NETFLIX, INC.,
`Petitioner,
`
`v.
`
`CONVERGENT MEDIA SOLUTIONS, LLC,
`Patent Owner.
`_______________
`
`Case IPR2016-01812
`Patent 8,640,183 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)
`
`
`
`
`
`
`
`IPR2016-01812
`Patent 8,640,183 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. 8,640,183 B2 (“the ’183 patent”) in this proceeding and in
`Convergent Media Solutions, LLC v. Netflix, Inc., No. 3:15-cv-02160 (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 1–5, 16, 18–20, 24, 32, 34, 35, 37,
`38, 42, 44, 47, 50–55, and 58–60 (“the challenged claims”) of the ’183
`patent on September 15, 2016. Paper 2. Patent Owner did not file a
`Preliminary Response. Mot. 4. We instituted trial on the challenged claims
`on March 3, 2017. See Paper 7, 23. Patent Owner’s Response to the
`Petition is due June 6, 2017. See Paper 8, 6. In a related proceeding, the
`Board found claims 1–5, 16, 18, 24–26, 32–38, 40–42, 49, 51–53, 55, 55,
`58, and 59 of the ’183 patent unpatentable, and entered adverse judgment
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`2
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`IPR2016-01812
`Patent 8,640,183 B2
`
`against claims 60 and 61 of the ’183 patent at Patent Owner’s request. See
`Unified Patents Inc. v. Convergent Media Solutions, LLC, Case IPR2016-
`00047, slip op. at 27–28 (PTAB Mar. 29, 2017) (Paper 29).
`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 ’183 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 IPR2016-01812 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. 8,640,183 B2.
`
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`3
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`IPR2016-01812
`Patent 8,640,183 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
`
`
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`4
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