`571-272-7822
`
`
`
`
`Paper: 15
`Entered: June 28, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`NFL ENTERPRISES LLC,
`Petitioner,
`
`v.
`
`OPENTV, INC.,
`Patent Owner.
`_____________________
`____________
`
`Case IPR2017-02092
`Patent 6,233,736 B1
`____________
`
`
`
`Before JAMESON LEE, SALLY C. MEDLEY, and
`MICHAEL R. ZECHER, Administrative Patent Judges.
`
`MEDLEY, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5(a)
`
`
`
`
`
`IPR2017-02092
`Patent 6,233,736 B1
`
`NFL Enterprises LLC (“Petitioner”)1 filed a Petition for inter partes
`review of claims 1–3 and 8 of U.S. Patent No. 6,233,736 B1 (Ex. 1001, “the
`’736 patent”). Paper 1 (“Pet.”). OpenTV, Inc. (“Patent Owner”)2 filed a
`Preliminary Response. Paper 6 (“Prelim. Resp.”). On March 19, 2018, we
`instituted trial as to claims 1–3 and 8 of the ’736 patent, and subsequently
`modified our institution decision to institute on all of the challenged claims
`and all of the grounds presented in the Petition. Papers 7, 13. On June 27,
`2018, Patent Owner informed the Board that the parties have reached a
`settlement agreement and seek authorization to file a joint motion to
`terminate the proceeding pursuant to 35 U.S.C. § 317.
`Generally, the Board expects that a proceeding will terminate after the
`filing of a settlement agreement. See, e.g., Office Patent Trial Practice
`Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). The rule governing
`settlement indicates that any agreement between the parties made in
`connection with, or in contemplation of, the termination of a proceeding
`shall be in writing and filed with the Board. 37 C.F.R. § 42.74. Based on
`the facts of this proceeding, the parties are authorized to file a joint motion
`to terminate this proceeding.
`The joint motion to terminate must include a brief explanation as to
`why termination of the proceeding is appropriate, and also should update the
`Board as to the status of any other matters involving the patent at issue. The
`parties also must file, as an exhibit, a true copy of their settlement agreement
`
`
`1 Petitioner, NFL Enterprises LLC, identifies NFL Ventures, L.P. as a real
`party-in-interest. Pet. 2.
`2 Patent Owner, OpenTV, Inc., identifies Nagra USA, Inc. and Kudelski S.A.
`as real parties-in-interest. Paper 4, 2.
`
`2
`
`
`
`IPR2017-02092
`Patent 6,233,736 B1
`
`to terminate the proceeding. A redacted version of the settlement agreement
`will not be accepted as a true copy of the settlement agreement. Any request
`that the agreement be treated as business confidential information and be
`kept separate from the file of the involved patent must be filed with the
`settlement agreement. 37 C.F.R. § 42.74(c). The parties are directed to
`FAQ G2 on the Board’s website page at http://www.uspto.gov/patents-
`application-process/patent-trial-and-appeal-board/ptab-e2e-frequently-
`asked-questions for instructions on how to file their settlement agreement as
`confidential (e.g., uploading as “Parties and Board Only”) in PTAB E2E.
`The joint motion to terminate and the settlement agreement shall be
`filed no later than July 6, 2018. Accordingly, it is
`ORDERED that the parties are authorized to file a joint motion to
`terminate the proceeding;
`FURTHER ORDERED that the joint motion is due no later than July
`6, 2018;
`FURTHER ORDERED that the joint motion shall be accompanied by
`a true copy of the settlement agreement as required by 37 C.F.R. § 42.74(b);
`FURTHER ORDERED that the parties may request that the
`settlement agreement be treated as business confidential information as
`specified by 37 C.F.R. § 42.74(c); and
`FURTHER ORDERED that any confidential settlement agreement
`must be filed electronically in accordance with the instructions provided on
`the Board’s website (e.g., uploading as “Parties and Board Only”).
`
`
`
`
`
`3
`
`
`
`IPR2017-02092
`Patent 6,233,736 B1
`
`For PETITIONER:
`VINSON & ELKINS LLP
`Stephen C. Stout
`Hilary L. Preston
`Rachael P. McClure
`sstout@velaw.com
`hpreston@velaw.com
`rmcclure@velaw.com
`
`For PATENT OWNER:
`FINNEGAN, HENDERSON, FARABOW,
`GARRETT & DUNNER, LLP
`Joshua L. Goldberg
`Erika H. Arner
`Daniel C. Tucker
`Cory Bell
`joshua.goldberg@finnegan.com
`erika.arner@finnegan.com
`daniel.tucker@finnegan.com
`cory.bell@finnegan.com
`
`4
`
`
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