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`Paper No.
`Filed: July 6, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEALS BOARD
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`NFL ENTERPRISES LLC,
`Petitioner
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`v.
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`OPENTV, INC.
`Patent Owner
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`Case No.: IPR2017-02092
`Patent No. 6,233,736
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`JOINT MOTION TO TERMINATE PROCEEDING
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`IPR2017-02092
`Patent No. 6,233,736
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`INTRODUCTION
`Petitioner NFL Enterprises LLC and Patent Owner OpenTV, Inc., through its
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`affiliation with Nagravision S.A., have entered into a settlement agreement that
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`resolves all underlying disputes between the parties, including this proceeding. In
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`an Order dated June 28, 2018 (Paper 15), the Board authorized the parties to file a
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`joint motion to terminate and a joint request that the settlement agreement be treated
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`as business confidential information. As required by the Board, the parties are
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`submitting a true copy of the settlement agreement (Ex. 2001) along with this joint
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`motion to terminate and a joint request that the settlement agreement be treated as
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`business confidential information.
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`STATUS OF PROCEEDINGS
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`The parties have filed a joint stipulation to dismiss the related litigation,
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`Nagravision SA et al v. NFL Enterprises, LLC, No. 2:17-cv-03919 (C.D. Cal.).
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`There are no other pending proceedings involving the subject patent.
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`RELIEF REQUESTED
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`Petitioner and Patent Owner jointly request that the Board terminate this
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`proceeding in its entirety. Termination is appropriate at this stage in view of the
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`agreement that the parties are filing. The agreement ends all patent disputes
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`between the parties, including this proceeding.
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`IPR2017-02092
`Patent No. 6,233,736
`Both Congress and the federal courts have expressed a strong interest in
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`encouraging settlement in litigation. See, e.g., Delta Air Lines, Inc. v. August, 450
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`U.S. 346, 352 (1981) (“The purpose of [Federal Rule of Civil Procedure] 68 is to
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`encourage the settlement of litigation.”); Bergh v. Dept. of Transp., 794 F.2d 1575,
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`1577 (Fed. Cir. 1986) (“The law favors settlement of cases.”), cert. denied, 479
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`U.S. 950 (1986). The U.S. Court of Appeals for the Federal Circuit also places a
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`particularly strong emphasis on settlement. See Cheyenne River Sioux Tribe v. U.S.,
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`806 F.2d 1046, 1050 (Fed. Cir. 1986) (noting that the law favors settlement to
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`reduce antagonism and hostility between parties). Moreover, the Board generally
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`expects that a proceeding will terminate after the filing of a settlement. See, e.g.,
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`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 46,768 (Aug. 14, 2012).
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`Maintaining this proceeding after Petitioner’s settlement with Patent Owner
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`would discourage future settlements by removing a primary motivation for
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`settlement: eliminating litigation risk by resolving the parties’ disputes and ending
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`the pending proceedings between them. For patent owners, litigation risks include
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`the potential for an invalidity ruling against their patents. If a patent owner knows
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`that an inter partes review or covered business method review will likely continue
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`regardless of settlement, it creates a strong disincentive for the patent owner to
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`settle.
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`CONCLUSION
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`IPR2017-02092
`Patent No. 6,233,736
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`For the foregoing reasons, Petitioner and Patent Owner jointly request that
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`the Board terminate this proceeding in its entirety.
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`Jointly Submitted,
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`By: /Joshua L. Goldberg/
`Joshua L. Goldberg,
`Registration No. 59,369
`Lead Counsel for OpenTV
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`By: /Stephen C. Stout /
`Stephen C. Stout,
`Registration No. 61,326
`Lead Counsel for
`NFL Enterprises LLC
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`Dated: July 6, 2018
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`IPR2017-02092
`Patent No. 6,233,736
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`CERTIFICATE OF SERVICE
`The undersigned hereby certifies that a copy of the foregoing JOINT
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`MOTION TO TERMINATE PROCEEDING was served via e-mail on counsel
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`of record for the Petitioner on July 6, 2018 at the following addresses:
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`Stephen C. Stout, Lead Counsel
`Hilary L. Preston, Back-up Counsel
`Rachel P. McClure, Back-up Counsel
`sstout@velaw.com
`hpreston@velaw.com
`rmcclure@velaw.com
`NFLE-IPR@velaw.com
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`By: /Lauren K. Young/
`Lauren K. Young
`Litigation Legal Assistant
`FINNEGAN, HENDERSON, FARABOW,
`GARRETT & DUNNER, L.L.P.
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`Dated: July 6, 2018
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