`Tel: 571-272-7822
`
`
`Paper 14
`Date: June 2, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`NETFLIX, INC. and ROKU, INC.,
`Petitioner,
`v.
`UNILOC 2017 LLC,
`Patent Owner.
`____________
`
`IPR2020-00041
`Patent 8,407,609 B2
`____________
`
`
`Before CHARLES J. BOUDREAU, DANIEL J. GALLIGAN, and
`JULIET MITCHELL DIRBA, Administrative Patent Judges.
`
`DIRBA, Administrative Patent Judge.
`
`
`
`
`ORDER
`Settlement as to Roku, Inc.
`Granting Request to Keep Agreement Confidential
`35 U.S.C. § 317; 37 C.F.R. § 42.74
`
`
`
`
`
`
`IPR2020-00041
`Patent 8,407,609 B2
`Netflix, Inc. and Roku, Inc. filed a Petition seeking institution of inter
`partes review of claims 1–3 of U.S. Patent No. 8,407,609 B2 (Ex. 1001, “the
`’609 patent”). Paper 1. After reviewing the Petition (Paper 1) and Patent
`Owner’s Preliminary Response (Paper 9), we instituted an inter partes
`review of the challenged claims on March 25, 2020. Paper 10.
`On May 27, 2020, pursuant to our authorization, Petitioner Roku, Inc.
`(“Roku”) and Patent Owner Uniloc 2017 LLC (“Uniloc”) filed a Joint
`Motion to Terminate Petitioner Roku. Paper 12 (“Motion” or “Mot.”).
`Roku and Uniloc also filed a copy of a settlement agreement (Ex. 1007)
`along with an authorized Joint Request to File Settlement Agreement as
`Business Confidential Information and Keep Separate Under 35 U.S.C.
`§ 317(b) and 37 C.F.R. § 42.74(c) (Paper 13).
`In the Motion, Roku and Uniloc state that they “have reached a
`settlement as to all the disputes in this proceeding and as to the ‘609 Patent.”
`Mot. 2. They also state that “[a] true copy of the settlement agreement is
`filed concurrently herewith” (id. (citing Ex. 1007)), and they “jointly certify
`that there are no other written or oral agreements or understandings,
`including any collateral agreements, between them . . . that are made in
`connection with[,] or in contemplation of, the termination of the instant
`proceeding with respect to Roku” (id. at 3). The moving parties submit that
`termination is appropriate because “the proceeding is still at an early stage”
`and “the Board has not decided on the merits of the case.” Id.
`Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under
`this chapter shall be terminated with respect to any petitioner upon the joint
`request of the petitioner and the patent owner, unless the Office has decided
`the merits of the proceeding before the request for termination is filed.” Any
`
`2
`
`
`
`IPR2020-00041
`Patent 8,407,609 B2
`agreement or understanding “made in connection with, or in contemplation
`of, the termination of an inter partes review” must be in writing, and a true
`copy of any such documents must be filed in the Office before termination.
`Id. § 317(b); accord 37 C.F.R. § 42.74(b).
`Because the moving parties (Roku and Uniloc) represent that they
`have complied with the applicable requirements, we terminate the inter
`partes review with respect to Petitioner Roku. See 35 U.S.C. § 317(a);
`37 C.F.R. § 42.74. We also grant the parties’ request to treat the settlement
`agreement (Exhibit 1007) as business confidential information. See
`35 U.S.C. § 317(b); 37 C.F.R. § 42.74(c).
`The other Petitioner—Netflix, Inc.—is not a party to the settlement
`agreement and did not join the Motion. Accordingly, this inter partes
`review proceeding remains pending as to Petitioner Netflix, Inc.
`
`ORDER
`
`Accordingly, it is:
`ORDERED that the Joint Motion to Terminate with respect to Roku
`only is granted;
`FURTHER ORDERED that the case caption for future submissions in
`this proceeding shall not list Roku as a petitioner;
`FURTHER ORDERED that the settlement agreement (Exhibit 1007)
`be treated as business confidential information and be kept separate from the
`files of the involved U.S. Patent No. 8,407,609 B2;
`FURTHER ORDERED this paper does not constitute a final written
`decision pursuant to 35 U.S.C. § 318(a).
`
`
`
`
`3
`
`
`
`IPR2020-00041
`Patent 8,407,609 B2
`PETITIONER:
`
`Babak Tehranchi
`Patrick J. McKeever
`Kyle R. Canavera
`PERKINS COIE LLP
`tehranchi-ptab@perkinscoie.com
`mckeever-ptab@perkinscoie.com
`canavera-ptab@perkinscoie.com
`
`
`PATENT OWNER:
`
`Ryan Loveless
`Brett Mangrum
`James Etheridge
`Jeffrey Huang
`ETHERIDGE LAW GROUP
`ryan@etheridgelaw.com
`brett@etheridgelaw.com
`jim@etheridgelaw.com
`jeff@etheridgelaw.com
`
`
`
`
`
`
`
`
`4
`
`
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