Huluv.Chinook Licensing DE, LLC

Patent Trial and Appeal Board

Nov 30, 2015

09796235 (P.T.A.B. Nov. 30, 2015)

Trials@uspto.gov Paper 14
571-272-7822 Entered: November 30, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

HULU, LLC,
Petitioner,
v.
CHINOOK LICENSING DE, LLC,
Patent Owner.
_______________

Case IPR2015-00625
Patent 7,047,482 B1
_______________

Before WILLIAM V. SAINDON, JAMES P. CALVE, and
TRENTON A. WARD, Administrative Patent Judges.

SAINDON, Administrative Patent Judge.

TERMINATION
Settlement After Institution
35 U.S.C. § 317 and 37 C.F.R. § 42.72

IPR2015-00625
Patent 7,047,482 B1

2
We instituted an inter partes review of claims 1–7 and 9–20 of
U.S. Patent No. 7,047,482 B1 on August 12, 2015. Paper 8. On
November 23, 2015, we received a request from the parties for a conference
call to discuss authorization to file a motion to terminate the proceeding due
to settlement. We authorized the parties to file a joint motion without a call.
On November 24, 2015, we received a Joint Motion to Terminate
Proceeding (Paper 13), a Joint Request to File Settlement Agreement as
Business Confidential Information (Paper 12), and a Settlement Agreement
(Ex. 1). Upon review of the Motions, we hereby grant both.
Motion to Terminate
The Office Patent Trial Practice Guide provides that “[t]here are
strong public policy reasons to favor settlement between the parties to a
proceeding,” and “[t]he Board expects that a proceeding will terminate after
the filing of a settlement agreement, unless the Board has already decided
the merits of the proceeding.” Office Patent Trial Practice Guide, 77 Fed.
Reg. 48,756, 48,768 (Aug. 14, 2012). Trial in this proceeding is still in a
relatively early stage; we have not decided the merits of the proceeding. In
addition, the parties represent they have resolved and settled all issues
involving the patent at issue. Under these circumstances, we determine that
it is appropriate to terminate the trial in this proceeding without rendering a
decision on the merits. See 37 C.F.R. § 42.72.
Motion to Keep Confidential
A strong public policy exists for making information filed in an inter
partes review publicly available. 37 C.F.R. § 42.14; see also Office Patent
Trial Practice Guide, 77 Fed. Reg. at 48,760–61. Only “confidential
IPR2015-00625
Patent 7,047,482 B1

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information” is protected from disclosure. 35 U.S.C. § 316(a)(7). These
provisions balance the public’s interest in maintaining a complete and
understandable file history with the parties’ interest in protecting truly
sensitive information. Office Patent Trial Practice Guide, 77 Fed. Reg. at
48,760.
Here, we agree with the parties that the settlement agreement (Ex. 1)
is business confidential, non-public information. Accordingly, it is
appropriate to treat it as business confidential information and to keep it
separate from the patent files.
Order
Accordingly, it is
ORDERED that the joint motion to terminate this proceeding is
granted;
FURTHER ORDERED that this proceeding is hereby terminated; and
FURTHER ORDERED that the joint request for the settlement
agreement (Ex. 1) to be treated as business confidential information and be
kept separate from the patent files, pursuant to 35 U.S.C. § 317(b) and
37 C.F.R. § 42.74(c), is granted.

IPR2015-00625
Patent 7,047,482 B1

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PETITIONER:

Eliot Williams
Eliot.williams@bakerbotts.com

Harper Batts
Harper.batts@bakerbotts.com

PATENT OWNER:

Eugenio J. Torres-Oyola
etorres@ferraiuoli.com

Victor M. Rodriguez-Reyes
vrodriguezreyes@ferraiuoli.com