Microsoft Corporationv.Optimum Content Protection LLC

Patent Trial and Appeal Board

Feb 3, 2015

10679055 (P.T.A.B. Feb. 3, 2015)

Trials@uspto.gov Paper No. 9
571-272-7822 Entered: February 3, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

MICROSOFT CORPORATION,
Petitioner,

v.

OPTIMUM CONTENT PROTECTION LLC,
Patent Owner.
____________

IPR2015-00048 (U.S. Patent No. 7,502,470)
IPR2015-00049 (U.S. Patent No. 7,502,470)
____________

Before THOMAS L. GIANNETTI, JUSTIN BUSCH, and
MICHELLE N. WORMMEESTER, Administrative Patent Judges.

WORMMEESTER, Administrative Patent Judge.

ORDER
Termination of the Proceedings
37 C.F.R. §§ 42.5, 42.72, and 42.73
IPR2015-00048 (U.S. Patent No. 7,502,470)
IPR2015-00049 (U.S. Patent No. 7,502,470)

2
I. DISCUSSION
On January 13, 2015, Petitioner and Patent Owner filed a joint Motion
to Terminate and a Joint Request that the Settlement Agreement Be Treated
as Business Confidential Information in each of IPR2015-00048 and
IPR2015-00049 (“the Proceedings”). Papers 6, 7. At the Board’s request,
an additional paper, Joint Statement Regarding Settlement Agreement, was
filed. Paper 8. For the reasons below, in each of the Proceedings, we grant
both the motion and the confidentiality request and terminate the proceeding.
IPR2015-00048 and IPR2015-00049 are both in the pre-trial stage;
Patent Owner’s preliminary responses to the petitions are due February 5,
2015.
The Joint Motion to Terminate indicates the parties entered into a
settlement agreement. A copy of a settlement agreement between Acacia
Research Corporation and Petitioner has been filed in each of the
Proceedings. In a Joint Statement Regarding Settlement Agreement, which
was filed on January 30, 2015, the parties explain that Patent Owner is a
wholly-owned company of Acacia Research Group LLC, which is a wholly-
owned subsidiary of Acacia Research Corporation. Thus, all the relevant
parties in the Proceedings have expressed their desire to terminate the
Proceedings.
Based on the facts presented, we determine that it is appropriate to
terminate the Proceedings. Thus, the Joint Motions to Terminate are
granted. In addition, we determine there is good cause for, and, therefore,
grant the Joint Requests to treat the settlement as business confidential
information.

IPR2015-00048 (U.S. Patent No. 7,502,470)
IPR2015-00049 (U.S. Patent No. 7,502,470)

3
II. ORDER
In view of the foregoing, it is hereby:
ORDERED that the settlement agreement filed in the Proceedings
(Exhibit 1085 in each) is to be treated as business confidential information
and to be kept separate from the patent file;
FURTHER ORDERED that the Joint Motions to Terminate IPR2015-
00048 and IPR2015-00049 are granted;
FURTHER ORDERED that IPR2015-00048 and IPR2015-00049 are
terminated.

IPR2015-00048 (U.S. Patent No. 7,502,470)
IPR2015-00049 (U.S. Patent No. 7,502,470)

4

For PETITIONER:
Joseph A. Micallef
Jeffrey P. Kushan
SIDLEY AUSTIN LLP
jmicallef@sidley.com
jkushan@sidley.com

For PATENT OWNER:
Alisa Lipski
AHMAD, ZAVITSANOS, ANAIPAKOS, ALAVI & MENSING P.C.
alipski@azalaw.com