IPR2019-01420 (P.T.A.B. Nov. 13, 2020)

Rovi Guides, Inc.

Patent Trials and Appeals BoardNov 13, 2020

IPR2019-01420 (P.T.A.B. Nov. 13, 2020)

Trials@uspto.gov Paper 32 571-272-7822 Entered: November 13, 2020 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD COMCAST CABLE COMMUNICATIONS, LLC, Petitioner, v. ROVI GUIDES, INC., Patent Owner. IPR2019-01416 (Patent 7,735,107 B2) IPR2019-01420 (Patent 7,873,978 B2)1 Before JAMESON LEE, WESLEY B. DERRICK, and SHEILA F. McSHANE, Administrative Patent Judges. PER CURIAM. TERMINATION Due to Settlement After Institution of Trial 35 U.S.C. § 317; 37 C.F.R. § 42.74 On November 12, 2020, the parties filed Joint Motions to Terminate pursuant to 35 U.S.C. § 317 in each of the above-captioned cases. IPR2019- 01416, Paper 34 (“Mot.”)2; IPR2019-01420, Paper 30. In addition, pursuant 1 We exercise our discretion to issue one order to be entered in both cases. The parties are not authorized to use this style heading for subsequent papers without preapproval by the Board. 2 Further citations are to IPR2019-01416 as representative. IPR2019-01416 (Patent 7,735,107 B2) IPR2019-01420 (Patent 7,873,978 B2) 2 to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), the parties filed what they represent as a true copy of “any agreement or understanding . . . between [the parties] made in connection with, or in contemplation of, the termination of the proceeding,” along with Joint Requests That The Settlement And Licensing Agreements Be Treated As Business Confidential Information And Be Kept Separate Under 35 U.S.C. § 317(b), requesting that the agreements be kept separate from the patent file in each of the above-captioned cases and be treated as business confidential information. IPR2019-01416, Paper 35; IPR2019-01420, Paper 31. In these cases, the Board has instituted review, but has not yet issued a final written decision. The parties indicate that terminations of the proceedings are appropriate because a settlement has been reached, the Board has not yet decided the merits of the proceedings, and terminating the proceedings now would serve the interests of judicial economy and the interests of the parties. Mot. 2. “An 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.” 35 U.S.C. § 317(a). Under these circumstances, we determine that it is appropriate to terminate each case without rendering a final written decision. 37 C.F.R. § 42.74. Because the parties have agreed to settle the proceeding and have submitted settlement and license agreements, we agree with the parties that the settlement and license agreements should be treated as business confidential information and kept separate from the files of the involved patents. 37 C.F.R. § 42.74. Therefore, the Joint Motions are granted. IPR2019-01416 (Patent 7,735,107 B2) IPR2019-01420 (Patent 7,873,978 B2) 3 Accordingly, it is ORDERED that the Joint Motions to Terminate are granted; FURTHER ORDERED that the parties’ requests that the settlement and licensing agreements be treated as business confidential information, to be kept separate from the patent file, are granted; FURTHER ORDERED that the settlement and license agreements (IPR2019-01416, Exs. 2008, 2009; IPR2019-01420, Exs. 2022, 2023) shall be treated as business confidential information and shall be kept separate from the pertinent file consistent with 37 C.F.R. § 42.74(b). FURTHER ORDERED that the proceedings are terminated. IPR2019-01416 (Patent 7,735,107 B2) IPR2019-01420 (Patent 7,873,978 B2) 4 FOR PETITIONER: Frederic Meeker Bradley Wright Christopher McKee Blair Silver Tom Pratt Azuka Dike Eric Zelepugas Brian Apel Kurt Riester Kerry Creeron BANNER & WITCOFF, LTD. cmckee@bannerwitcoff.com bsilver@bannerwitcoff.com tpratt@bannerwitcoff.com adike@bannerwitcoff.com ezelepugas@bannerwitcoff.com bapel@bannerwitcoff.com kriester@bannerwitcoff.com kcreeron@bannerwitcoff.com fmeeker@bannerwitcoff.com bwright@bannerwitcoff.com FOR PATENT OWNER: Jason Eisenberg Lestin Kenton Ali Allawi STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C. jasone-ptab@sternekessler.com lkenton-ptab@sternekessler.com aallawi-PTAB@sternekessler.com