Rovi Guides, Inc.

Patent Trials and Appeals Board

Nov 17, 2020

IPR2019-01353 (P.T.A.B. Nov. 17, 2020)

Trials@uspto.gov Paper 49
571-272-7822 Date: November 17, 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.

IPR2019-01353
Patent 8,448,215 B2

Before KRISTEN L. DROESCH, BARBARA A. PARVIS, and
KRISTI L. R. SAWERT, Administrative Patent Judges.
PARVIS, Administrative Patent Judge.

TERMINATION
Due to Settlement After Institution of Trial
35 U.S.C. § 317; 37 C.F.R. § 42.74
IPR2019-01353
Patent 8,448,215 B2
2
On November 13, 2020, pursuant to the Board’s authorization,
Comcast Communications, LLC (“Petitioner”) and Rovi Guides, Inc.
(“Patent Owner”) filed a joint motion to terminate this inter partes review
pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. § 42.72. Paper 46 (“Joint
Motion” or “Mot.”). The Joint Motion was accompanied by a true,
unredacted copy of a Settlement Agreement (Exhibit 2026) and a true,
unredacted copy of a Patent License Agreement (Exhibit 2027). The parties
also filed a joint request to treat the Settlement Agreement and the Patent
License Agreement as business confidential information, to be kept separate
from the patent file, pursuant to 35 U.S.C. § 317(b) and 37 C.F.R.
§ 42.74(c). Paper 47.
In its Joint Motion, the parties “jointly request that the Board
terminate this proceeding in its entirety.” Mot. 2. The parties state that they
“have resolved their disputes regarding” U.S. Patent No. 8,448,215 B2 (“the
’215 patent”). The parties also state that they “do not anticipate further
litigation between them concerning the ’215 Patent.” Id. at 1. The parties
state that “[t]ermination is appropriate at this stage and in view of a
settlement between Petitioner and Patent Owner.” Id. at 2.
The Board generally expects that “a proceeding will terminate after
the filing of a settlement agreement, unless the Board has already decided
the merits.” Consolidated Trial Practice Guide, 86 (Nov. 2019),
https://www.uspto.gov/sites/default/files/documents/tpgnov.pdf?MURL=;
see also 37 C.F.R. § 42.72. Here, although the Board has instituted inter
partes review of the ’215 patent and held an oral argument, the Board has
not decided the merits of the proceeding. Under the circumstances presented
here, therefore, we determine that it is appropriate to terminate this
IPR2019-01353
Patent 8,448,215 B2
3
proceeding with respect to both Petitioner and Patent Owner. Accordingly,
we grant the parties’ Joint Motion to terminate.
We also determine that the parties have complied with the
requirements of 37 C.F.R. § 42.74(c) to have the Settlement Agreement and
the Patent License Agreement treated as business confidential information
and kept separate from the files of the ’215 patent in this proceeding. Thus,
we grant the parties’ request to treat the Settlement Agreement and the
Patent License Agreement as business confidential.
Accordingly, it is
ORDERED that the Joint Motion to terminate is GRANTED;
FURTHER ORDERED that the joint request to treat the parties’
Settlement Agreement (Exhibit 2026) and Patent License Agreement
(Exhibit 2027) as business confidential information, to be kept separate from
the patent file, is GRANTED; and
FURTHER ORDERED that the instant proceeding is TERMINATED.

IPR2019-01353
Patent 8,448,215 B2
4
PETITIONER:
Frederic M. Meeker
Bradley C. Wright
Blair A. Silver
Charles L. Miller
Brian J. Emfinger
BANNER & WITCOFF, LTD.
fmeeker@bannerwitcoff.com
bwright@bannerwitcoff.com
bsilver@bannerwitcoff.com
cmiller@bannerwitcoff.com
bemfinger@bannerwitcoff.com

PATENT OWNER:
Jason D. Eisenberg
Ross G. Hicks
STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
jasone-PTAB@sternekessler.com
rhicks-PTAB@sternekessler.com