`571-272-7822
`
`
`
`Paper 11
`Entered: April 28, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`NETFLIX, INC.,
`Petitioner,
`
`v.
`
`CONVERGENT MEDIA SOLUTIONS, LLC,
`Patent Owner.
`
`
`
`Case IPR2016-01814
`Patent 8,914,840 B2
`
`
`
`Before JAMESON LEE, KEN B. BARRETT, and JOHN F. HORVATH,
`Administrative Patent Judges.
`
`HORVATH, Administrative Patent Judge.
`
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`IPR2016-01814
`Patent 8,914,840 B2
`
`
`I.
`
`INTRODUCTION
`
`On April 3, 2017, AT&T Services (“AT&T”) filed a petition
`
`challenging the same claims of U.S. Patent No. 8,914,840 (“the ’840 patent)
`
`on the same grounds raised in the Petition in this case, and a motion to join
`
`that proceeding with this proceeding. See AT&T Service, Inc. v. Convergent
`
`Media Solutions, LLC, Case IPR2017-01237 (PTAB Apr. 3, 2017) (Papers
`
`1, 3) (hereafter, “the related petition”).
`
`On April 24, 2017, Netflix, Inc. (“Petitioner,” “Netflix”) and
`
`Convergent Media Solutions, LLC (“Patent Owner”, “CMS”) jointly
`
`requested authorization to file (1) a joint motion to terminate this
`
`proceeding, and (2) a request for confidential treatment of settlement papers
`
`pursuant to 37 CFR §42.74(c).
`
`On April 25, 2017, Judges Lee, Barrett, and Horvath conducted a
`
`conference call with counsel for AT&T, Netflix, and CMS. On the call were
`
`Mr. Bernstein and Mr. Ng for Netflix, Mr. Pankratz for AT&T, and Mr.
`
`Bumgardner for CMS. During the call, the Board identified an approaching
`
`deadline for filing an opposition to AT&T’s motion for joinder, and asked
`
`whether Netflix wished to file an opposition to the motion. Mr. Bernstein
`
`indicated he would need to consult with his client prior to answering the
`
`Board’s inquiry. On April 26, 2017, Mr. Bernstein emailed the Board
`
`indicating that Netflix will not be filing an opposition to AT&T’s motion for
`
`joinder.
`
`Petitioner’s and Patent Owner’s joint request to file a joint motion to
`
`terminate this Proceeding is hereby granted.
`
`II. DISCUSSION
`
`A joint motion for termination should (1) include a brief explanation
`
`2
`
`
`
`IPR2016-01814
`Patent 8,914,840 B2
`
`as to why termination is appropriate; (2) identify all parties in any related
`
`litigation involving the patent at issue in this proceeding; (3) identify any
`
`related proceedings currently before the USPTO; and (4) discuss specifically
`
`the current status of each such related litigation or proceeding with respect to
`
`each party to the litigation or proceeding. The joint motion for termination
`
`must be accompanied by a true copy of the settlement agreement between
`
`the parties, as required by 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b). A
`
`redacted version will not be accepted as a true copy of the settlement
`
`agreement.
`
`It is hereby:
`
`III. ORDER
`
`ORDERED that the parties are authorized to file a joint motion to
`
`terminate this Proceeding in accordance with 37 C.F.R. § 42.20; and
`
`FURTHER ORDERED that the parties are authorized to file a request
`
`for confidential treatment of settlement papers pursuant to 37 C.F.R.
`
`§42.74(c).
`
`
`
`
`
`
`
`3
`
`
`
`IPR2016-01814
`Patent 8,914,840 B2
`
`For PETITIONER:
`
`Chun Ng
`Patrick McKeever
`Vinay Sathe
`Miguel Bombach
`Kevin Kantharia
`Matthew C. Bernstein
`cng@perkinscoie.com
`pmckeever@perkinscoie.com
`vsathe@perkinscoie.com
`mbombach@perkinscoie.com
`kkantharia@perkinscoie.com
`mbernstein@perkinscoie.com
`
`For PATENT OWNER:
`
`Matthew Juren
`Barry Bumgardner
`matthew@nelbum.com
`barry@nelbum.com
`
`
`4
`
`