Trials@uspto.gov
`571.272.7822
`
`
`
`
`
`Paper No. 19
`Entered: June 8, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`NETFLIX, INC. and AT&T SERVICES, INC.,
`Petitioners,
`
`v.
`
`CONVERGENT MEDIA SOLUTIONS, LLC,
`Patent Owner.
`_______________
`
`Case IPR2016-01814
`Case IPR2017-01237
`Patent 8,914,840 B21
`_______________
`
`Before JAMESON LEE, KEN B. BARRETT, and JOHN F. HORVATH,
`Administrative Patent Judges.
`
`HORVATH, Administrative Patent Judge.
`
`
`ORDER
`
`Granting AT&T Services Joint Motion to Terminate
`Granting Convergent Media Solutions Motion to Terminate
`37 C.F.R. §42.72
`and
`
`Granting Request to Treat Settlement Documents
`As Business Confidential Information
`37 C.F.R. § 42.74(c)
`
`
`
`
`1 Case IPR2017-01237 has been joined to Case IPR2016-01814
`
`
`571.272.7822
`
`
`
`
`
`Paper No. 19
`Entered: June 8, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`NETFLIX, INC. and AT&T SERVICES, INC.,
`Petitioners,
`
`v.
`
`CONVERGENT MEDIA SOLUTIONS, LLC,
`Patent Owner.
`_______________
`
`Case IPR2016-01814
`Case IPR2017-01237
`Patent 8,914,840 B21
`_______________
`
`Before JAMESON LEE, KEN B. BARRETT, and JOHN F. HORVATH,
`Administrative Patent Judges.
`
`HORVATH, Administrative Patent Judge.
`
`
`ORDER
`
`Granting AT&T Services Joint Motion to Terminate
`Granting Convergent Media Solutions Motion to Terminate
`37 C.F.R. §42.72
`and
`
`Granting Request to Treat Settlement Documents
`As Business Confidential Information
`37 C.F.R. § 42.74(c)
`
`
`
`
`1 Case IPR2017-01237 has been joined to Case IPR2016-01814
`
`
`
`IPR2016-01814
`IPR2017-01237
`Patent 8,914,840 B2
`
`
`
`
`
`
`I. INTRODUCTION
`
`
`On June 5, 2017, AT&T Services, Inc. (“AT&T”) and Convergent
`Media Solutions, Inc. (“CMS”) jointly filed a motion to terminate Petitioner
`AT&T from IPR2017-01237 and IPR2016-01814, two proceedings which
`have been joined (Paper 16, “Joint Mot.”), and a request to treat settlement
`documents as Business Confidential Information (Paper 17, “Req.”). The
`same day, CMS filed an unopposed motion to terminate IPR2017-01237 and
`IPR2016-01814 in their entirety (Paper 18, “PO Mot.”). For the reasons
`discussed below, the joint motion to terminate AT&T from IPR2017-01237
`and IPR2016-01814, and CMS’s unopposed motion to terminate these
`proceedings in their entirety are granted, and the parties’ joint request to
`treat settlement documents as Business Confidential Information is granted.
`
`II. DISCUSSION
`
`
`The parties’ joint motion to terminate requests termination of AT&T
`from IPR2017-01237 and IPR2016-01814 because the parties have settled
`their dispute regarding U.S. Patent No. 8,914,840 B2 (“the ’840 patent”) in
`the joined proceedings and in Convergent Media Solutions, LLC v. AT&T
`Services, Inc., No. 3:15-cv-02156 (N.D. Tex) (“the District Court
`litigation”). Joint Mot., 1. CMS’s motion to terminate requests termination
`of IPR2017-01237 and IPR2016-01814 for the same reasons, and because
`with AT&T’s termination from the joined proceedings no Petitioner will
`remain in the joined proceedings. PO Mot., 2–3. CMS avers its motion to
`
`2
`
`
`
`
`
`IPR2016-01814
`IPR2017-01237
`Patent 8,914,840 B2
`
`terminate IPR2017-01237 and IPR2016-01814 in their entirety is
`unopposed. Id. at 2. The parties aver they have filed a true and correct copy
`of their Settlement Agreement as an exhibit to the joined proceedings. Joint
`Mot., 1–2; see also Ex. 2002.
`Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under
`this chapter shall be terminated with respect to any petitioner upon the joint
`request of the petitioner and patent owner, unless the Office has decided the
`merits of the proceeding before the request for termination is filed.” These
`proceedings are at an early stage, and the Board has not reached a final
`decision on the merits. Therefore, the requirements for terminating AT&T
`from the joined proceedings are met, and AT&T is hereby terminated from
`IPR2017-01237 and IPR2016-01814.
`Under 35 U.S.C. § 317(a), “If no petitioner remains in the inter partes
`review, the Office may terminate the review or proceed to a final written
`decision under section 318(a).” Netflix, Inc. was previously terminated from
`the joined proceedings. See Paper 15, 3. Therefore, given the termination of
`AT&T from the joined proceedings, the Board has discretion to terminate
`the joined proceedings. Under these circumstances, termination of the
`joined proceedings in their entirety is appropriate.
`
`III. ORDER
`
`
`It is hereby:
`
`ORDERED that the Joint Motion to Terminate AT&T from IPR2017-
`01237 and IPR2016-01814 is granted;
`
`3
`
`
`
`
`
`IPR2016-01814
`IPR2017-01237
`Patent 8,914,840 B2
`
`
`FURTHER ORDERED that CMS’s motion to terminate IPR2017-
`01237 and IPR2016-01814 in their entirety is granted;
`FURTHER ORDERED that the Joint Motion to Treat Settlement
`Agreement as Business Confidential Information is granted; and
`FURTHER ORDERED that Exhibit 2002 (“Settlement Agreement”)
`be maintained as Business Confidential Information and kept separate from
`the files of U.S. Patent No. 8,914,840 B2; and
`FURTHER ORDERED that the joined proceedings IPR2017-01237
`and IPR2016-01814 are terminated in their entirety.
`
`
`
`
`
`
`4
`
`
`
`
`
`IPR2016-01814
`IPR2017-01237
`Patent 8,914,840 B2
`
`For PETITIONERS:
`
`Chun M. Ng
`Patrick J. McKeever
`Vinay P. Sathe
`Miguel J. Bombach
`Kevin E. Kantharia
`Matthew Bernstein
`PERKINS COIE LLP
`CNg@perkinscoie.com
`pmckeever@perkinscoie.com
`vsathe@perkinscoie.com
`mbombach@perkinscoie.com
`kkantharia@perkinscoie.com
`mbernstein@perkinscoie.com
`
`Kurt Pankratz
`Roger Flughum
`Brian Johnston
`Eliot Williams
`BAKER BOTTS L.L.P.
`kurt.pankratz@bakerbotts.com
`roger.fulghum@bakerbotts.com
`brian.johnston@bakerbotts.com
`eliot.williams@bakerbotts.com
`DLInternalATTConvergent@bakerbotts.com
`
`
`
`For PATENT OWNER:
`
`Matthew Juren
`Barry Bumgardner
`NELSON BUMGARDNER, P.C.
`matthew@nelbum.com
`barry@nelbum.com
`
`
`
`5
`
`
`
`
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