`571.272.7822
`
`Paper No. 6
` Filed: January 4, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`VIZIO, INC.,
`Petitioner,
`
`v.
`
`PERSONALIZED MEDIA
`COMMUNICATIONS, LLC.
`Patent Owner.
`
`Case IPR2017-00141 Patent 7,752,649
`Case IPR2017-00142 Patent 7,752,649
`Case IPR2017-00143 Patent 7,752,650
`
`Before SALLY C. MEDLEY, KARL D. EASTHOM, and
`GEORGIANNA W. BRADEN, Administrative Patent Judges.
`
`PER CURIAM
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`Case IPR2017-00141 Patent 7,752,649
`Case IPR2017-00142 Patent 7,752,649
`Case IPR2017-00143 Patent 7,752,650
`
`
`On January 3, 2017, counsel for the parties requested authorization to
`
`file a Joint Motion to Terminate in each of the following IPR proceedings:
`
`IPR2017-000141, IPR2017-000142, and IPR2017-000143. According to
`
`counsel, the partes have executed a settlement agreement resolving all
`
`disputes related to the patents challenged in the IPR proceedings. The
`
`parties further request confidential treatment of the settlement agreement,
`
`pursuant to 37 C.F.R. § 42.74(c).
`
`Termination of a proceeding prior to institution would be based on the
`
`Board’s authority under at least 35 U.S.C. § 317(a) as well as 37 C.F.R.
`
`§§ 42.5(a), 42.71(a), and 42.72. Therefore, a joint motion to terminate
`
`should (1) include a brief explanation 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 to terminate 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.
`
`Any requests to treat settlement documents as business confidential
`
`information and to keep them separate from the files of the challenged patent
`
`must be filed with the settlement documents. See 37 C.F.R. § 42.74(c).
`
`
`
`
`
`Case IPR2017-00141 Patent 7,752,649
`Case IPR2017-00142 Patent 7,752,649
`Case IPR2017-00143 Patent 7,752,650
`
`
`Therefore, it is
`
`ORDERED that the parties are authorized to file a joint motion to
`
`terminate in each proceeding in accordance with 37 C.F.R. § 42.20 and
`
`35 U.S.C. §§ 317(a), (b); and
`
`FURTHER ORDERED that the parties are authorized to file request
`
`in each proceeding to treat settlement documents as business confidential
`
`information and to keep them separate from the files of the challenged patent
`
`in accordance with 37 C.F.R. § 42.74(c) and 35 U.S.C. § 317(b).
`
`
`
`
`
`
`PETITIONER:
`
`Cono Carrano
`ccarrano@akingump.com
`
`David Vondle
`dvondle@akingump.com
`
`Ruben Munoz
`rmunoz@akingump.com
`
`
`
`PATENT OWNER:
`
`Dmitry Kheyfits
`dkheyfits@hkeyfits.com
`
`Andrey Belenky
`abelenky@hkeyfits.com
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