`571.272.7822
`
`
`Paper No. 9
`Filed: January 24, 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
`Granting Joint Motion to Terminate
`37 C.F.R. §§ 42.5, 42.72, 42.74(c)
`
`
`
`Case IPR2017-00141 Patent 7,752,649
`Case IPR2017-00142 Patent 7,752,649
`Case IPR2017-00143 Patent 7,752,650
`
`
`On January 5, 2017, with Board authorization, the parties filed a joint
`motion to terminate the proceeding (Paper 71), along with what they indicate
`is their written settlement agreement (Ex. 1032). The parties informed the
`Board that the settlement affects the Petitions filed in IPR2017-000141,
`IPR2017-000142, and IPR2017-000143. According to counsel, the parties
`have settled their disputes, and have reached agreement to terminate these
`IPR proceedings. See Paper 7, 2. The parties further request confidential
`treatment of the settlement agreement, pursuant to 37 C.F.R. § 42.74(c).
`Paper 8.
`The parties state the above-identified IPR petitions are related to a
`lawsuit filed in the Eastern District of Texas (Envision Peripherals, Inc., et
`al. v. Personalized Media Communications, LLC, Civil Action No. 2:15-cv-
`01206 consolidated with Civil Action No. 2:15-cv-01366). Paper 7, 2–3.
`The parties further indicate that the patent challenged in IPR2017-000141
`and IPR2017-000142 also is pending currently before the Board in IPR2016-
`00753 (trial instituted September 20, 2016), IPR 2017-00142 (petition filed
`October 26, 2016), IPR2017-00289 (petition filed November 18, 2016), and
`IPR2017-00290 (petition filed November 18, 2016). Id. at 3.
`The joint request to treat the settlement agreement as business
`confidential information includes a request that the settlement agreement be
`kept separate from the patent file. Paper 8; see also 37 C.F.R. § 42.74(c)
`(“A party to a settlement may request that the settlement be treated as
`
`
`1 Citations are to the record in IPR2016-00141. Similar corresponding
`documents are in the records for IPR2017-000142 and IPR2017-000143.
`
`
`
`Case IPR2017-00141 Patent 7,752,649
`Case IPR2017-00142 Patent 7,752,649
`Case IPR2017-00143 Patent 7,752,650
`
`business confidential information and be kept separate from the files of an
`involved patent or application.”).
`The parties indicate good cause exists to terminate the above-
`identified IPR Proceedings. Paper 7, 2. In addition to being unopposed, the
`parties state: no Preliminary Response has been filed, the Board has not
`issued a decision on institution, and co-pending district court litigation has
`been dismissed with prejudice. Id. We agree that this proceeding is at an
`early stage. The Patent Owner, Personalized Media Communications, LLC,
`has not filed a preliminary response, and the Board has not issued a decision
`on whether to institute trial. Based on the facts of this case, it is appropriate
`to terminate the proceedings, because doing so will preserve the Board’s
`resources and the parties’ resources while also epitomizing the Patent
`Office’s policy of “secur[ing] the just, speedy, and inexpensive resolution”
`(37 CFR §42.1(b)), and this is a just and fair resolution.
`Accordingly, the joint motions to terminate each of the above-
`identified proceedings and the joint requests to treat the settlement
`agreement as business confidential information are granted. As requested by
`the parties, the settlement agreement will be treated as business confidential
`information and kept separate from the patent file. 37 C.F.R. § 42.74(c).
`This paper does not constitute a final written decision pursuant to 35 U.S.C.
`§ 318(a).
`Therefore, it is
`ORDERED that the joint motions to terminate the above-captioned
`proceedings are granted;
`
`
`
`Case IPR2017-00141 Patent 7,752,649
`Case IPR2017-00142 Patent 7,752,649
`Case IPR2017-00143 Patent 7,752,650
`
`
`FURTHER ORDERED that the proceedings in IPR2017-000141,
`IPR2017-000142, and IPR2017-000143 are terminated pursuant to 37 C.F.R.
`§§ 42.5, 42.72, 42.74(c); and
`FURTHER ORDERED that the parties’ joint request that the
`settlement agreement (Ex. 1032) be treated as business confidential
`information, be kept separate from the file of each involved patent, and
`made available only to Federal Government agencies on written request, or
`to any person on a showing of good cause, under 37 C.F.R. § 42.74(c) is
`granted.
`
`
`
`
`PETITIONER:
`
`Cono Carrano
`David Vondle
`Ruben Munoz
`AKIN GUMP STRAUSS HAUER & FELD LLP
`ccarrano@akingump.com
`dvondle@akingump.com
`rmunoz@akingump.com
`
`
`
`PATENT OWNER:
`
`Dmitry Kheyfits
`Andrey Belenky
`KHEYFITS P.C
`dkheyfits@hkeyfits.com
`abelenky@hkeyfits.com
`
`
`
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