`571.272.7822
`
`
`
`
`
`Paper No. 14
`Entered: March 2, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`SAMSUNG ELECTRONICS CO., LTD and
`SAMSUNG ELECTRONICS AMERICA, INC.,
`Petitioner,
`
`v.
`
`PERSONALIZED MEDIA COMMUNICATIONS, L.L.C.,
`Patent Owner.
`_______________
`
`Case IPR2017-00292
`Patent 7,856,649
`_______________
`
`Before KARL D. EASTHOM, LYNNE E. PETTIGREW, and
`JOHN F. HORVATH, Administrative Patent Judges.
`
`HORVATH, Administrative Patent Judge.
`
`
`DECISION
`
`Granting Motion to Terminate
`37 C.F.R. §§ 42.5(a), 42.71(a)
`and
`
`Granting Request to Treat Settlement Documents
`as Confidential Business Information
`37 C.F.R. § 42.74(c)
`
`
`
`
`
`
`
`IPR2017-00292
`Patent 7,856,649
`
`
`
`
`
`
`On February 16, 2017, the parties filed a Joint Motion to Terminate
`Proceeding (Paper 7), a Joint Request to Treat Settlement Documents as
`Business Confidential Information (Paper 8), a Settlement Agreement (Paper
`9), and a redacted copy of the Settlement Agreement (Paper 10) as papers to
`this proceeding. The Joint Request to Treat Settlement Documents as
`Business Confidential Information referred to several documents that were
`not then filed in this proceeding, including a Letter Agreement and a Term
`Sheet. Paper 8, 1.
`The Board ordered the parties to refile the Joint Motion to Terminate
`and Joint Request to Treat Settlement Documents as Business Confidential
`Information as papers to this proceeding, and to file only true, unredacted,
`copies of the Settlement Agreement, Letter Agreement, and Term Sheet as
`exhibits to this proceeding. Paper 11, 3. The Board indicated that upon the
`refiling of these papers and exhibits, the Board would expunge from the
`record the originally filed Joint Motion to Terminate (Paper 7), Joint
`Request to Treat Settlement Documents as Confidential Business
`Information (Paper 8), Settlement Agreement (Paper 9), and redacted
`Settlement Agreement (Paper 10).
`On February 24, 2017, the parties refiled the Joint Motion to
`Terminate Proceeding (Paper 12), and Joint Request to Treat Settlement
`Documents as Confidential Business Information (Paper 13). The Joint
`Motion to Terminate requests termination of this proceeding because the
`parties have settled their dispute regarding U.S. Patent No. 7,856,649 (“the
`’649 patent”) and related patents. Id. at 1. The parties concurrently filed a
`true copy of their Settlement Agreement, including an accompanying Letter
`
`2
`
`
`
`
`
`IPR2017-00292
`Patent 7,856,649
`
`Agreement and Term Sheet, as exhibits in this proceeding. Id.; see also Exs.
`1040–1042.
`This proceeding is at an early stage. Petitioner filed a Petition for
`Inter Partes Review of claims 9 and 10 of the ’649 patent on November 18,
`2016. Paper 2. Patent Owner has yet to file a Preliminary Response, and we
`have neither considered the merits of the Petition nor decided whether to
`institute trial.
`Under the foregoing circumstances, we determine it is appropriate to
`dismiss the Petition. See 37 C.F.R. §§ 42.5(a), 42.71(a). We also determine
`it is appropriate to treat the parties’ Settlement Agreement, Letter
`Agreement, and Term Sheet as confidential business information, and to
`keep these documents separate from the files of the ’649 patent.
`This paper does not constitute a final written decision pursuant to 35
`U.S.C. § 318(a).
`Accordingly, it is hereby:
`
`
`
`ORDERED that the Joint Motion to Terminate the Proceeding is
`granted;
`FURTHER ORDERED that the Petition for Inter Partes Review of
`U.S. Patent No. 7,856,649 is dismissed;
`FURTHER ORDERED that the Joint Request to Treat Settlement
`Documents as Confidential Business Information is granted;
`FURTHER ORDERED that Exhibit 1040 (“Settlement Agreement”)
`be maintained as confidential business information and kept separate from
`the files of U.S. Patent No. 7,856,649;
`
`3
`
`
`
`
`
`IPR2017-00292
`Patent 7,856,649
`
`
`FURTHER ORDERED that Exhibit 1041 (“Letter Agreement”) be
`maintained as confidential business information and kept separate from the
`files of U.S. Patent No. 7,856,649;
`FURTHER ORDERED that Exhibit 1042 (“Term Sheet”) be
`maintained as confidential business information and kept separate from the
`files of U.S. Patent No. 7,856,649;
`FURTHER ORDERED that Paper 7 (“Joint Motion to Terminate
`Proceeding”), be expunged from the record;
`FURTHER ORDERED that Paper 8 (“Joint Request to Treat
`Settlement Documents as Confidential Business Information”) be expunged
`from the record;
`FURTHER ORDERED that Paper 9 (“Settlement Agreement”) be
`expunged from the record; and
`FURTHER ORDERED that Paper 10 (“Redacted Settlement
`Agreement”) be expunged from the record.
`
`
`
`
`
`
`4
`
`
`
`
`
`IPR2017-00292
`Patent 7,856,649
`
`For PETITIONER:
`
`Walter Renner
`Thomas Rozylowicz
`Andrew Patric
`axt-ptab@fr.com
`tar @fr.com
`patrick@fr.com
`
`For PATENT OWNER:
`
`Dmitry Kheyfits
`Andrey Belenky
`Thomas Scott, Jr.
`dkyefits@kheyfits.com
`abelenky@kheyfits.com
`tscott@goodwinprocter.com
`
`
`
`5
`
`
`
`
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