`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`MERCEDES-BENZ USA, LLC,
`Petitioner,
`
`v.
`
`DIGITAL STREAM IP, LLC,
`Patent Owner.
`
`
`Case IPR2017-00834
`Patent 8,265,545
`
`
`JOINT REQUEST TO MAINTAIN CONFIDENTIALITY
`AND TO KEEP SEPARATE PURSUANT TO
`35 U.S.C. § 317(b) AND 37 C.F.R. § 42.74(c)
`
`
`
`
`
`
`
`
`
`I.
`
`INTRODUCTION
`
`Petitioner Mercedes-Benz USA, LLC (“Mercedes”) and Patent Owner
`
`Digital Stream IP, LLC (“Digital Stream”) have settled the underlying dispute and
`
`entered into a Settlement Agreement. The Settlement Agreement has been made in
`
`writing, and a true and correct copy is being filed as Exhibit 1014, pursuant to 35
`
`U.S.C. § 317(b). Pursuant to 35 U.S.C. § 317(b), the parties jointly request that the
`
`Board treat the Settlement Agreement in its entirety as business confidential
`
`information and keep it separate from the file of the involved patent.
`
`II. STATEMENT OF PRECISE RELIEF REQUESTED
`
`The parties jointly request that the Board treat the Settlement Agreement
`
`(Exhibit 1014) as business confidential information and keep it separate from the
`
`file of the involved patent. The parties further request the Board to not make the
`
`Settlement Agreement available to any third-party, except as provided for in 35
`
`U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).
`
`III. STATEMENT OF REASONS FOR THE RELIEF REQUESTED
`
`The parties have executed a Settlement Agreement resolving their dispute
`
`relating to the challenged patent. The Settlement Agreement provides that its
`
`contents are confidential, and the parties have treated them as such. The parties
`
`have filed, concurrently herewith, true and correct copies of the Settlement
`
`Agreement (Exhibit 1014) with the Board, as required by 35 U.S.C. § 317(b) and
`
`
`
`1
`
`
`
`37 C.F.R. § 42.74(c). This Exhibit was filed via the PTAB E2E System to provide
`
`availability to “Parties and Board Only.” The parties jointly request that the
`
`Settlement Agreement be treated as business confidential information and be kept
`
`separate from the file of the involved patent, pursuant to 35 U.S.C. § 317(b) and 37
`
`C.F.R. § 42.74(c).
`
`
`
`Dated: April 18, 2017
`
`Respectfully submitted,
`
`
`
` /s/ Celine Jimenez Crowson
`Celine Jimenez Crowson (Reg. No. 43,912)
`Joseph J. Raffetto (Reg. No. 66,218)
`Ryan J. Stephenson (pro hac vice to be submitted)
`HOGAN LOVELLS US LLP
`555 13th Street, N.W.
`Washington, D.C. 20004
`Telephone: 202.637.5600
`
`Counsel for Petitioner Mercedes-Benz USA, LLC
`
`
`
` /s/ Tarek N. Fahmi
`Tarek N. Fahmi (Reg. No. 41,402)
`Jason LaBerteaux (Reg. No. 65724)
`Ascenda Law Group, PC
`333 W San Carlos St., Suite 200
`San Jose, CA 95110
`Tel: 866-877-4883
`
`Counsel for Patent Owner Digital Stream IP, LLC
`
`
`
`
`
`2
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