`Tel: 571-272-7822
`
`
`Paper 12
` Entered: May 11, 2017
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`NETFLIX, INC. and ROKU, INC.,
`and AT&T SERVICES, INC.,
`Petitioners,
`
`v.
`
`CONVERGENT MEDIA SOLUTIONS, LLC,
`Patent Owner.
`____________
`
`Case IPR2016-01761
`Case IPR2017-01235
`Patent 8,850,507 B21
`____________
`
`
`
`Before JAMESON LEE, KEN B. BARRETT, and JOHN F. HORVATH,
`Administrative Patent Judges.
`
`LEE, Administrative Patent Judge.
`
`
`
`ORDER
`Granting-In-Part Joint Motion to Terminate
`Granting Request to Treat Agreements as Business Confidential Information
`37 C.F.R. §§ 42.72, 42.74(c)
`
`
`
`1 Case IPR2017-01235 has been joined with IPR2016-01761.
`
`
`
`IPR2016-01761
`IPR2017-01235
`Patent 8,850,507 B2
`
`
`On March 9, 2017, we joined IPR2017-01235 with IPR2016-01761.
`Paper 15. Thus, there are now two petitioner entities in this joined
`proceeding, Netflix Inc. and Roku Inc. as one, and AT&T Services Inc., as
`the other. We refer to the first petitioner entity as “Netflix/Roku” and the
`second petitioner entity as “AT&T.” On May 1, 2017, Netflix/Roku and
`Patent Owner filed a joint motion to terminate this inter partes review, on
`the basis that they have settled the dispute between them regarding U.S.
`Patent No. 8,850,507 B2. Paper 13, 2–4. Also on May 1, 2017,
`Netflix/Roku and Patent Owner filed a copy of their written settlement
`agreement (Ex. 2001 (between Netflix Inc. and Patent Owner) and Ex. 2002
`(between Roku Inc. and Patent owner)), and a joint request to have their
`settlement agreements treated as business confidential information under
`35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) (Paper 14).
`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.” The
`requirement for terminating this proceeding with respect to Netflix/Roku is
`met.
`
`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).” AT&T, however, remains a petitioner in this
`
` 2
`
`
`
`
`
`
`
`IPR2016-01761
`IPR2017-01235
`Patent 8,850,507 B2
`
`proceeding after termination of Netflix/Roku. It is therefore inappropriate to
`terminate Patent Owner from this proceeding.
`It is
`ORDERED that the joint motion to terminate proceeding both as to
`Netflix/Roku and Patent Owner is granted-in-part, and that this inter partes
`review is hereby terminated as to Netflix Inc. and Roku Inc. but not as to
`Convergent Media Solution, LLC as Patent Owner; and
`
`FURTHER ORDERED that the joint request of Netflix/Roku and
`Patent Owner to have their settlement agreements (Exhibits 2001 and 2002)
`treated as business confidential information under 35 U.S.C. § 317(b) and
`37 C.F.R. § 42.74(c) is granted.2
`
`
`
`
`
`
`2 The status of Exhibits 2001 and 2002 in the record was re-designated as
`“Board only” on May 9, 2017, prior to entry of a copy of the decision
`instituting trial in Case IPR12017-01235 and granting request for joinder of
`Case IPR2017-01235 with Case IPR2016-01761 (Paper 15).
`
` 3
`
`
`
`
`
`
`
`IPR2016-01761
`IPR2017-01235
`Patent 8,850,507 B2
`
`FOR PETITIONER:
`Chun Ng
`Patrick McKeever
`Vinay Sathe
`Miguel Bombach
`Kevin Kantharia
`Matthew Bernstein
`cng@perkinscoie.com
`pmckeever@perkinscoie.com
`vsathe@perkinscoie.com
`mbombach@perkinscoie.com
`kkantharia@perkinscoie.com
`mbernstein@perkinscoie.com
`
`Kurt Pankratz
`Brian Johnston
`Roger Flughum
`Eliot Williams
`kurt.pankratz@bakerbotts.com
`brian.johnston@bakerbotts.com
`roger.fulghum@bakerbotts.com
`eliot.williams@bakerbotts.com
`
`
`
`FOR PATENT OWNER:
`Matthew Juren
`Barry Bumgardner
`matthew@nelbum.com
`barry@nelbum.com
`
`
` 4
`
`
`
`
`
`
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