`571.272.7822
`
`
`
`
`
`Paper 13
`Entered: June 8, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`NETFLIX, INC., 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 Joint Motion to Terminate
`Granting Convergent Media Solutions Motion to Terminate
`37 C.F.R. §42.72
`and
`
`Granting Request to Treat Settlement Documents
`As Business Confidential Information
`37 C.F.R. § 42.74(c)
`
`
`1 Case IPR2017-01235 has been joined with Case IPR2016-01761.
`
`
`
`IPR2016-01761
`IPR2017-01235
`Patent 8,850,507 B2
`
`
`INTRODUCTION
`I.
`On June 5, 2017, AT&T Services, Inc. (“AT&T”) and Convergent
`Media Solutions, Inc. (“CMS”) jointly filed a motion to terminate Petitioner
`AT&T from IPR2017-01235 and IPR2016-01761, two proceedings which
`have been joined (Paper 17, “Joint Mot.”), and a request to treat settlement
`documents as Business Confidential Information (Paper 18, “Req.”). The
`same day, CMS filed an unopposed motion to terminate IPR2017-01235 and
`IPR2016-01761 in their entirety (Paper 19, “PO Mot.”). For the reasons
`discussed below, the joint motion to terminate AT&T from IPR2017-01235
`and IPR2016-01761, and CMS’s unopposed motion to terminate these
`proceedings are granted, and the parties’ joint request to treat settlement
`documents as Business Confidential Information is granted.
`II. DISCUSSION
`The parties’ joint motion to terminate requests termination of AT&T
`from IPR2017-01235 and IPR2016-01761 because the parties have settled
`their dispute regarding U.S. Patent No. 8,850,507 B2 (“the ’507 patent”) in
`the joined proceedings, and in Convergent Media Solutions, LLC v. AT&T
`Services, Inc., Case No. 3:15-cv-02156-M (N.D. Tex) (“the District Court
`litigation”). Joint Mot., 1. CMS’s motion to terminate requests termination
`of IPR2017-01235 and IPR2016-01761 for the same reasons and because
`with AT&T’s termination from the joined proceedings no petitioner will
`remain in the joined proceedings. PO Mot., 2–3. CMS avers its motion is
`unopposed. Id. at 2. The parties filed what they regard as a true and correct
`copy of their Settlement Agreement as an exhibit to the joined proceedings.
`Joint Mot., 1–2; see also Ex. 2003.
`
`2
`
`
`
`
`
`IPR2016-01761
`IPR2017-01235
`Patent 8,850,507 B2
`
`
`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 AT&T from the joined proceedings is therefore
`met, and AT&T is terminated from IPR2017-01235 and IPR2016-01761.
`Under 35 U.S.C. § 317(a), “[i]f 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).” Given the termination of AT&T
`from the joined proceedings, the Board has discretion to terminate the joined
`proceedings. These proceedings are at an early stage, and the Board has not
`reached a final decision on the merits. Under these circumstances,
`termination of the joined proceedings in their entirety is appropriate.
`III. ORDER
`
`It is
`ORDERED that the Joint Motion to Terminate AT&T from IPR2017-
`01235 and IPR2016-01761 is granted;
`FURTHER ORDERED that CMS’s motion to terminate IPR2017-
`01235 and IPR2016-01761 in their entirety is granted;
`FURTHER ORDERED that the Joint Motion to Treat Settlement
`Agreement as Business Confidential Information is granted; and
`FURTHER ORDERED that Exhibit 2003 (“Settlement Agreement”)
`be maintained as Business Confidential Information and kept separate from
`the file of U.S. Patent No. 8,850,507 B2 under 37 C.F.R. § 42.74(b); and
`FURTHER ORDERED that the joined proceedings IPR2017-01235
`and IPR2016-01761 are terminated in their entirety.
`
`3
`
`
`
`
`
`IPR2016-01761
`IPR2017-01235
`Patent 8,850,507 B2
`
`For PETITIONERS:
`
`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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