Trials@uspto.gov
`571.272.7822
`
`
`
`
`
`
` Paper No. 11
`
` Entered: November 28, 2018
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`VIZIO, INC.,
`Petitioner,
`
`v.
`
`BROADCOM CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2018-00013 (Patent 8,284,844 B2)
`Case IPR2018-00786 (Patent 7,590,059 B2)
`____________
`
`
`
`Before JEAN R. HOMERE, THOMAS L. GIANNETTI,
`RAMA G. ELLURU, PATRICK M. BOUCHER, and
`NORMAN H. BEAMER, Administrative Patent Judges.1
`
`PER CURIAM.
`
`
`
`
`DECISION
`Granting Joint Motion to Terminate Proceeding Due to
`Settlement after Institution and
`Granting Joint Request to Treat Settlement Agreement as
`Business Confidential Information
`35 U.S.C. § 317; 37 C.F.R. §§ 42.72, 42.73, 42.74
`
`
`
`
`
`1 This is not a decision by an expanded panel of the Board.
`
`
`
`
`571.272.7822
`
`
`
`
`
`
` Paper No. 11
`
` Entered: November 28, 2018
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`VIZIO, INC.,
`Petitioner,
`
`v.
`
`BROADCOM CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2018-00013 (Patent 8,284,844 B2)
`Case IPR2018-00786 (Patent 7,590,059 B2)
`____________
`
`
`
`Before JEAN R. HOMERE, THOMAS L. GIANNETTI,
`RAMA G. ELLURU, PATRICK M. BOUCHER, and
`NORMAN H. BEAMER, Administrative Patent Judges.1
`
`PER CURIAM.
`
`
`
`
`DECISION
`Granting Joint Motion to Terminate Proceeding Due to
`Settlement after Institution and
`Granting Joint Request to Treat Settlement Agreement as
`Business Confidential Information
`35 U.S.C. § 317; 37 C.F.R. §§ 42.72, 42.73, 42.74
`
`
`
`
`
`1 This is not a decision by an expanded panel of the Board.
`
`
`
`
`
`IPR2018-00013 (Patent 8,284,844 B2)
`IPR2018-00786 (Patent 7,590,059 B2)
`
`
`I. DISCUSSION
`
`On November 19, 2018, after receiving our authorization via an email
`
`communication, Petitioner and Patent Owner (collectively referred to as “the
`
`Parties”) filed Joint Motions to Terminate the above-identified proceedings
`
`(collectively “Joint Motions”) pursuant to a written settlement agreement.
`
`Paper 26.2 Along with the Joint Motions, the Parties filed respective Joint
`
`Requests to File Settlement Agreement as Business Confidential Information
`
`Under 35 U.S.C. § 317 and 37 C.F.R. § 42.74 (collectively “Joint Requests”)
`
`to have the agreement treated as business confidential information.
`
`Paper 27.3 The parties also filed what they represent as true copies of a
`
`Confidential Settlement Agreement (“Settlement Agreement”). Ex. 1024.4
`
`In the Joint Motions, the Parties represent that they have reached an
`
`agreement to jointly seek termination of the above-identified inter partes
`
`review proceedings. Paper 26, 1. The Parties further represent that their
`
`Settlement Agreement resolves all currently pending Patent Office, District
`
`Court, and International Trade Commission proceedings between the Parties
`
`involving the above-identified patents at issue. Paper 26, 2.
`
`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 the patent owner, unless the Office has decided
`
`the merits of the proceeding before the request for termination is filed.” It is
`
`also provided in 35 U.S.C. § 317(a) that if no petitioner remains in the inter
`
`
`2 We cite to the paper filed in IPR2018-00013. A similar paper was filed in
`IPR2018-00786. Paper 9.
`3 The Parties filed a similar Joint Request in IPR2018-00786. Paper 10.
`4 The Parties also filed a copy of the Settlement Agreement in IPR2018-
`00786. Ex. 1030.
`
`2
`
`
`
`IPR2018-00013 (Patent 8,284,844 B2)
`IPR2018-00786 (Patent 7,590,059 B2)
`
`
`partes review, the Office may terminate the review. Further, under
`
`35 U.S.C. § 317(b),
`
`[a]ny agreement or understanding between the patent owner and
`a petitioner, including any collateral agreements referred to in
`such agreement or understanding, made in connection with, or
`in contemplation of, the termination of an inter partes review
`under this section shall be in writing and a true copy of such
`agreement or understanding shall be filed in the Office before
`the termination.
`
`We instituted a trial on IPR2018-00013 on April 6, 2018 (Paper 16)
`
`and we also instituted a trial on IPR2018-00786 on September 7, 2018
`
`(Paper 7). We have not yet decided the merits of the above-identified
`
`proceedings, and a final written decision has not been entered for either
`
`proceeding. Notwithstanding that the above-identified proceedings have
`
`moved beyond the preliminary stage, the Parties have shown adequately that
`
`the termination of the above-identified proceedings is appropriate. Under
`
`these circumstances, we determine that good cause exists to terminate the
`
`above-identified proceedings with respect to the Parties. See
`
`35 U.S.C. § 317; 37 C.F.R. §§ 42.72, 42.74
`
`The Parties also filed Joint Requests that the Settlement Agreement be
`
`treated as business confidential information and be kept separate from the
`
`file of the respective patents involved in the above identified inter partes
`
`proceedings.5 Paper 27, 1; see also Paper 26, 3–4. After reviewing the
`
`
`5 Although the Joint Requests actually request the Settlement Agreement be
`kept separate from files of the inter partes proceedings, rather than the
`patents (see Paper 27; 1; see also Paper 10, 1 of IPR2018-00786), we treat
`these requests as requests for the Settlement Agreement to be kept separate
`from files of the respective patents involved in the inter partes proceedings,
`consistent with 35 U.S.C. § 317(b).
`
`3
`
`
`
`IPR2018-00013 (Patent 8,284,844 B2)
`IPR2018-00786 (Patent 7,590,059 B2)
`
`
`Settlement Agreement between Petitioner and Patent Owner, we find that the
`
`Settlement Agreement contains confidential business information regarding
`
`the terms of settlement. We determine that good cause exists to treat the
`
`Settlement Agreement between Petitioner and Patent Owner as business
`
`confidential information pursuant to 37 C.F.R. § 42.74(c).
`
`This Order does not constitute a final written decision pursuant to 35
`
`U.S.C. § 318(a).
`
`II. ORDER
`
`Accordingly, for the reasons discussed above, it is:
`
`ORDERED that the Joint Motions to Terminate are granted, and
`
`IPR2018-00013 and IPR2018-00786 are terminated;
`
`
`
`FURTHER ORDERED that the Joint Requests to File the Settlement
`
`Agreement as Business Confidential Information are granted, and the
`
`Settlement Agreement shall be kept separate from the files of Patent
`
`8,284,844 and Patent 7,590,059 and made available only to Federal
`
`Government agencies on written request, or to any person on a showing of
`
`good cause, pursuant to37 C.F.R. § 42.74(c).
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`4
`
`
`
`IPR2018-00013 (Patent 8,284,844 B2)
`IPR2018-00786 (Patent 7,590,059 B2)
`
`
`
`PETITIONER:
`
`Cono Carrano
`ccarrano@akingump.com
`
`Kevin McBride
`kmcbride@akingump.com
`
`Brock Wilson
`bfwilson@akingump.com
`
`
`
`PATENT OWNER:
`
`John Caracappa
`jcaracap@steptoe.com
`
`Thomas Yebernetsky
`tyebernetsky@steptoe.com
`
`
`
`
`5
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
