Trials@uspto.gov IPR2019-01303, Paper 11
`571-272-7822 IPR2019-01305, Paper 11
` IPR2019-01357, Paper 12; IPR2019-01358, Paper 12
`IPR2019-01447, Paper 12; IPR2019-01449, Paper 11
` Date: January 23, 2020
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`DISH NETWORK CORPORATION, DISH NETWORK L.L.C., and
`DISH NETWORK SERVICE L.L.C.,
`Petitioner,
`v.
`WISTARIA TRADING LTD.,
`Patent Owner.
`_____________
`
`IPR2019-01303 (Patent 8,739,295 B2)
`IPR2019-01305 (Patent 9,934,408 B2)
`IPR2019-01357, IPR2019-01358 (Patent 7,475,246 B1)
`IPR2019-01447 (Patent 9,104,842 B2)
` IPR2019-01449 (Patent 9,021,602 B2)1
`_____________
`
`Before SALLY C. MEDLEY, DENISE M. POTHIER,
`BART A. GERSTENBLITH, PATRICK M. BOUCHER, and
`MONICA S. ULLAGADDI, Administrative Patent Judges.
`
`GERSTENBLITH, Administrative Patent Judge.
`
`
`
`DECISION
`Settlement Prior to Institution of Trial
`37 C.F.R. § 42.74
`
`
`1 We exercise our discretion to issue one combined Decision to be filed in
`each case. The listing of Judges includes those on each case. None of the
`panels have been expanded.
`
`
`571-272-7822 IPR2019-01305, Paper 11
` IPR2019-01357, Paper 12; IPR2019-01358, Paper 12
`IPR2019-01447, Paper 12; IPR2019-01449, Paper 11
` Date: January 23, 2020
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`DISH NETWORK CORPORATION, DISH NETWORK L.L.C., and
`DISH NETWORK SERVICE L.L.C.,
`Petitioner,
`v.
`WISTARIA TRADING LTD.,
`Patent Owner.
`_____________
`
`IPR2019-01303 (Patent 8,739,295 B2)
`IPR2019-01305 (Patent 9,934,408 B2)
`IPR2019-01357, IPR2019-01358 (Patent 7,475,246 B1)
`IPR2019-01447 (Patent 9,104,842 B2)
` IPR2019-01449 (Patent 9,021,602 B2)1
`_____________
`
`Before SALLY C. MEDLEY, DENISE M. POTHIER,
`BART A. GERSTENBLITH, PATRICK M. BOUCHER, and
`MONICA S. ULLAGADDI, Administrative Patent Judges.
`
`GERSTENBLITH, Administrative Patent Judge.
`
`
`
`DECISION
`Settlement Prior to Institution of Trial
`37 C.F.R. § 42.74
`
`
`1 We exercise our discretion to issue one combined Decision to be filed in
`each case. The listing of Judges includes those on each case. None of the
`panels have been expanded.
`
`
`
`IPR2019-01303 (Patent 8,739,295 B2)
`IPR2019-01305 (Patent 9,934,408 B2)
`IPR2019-01357, IPR2019-01358 (Patent 7,475,246 B1)
`IPR2019-01447 (Patent 9,104,842 B2)
`IPR2019-01449 (Patent 9,021,602 B2)
`
`
`DISCUSSION
`I.
`In an e-mail dated January 22, 2020, we authorized the parties to file
`joint motions to terminate the instant proceedings, true copies of their
`settlement agreements, and joint motions to treat the filed copies of their
`agreements as business confidential information under 37 C.F.R. § 42.74(c).
`The following day, the parties filed Petitioner’s Joint Motion to Terminate
`Petition Pursuant to 35 U.S.C. § 317 and 37 C.F.R. § 42.74
`(IPR2019-01303, Paper 92 (“Mot.”)), a copy of a written Settlement
`Agreement (Ex. 1031), and a Joint Request to Keep Separate Pursuant to
`35 U.S.C. § 317 and 37 C.F.R. § 42.74 (Paper 10) in each proceeding.
`The parties indicate that they have settled their underlying dispute and
`have agreed to terminate these proceedings. Mot. 2. The parties filed what
`they represent is a true and correct copy of their written Settlement
`Agreement as Exhibit 1031, and indicate that there are no other collateral
`agreements referred to in the Settlement Agreement, made in connection
`with, or in contemplation of, the termination of these proceedings. Id. at 4.
`The parties further indicate that they are moving to dismiss a related district
`court case between the parties involving the challenged patents. Id.
`Generally, the Board expects that a proceeding will terminate after the
`filing of a settlement agreement. See 35 U.S.C. § 317(a) (“An 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,
`
`
`2 Citations are to IPR2019-01303 unless otherwise indicated.
`
`
`
`2
`
`
`
`IPR2019-01303 (Patent 8,739,295 B2)
`IPR2019-01305 (Patent 9,934,408 B2)
`IPR2019-01357, IPR2019-01358 (Patent 7,475,246 B1)
`IPR2019-01447 (Patent 9,104,842 B2)
`IPR2019-01449 (Patent 9,021,602 B2)
`
`unless the Office has decided the merits of the proceeding before the request
`for termination is filed.”); 37 C.F.R. § 42.72 (“The Board may terminate a
`trial without rendering a final written decision, where appropriate, including
`. . . pursuant to a joint request under 35 U.S.C. 317(a) . . . .”); see also Patent
`Trial and Appeal Board Consolidated Trial Practice Guide at 86 (Nov. 2019)
`(“The Board expects that a proceeding will terminate after the filing of a
`settlement agreement, unless the Board has already decided the merits of the
`proceeding.” (citing 35 U.S.C. §§ 317(a), 327)). Here, a trial has not yet
`been instituted and the merits of the proceedings not yet decided.
`Accordingly, we are persuaded that, under these circumstances, termination
`of these proceedings is appropriate.
`Additionally, we grant the parties’ Joint Request to Keep Separate.
`See 35 U.S.C. § 317(b) (“At the request of a party to the proceeding, the
`agreement or understanding shall be treated as business confidential
`information, shall be kept separate from the file of the involved patents, and
`shall be made available only to Federal Government agencies on written
`request, or to any person on a showing of good cause.”); see also 37 C.F.R.
`§ 42.74(c) (same).
`This Decision does not constitute a final written decision pursuant to
`35 U.S.C. § 318(a).
`
`
`
`
`
`
`3
`
`
`
`IPR2019-01303 (Patent 8,739,295 B2)
`IPR2019-01305 (Patent 9,934,408 B2)
`IPR2019-01357, IPR2019-01358 (Patent 7,475,246 B1)
`IPR2019-01447 (Patent 9,104,842 B2)
`IPR2019-01449 (Patent 9,021,602 B2)
`
`
`II. ORDER
`
`Accordingly, it is
`ORDERED that Petitioner’s Joint Motion to Terminate Petition
`Pursuant to 35 U.S.C. § 317 and 37 C.F.R. § 42.74 (IPR2019-01303,
`Paper 9; IPR2019-01305, Paper 9; IPR2019-01357, Paper 10;
`IPR2019-01358, Paper 10; IPR2019-01447, Paper 10; IPR2019-01449,
`Paper 9) is granted;
`FURTHER ORDERED that the parties’ Joint Request to Keep
`Separate Pursuant to 35 U.S.C. § 317 and 37 C.F.R. § 42.74 (IPR2019-
`01303, Paper 10; IPR2019-01305, Paper 10; IPR2019-01357, Paper 11;
`IPR2019-01358, Paper 11; IPR2019-01447, Paper 11; IPR2019-01449,
`Paper 10) is granted;
`FURTHER ORDERED that the Settlement Agreement (IPR2019-
`01303, Ex. 1031; IPR2019-01305, Ex. 1029; IPR2019-01357, Ex. 1031;
`IPR2019-01358, Ex. 1030; IPR2019-01447, Ex. 1014; IPR2019-01449,
`Ex. 1016) be treated as business confidential information, kept separate from
`the file of the above-referenced patents, and made available only to Federal
`Government agencies on written request, or to any person on a showing of
`good cause, pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c); and
`FURTHER ORDERED that each of these proceedings is terminated.
`
`
`
`4
`
`
`
`IPR2019-01303 (Patent 8,739,295 B2)
`IPR2019-01305 (Patent 9,934,408 B2)
`IPR2019-01357, IPR2019-01358 (Patent 7,475,246 B1)
`IPR2019-01447 (Patent 9,104,842 B2)
`IPR2019-01449 (Patent 9,021,602 B2)
`
`
`For PETITIONER:
`
`Eliot D. Williams
`G. Hopkins Guy
`Ali Dhanani
`BAKER BOTTS L.L.P.
`eliot.williams@bakerbotts.com
`hop.guy@bakerbotts.com
`ali.dhanai@bakerbotts.com
`
`
`For PATENT OWNER:
`
`Christopher M. Scurry
`Kenton R. Mullins
`MCDONNELL, BOEHNEN, HULBERT & BERGHOFF LLP
`scurry@mbhb.com
`mullins@mbhb.com
`
`
`
`
`
`5
`
`
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