Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`Paper 20
`Entered: June 10, 2020
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`ROKU, INC.,
`Petitioner,
`v.
`CANON KABUSHIKI KAISHA,
`Patent Owner.
`____________
`IPR2020-00341 (Patent 8,078,767 B2)
`IPR2020-00342 (Patent 8,346,986 B2)
`IPR2020-00343 (Patent 8,713,206 B2)
`IPR2020-00355, IPR2020-00357 (Patent 7,746,413 B2)
` IPR2020-00358, IPR2020-00359 (Patent 7,810,130 B2)1
`____________
`
`Before BART A. GERSTENBLITH, JOHN D. HAMANN, and
`JASON W. MELVIN, Administrative Patent Judges.
`
`GERSTENBLITH, Administrative Patent Judge.
`
`
`DECISION
`Settlement Prior to Institution of Trial
`Granting Petitioner’s Motion to Seal
`Granting Petitioner’s Request to Enter Protective Order
`37 C.F.R. §§ 42.74, 42.14, 42.54
`
`
`
`1 This Order addresses issues that are identical in each of the above-
`identified proceedings. The parties are not authorized to use this style
`heading without prior authorization.
`
`
`571-272-7822
`
`
`
`
`
`Paper 20
`Entered: June 10, 2020
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`ROKU, INC.,
`Petitioner,
`v.
`CANON KABUSHIKI KAISHA,
`Patent Owner.
`____________
`IPR2020-00341 (Patent 8,078,767 B2)
`IPR2020-00342 (Patent 8,346,986 B2)
`IPR2020-00343 (Patent 8,713,206 B2)
`IPR2020-00355, IPR2020-00357 (Patent 7,746,413 B2)
` IPR2020-00358, IPR2020-00359 (Patent 7,810,130 B2)1
`____________
`
`Before BART A. GERSTENBLITH, JOHN D. HAMANN, and
`JASON W. MELVIN, Administrative Patent Judges.
`
`GERSTENBLITH, Administrative Patent Judge.
`
`
`DECISION
`Settlement Prior to Institution of Trial
`Granting Petitioner’s Motion to Seal
`Granting Petitioner’s Request to Enter Protective Order
`37 C.F.R. §§ 42.74, 42.14, 42.54
`
`
`
`1 This Order addresses issues that are identical in each of the above-
`identified proceedings. The parties are not authorized to use this style
`heading without prior authorization.
`
`
`
`IPR2020-00341 (Patent 8,078,767 B2)
`IPR2020-00342 (Patent 8,346,986 B2)
`IPR2020-00343 (Patent 8,713,206 B2)
`IPR2020-00355, IPR2020-00357 (Patent 7,746,413 B2)
`IPR2020-00358, IPR2020-00359 (Patent 7,810,130 B2)
`
`
`I. DISCUSSION
`
`Settlement
`A.
`In an e-mail dated June 1, 2020, we authorized the parties to file joint
`motions to terminate the instant proceedings, true copies of their settlement
`agreement, and joint requests to treat the filed copies of their agreement as
`business confidential information under 37 C.F.R. § 42.74(c). On June 4,
`2020, the parties filed a Joint Motion to Terminate Proceeding Pursuant to
`37 C.F.R. § 42.71 and 35 U.S.C. § 317,2 a copy of a written Settlement
`Agreement,3 and a Joint Request to Treat Agreement as Business
`Confidential Under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c)4 in each
`proceeding.5
`The parties indicate that they have settled their dispute concerning the
`challenged patents, a motion to dismiss all claims in related district court
`litigation has been filed and granted, and the parties have agreed to terminate
`these proceedings. Term. Motion 2. The parties filed what they represent is
`a true and correct copy of their confidential settlement agreement as
`Exhibit 2018, and indicate that there are no collateral agreements. Id. at 1–2.
`
`
`2 IPR2020-00341, Paper 20 (“Term. Motion”). The Joint Motion to
`Terminate is Paper 17 in each of the other proceedings.
`3 The Settlement Agreement is Exhibit 2018 in each proceeding.
`4 IPR2020-00341, Paper 21 (“Request”). The Joint Request is Paper 18 in
`each of the other proceedings.
`5 The parties Motions, Requests, and Settlement Agreement are identical in
`each proceeding. Citations are to IPR2020-00341 unless otherwise
`indicated.
`
`
`
`2
`
`
`
`IPR2020-00341 (Patent 8,078,767 B2)
`IPR2020-00342 (Patent 8,346,986 B2)
`IPR2020-00343 (Patent 8,713,206 B2)
`IPR2020-00355, IPR2020-00357 (Patent 7,746,413 B2)
`IPR2020-00358, IPR2020-00359 (Patent 7,810,130 B2)
`
`
`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,
`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 (Nov. 2019)
`(“Consolidated Guide”) at 86, available at
`https://www.uspto.gov/sites/default/files/documents/tpgnov.pdf (“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, trials have 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’ Requests to treat their settlement
`agreement as business confidential information and to keep the agreement
`separate from the files of the challenged patents. Request 1; 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
`
`
`
`3
`
`
`
`IPR2020-00341 (Patent 8,078,767 B2)
`IPR2020-00342 (Patent 8,346,986 B2)
`IPR2020-00343 (Patent 8,713,206 B2)
`IPR2020-00355, IPR2020-00357 (Patent 7,746,413 B2)
`IPR2020-00358, IPR2020-00359 (Patent 7,810,130 B2)
`
`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).
`
`Petitioner’s Motions to Seal
`B.
`Petitioner filed an unopposed Motion to Seal on May 26, 2020, in
`each proceeding.6 Petitioner’s Motions to Seal request that we seal
`Petitioner’s Preliminary Reply to Patent Owner’s Preliminary Response
`Addressing the Issue of Discretionary Denial Under 314(a)7 and Petitioner’s
`Responses to Patent Owner’s Interrogatories (Nos. 1–2).8 Seal Motion 1.
`The record for an inter partes review shall be made available to the
`public, except as otherwise ordered, and a document filed with a motion to
`seal shall be sealed provisionally until the motion is decided. See 35 U.S.C.
`§ 316(a)(1); 37 C.F.R. § 42.14. The standard for granting a motion to seal is
`good cause. See 37 C.F.R. § 42.54(a). There is a strong public policy that
`favors making information filed in inter partes review proceedings open to
`the public. See Garmin Int’l v. Cuozzo Speed Techs., LLC, IPR2012-00001,
`Paper 34 at 1–2 (PTAB Mar. 14, 2013). The moving party bears the burden
`of showing that the relief requested should be granted. See 37 C.F.R.
`§ 42.20(c).
`
`
`6 The Motion to Seal (“Seal Motion”) is Paper 14 in each proceeding.
`7 Petitioner’s sealed Preliminary Reply is Paper 16 in each proceeding.
`8 Petitioner’s sealed Interrogatory Responses is Exhibit 1040 in each
`proceeding.
`
`
`
`4
`
`
`
`IPR2020-00341 (Patent 8,078,767 B2)
`IPR2020-00342 (Patent 8,346,986 B2)
`IPR2020-00343 (Patent 8,713,206 B2)
`IPR2020-00355, IPR2020-00357 (Patent 7,746,413 B2)
`IPR2020-00358, IPR2020-00359 (Patent 7,810,130 B2)
`
`
`Petitioner’s Preliminary Reply and Responses to Patent Owner’s
`Interrogatories contain “confidential and commercially sensitive business
`information of Petitioner and third-party TCL,” and specifically, information
`regarding a non-public agreement between them. Seal Motion 2. Petitioner
`contends it and TCL “face concrete harm if their confidential information is
`released to the public” because “competitors and other third-parties could
`exploit the information for their own benefit or to gain improper leverage
`over” Petitioner and TCL. Id. Petitioner represents that “[t]his information
`is not publicly available, and has been and continues to be intended to
`remain confidential.” Id. Petitioner also represents that redacted,
`non-confidential versions of Petitioner’s Preliminary Reply and
`Interrogatory Responses have been filed in each proceeding.9 Id. at 2–3.
`For the reasons explained by Petitioner, we find there is good cause
`for sealing the material referenced above. Additionally, Petitioner’s
`redactions to its Preliminary Reply and Exhibit 1040 are narrowly tailored to
`exclude only that information for which good cause has been shown to seal.
`Accordingly, Petitioner’s Motions to Seal are granted.
`
`Petitioner’s Requests for Entry of a Protective Order
`C.
`Petitioner’s Motions to Seal also request entry of the protective order,
`attached as Appendix A to the Motions to Seal. Seal Motion at 3–5. The
`proposed protective order matches, with two exceptions, the default
`
`
`9 In each proceeding, Petitioner filed its unsealed Interrogatory Responses
`with the same exhibit number (i.e., Ex. 1040) as the sealed versions.
`
`
`
`5
`
`
`
`IPR2020-00341 (Patent 8,078,767 B2)
`IPR2020-00342 (Patent 8,346,986 B2)
`IPR2020-00343 (Patent 8,713,206 B2)
`IPR2020-00355, IPR2020-00357 (Patent 7,746,413 B2)
`IPR2020-00358, IPR2020-00359 (Patent 7,810,130 B2)
`
`protective order appearing in the Consolidated Guide at pages 117 through
`122. In particular, the proposed protective order “contains an additional
`designation ‘PROTECTIVE ORDER MATERIAL – OUTSIDE
`ATTORNEYS’ EYES ONLY’ for confidential material and restricts the
`material to Outside Counsel, Experts, Office Staff and Support Personnel”
`and adds “support personnel of outside counsel of record for a party in the
`proceeding” to the definition of “Support Personnel.” Id. at 4; see id. at
`App. A, A-2–A-3.
`Petitioner asserts that good cause exists for these restrictions and the
`more limited access provided by the additional designation “is necessary to
`protect [Petitioner’s] confidential information from potential use by other
`companies and/or potential exposure to the public, and to protect the
`confidential information of third-party TCL.” Id. at 4. Additionally,
`Petitioner represents that the parties “have agreed to the additional
`designation.”
`In light of the parties’ agreement and the above representations,
`Petitioner has shown good cause for entry of the protective order filed as
`Appendix A to the Motion to Seal. See 37 C.F.R. § 42.54(a).
`
`II. ORDER
`
`Accordingly, it is
`ORDERED that the parties’ Joint Motion to Terminate Proceeding
`Pursuant to 37 C.F.R. § 42.71 and 35 U.S.C. § 317 (IPR2020-00341,
`Paper 20; IPR2020-00342, Paper 17; IPR2020-00343, Paper 17; IPR2020-
`
`
`
`6
`
`
`
`IPR2020-00341 (Patent 8,078,767 B2)
`IPR2020-00342 (Patent 8,346,986 B2)
`IPR2020-00343 (Patent 8,713,206 B2)
`IPR2020-00355, IPR2020-00357 (Patent 7,746,413 B2)
`IPR2020-00358, IPR2020-00359 (Patent 7,810,130 B2)
`
`00355, Paper 17; IPR2020-00357, Paper 17; IPR2020-00358, Paper 17; and
`IPR2020-00359, Paper 17) is granted;
`FURTHER ORDERED that the parties’ Joint Request to Treat
`Agreement as Business Confidential Under 35 U.S.C. § 317(b) and
`37 C.F.R. § 42.74(c) (IPR2020-00341, Paper 21; IPR2020-00342, Paper 18;
`IPR2020-00343, Paper 18; IPR2020-00355, Paper 18; IPR2020-00357,
`Paper 18; IPR2020-00358, Paper 18; and IPR2020-00359, Paper 18) is
`granted;
`FURTHER ORDERED that the Settlement Agreement (Exhibit 2018)
`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);
`FURTHER ORDERED that Petitioner’s Motion to Seal (Paper 14) is
`granted;
`FURTHER ORDERED that Petitioner’s request to enter the
`Protective Order (Paper 14, App. A) is granted;
`FURTHER ORDERED that the Protective Order (Paper 14, App. A)
`is hereby entered; and
`FURTHER ORDERED that each of these proceedings is terminated.
`
`
`
`
`
`
`
`
`7
`
`
`
`IPR2020-00341 (Patent 8,078,767 B2)
`IPR2020-00342 (Patent 8,346,986 B2)
`IPR2020-00343 (Patent 8,713,206 B2)
`IPR2020-00355, IPR2020-00357 (Patent 7,746,413 B2)
`IPR2020-00358, IPR2020-00359 (Patent 7,810,130 B2)
`
`FOR PETITIONER:
`
`Scott A. McKeown
`Christopher Bonny
`Kyle Tsui
`ROPES & GRAY LLP
`scott.mckeown@ropesgray.com
`Christopher.bonny@ropesgray.com
`Kyle.tsui@ropesgray.com
`
`FOR PATENT OWNER:
`
`Joseph E. Palys
`Naveen Modi
`PAUL HASTINGS LLP
`josephpalys@paulhastings.com
`naveenmodi@paulhastings.com
`
`
`
`
`
`
`
`8
`
`
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