Broadband iTV, Inc.

Patent Trials and Appeals BoardDec 15, 2021

IPR2021-00603 (P.T.A.B. Dec. 15, 2021)

Trials@uspto.gov Paper 65 Tel: 571-272-7822 Date: December 15, 2021 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ AT&T SERVICES, INC. and DIRECTV, LLC,1 Petitioner, v. BROADBAND iTV, INC., Patent Owner. ____________ IPR2020-01267 (Patent 10,028,026 B2) IPR2020-01280 (Patent 9,998,791 B2) IPR2020-01359 (Patent 9,648,388 B2) ____________ Before JEFFREY S. SMITH, JUSTIN T. ARBES, and DANIEL J. GALLIGAN, Administrative Patent Judges. GALLIGAN, Administrative Patent Judge. TERMINATION Due to Settlement After Institution of Trial 35 U.S.C. § 317; 37 C.F.R. § 42.74 1 AT&T Services, Inc. and DIRECTV, LLC filed a motion for joinder and a petition in Cases IPR2021-00556, IPR2021-00603, and IPR2021-00649, which were granted, and, therefore, have been joined as petitioners in these proceedings. IPR2020-01267 (Patent 10,028,026 B2) IPR2020-01280 (Patent 9,998,791 B2) IPR2020-01359 (Patent 9,648,388 B2) 2 On December 14, 2021, Petitioner AT&T Services, Inc. and DIRECTV, LLC2 and Patent Owner Broadband iTV, Inc. filed, in each of the instant proceedings, a Joint Motion to Terminate on the basis of a settlement reached by Petitioner and Patent Owner. Paper 73 (“Mot.”);3 see 35 U.S.C. § 317(a); 37 C.F.R. §§ 42.72, 42.74. The parties also filed a copy of their written settlement agreement (Exhibit 2300) as “Filing Party and Board Only” in the Board’s electronic filing system and filed a Joint Request (Paper 74) that the agreement be treated as business confidential information under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). Petitioner and Patent Owner represent that they will file a motion to dismiss the related district court cases between them involving the challenged patents. Mot. 2. Petitioner and Patent Owner further represent that “their entire agreement in connection with the termination of this proceeding is embodied in the Settlement Agreement, which has been made in writing,” and “[t]here are no other agreements, oral or written, between [Petitioner] and [Patent Owner] made in connection with, or in contemplation of, the termination of this proceeding.” Id. at 4. Under these circumstances, we determine that it is appropriate to terminate these inter 2 These proceedings were terminated as to Petitioner DISH Network L.L.C. on December 7, 2021. IPR2020-01267, Paper 72; IPR2020-01280, Paper 62; IPR2020-01359, Paper 58. 3 The parties filed similar documents in each of the instant proceedings. See IPR2020-01267, Papers 73, 74, Ex. 2300; IPR2020-01280, Papers 63, 64, Ex. 2300; IPR2020-01359, Papers 59, 60, Ex. 2300. We refer to those filed in Case IPR2020-01267 for convenience. IPR2020-01267 (Patent 10,028,026 B2) IPR2020-01280 (Patent 9,998,791 B2) IPR2020-01359 (Patent 9,648,388 B2) 3 partes reviews without issuing a final written decision. See 35 U.S.C. § 317(a); 37 C.F.R. §§ 42.72, 42.74. Finally, we note that a portion of the hearing in Case IPR2020-01267 was closed to the public due to the discussion of confidential information. See IPR2020-01267, Papers 56, 70, 71. Patent Owner shall file a redacted version of the confidential portion of the hearing transcript (Paper 70) redacting only discussion pertaining to material for which a motion to seal was granted in the proceeding. See IPR2020-01267, Papers 57, 63. In consideration of the foregoing, it is hereby: ORDERED that Patent Owner shall file, as “Public” in the Board’s electronic filing system, by December 22, 2021, a redacted version of the confidential portion of the hearing transcript in Case IPR2020-01267; FURTHER ORDERED that the parties’ requests that the settlement agreement (Exhibit 2300) between Petitioner and Patent Owner be treated as business confidential information, kept separate from the files of U.S. Patent Nos. 10,028,026 B2, 9,998,791 B2, and 9,648,388 B2, and made available only to Federal Government agencies on written request, or to any person on a showing of good cause, under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), are granted; FURTHER ORDERED that the Joint Motions to Terminate are granted, and the proceedings are terminated; and FURTHER ORDERED that this paper does not constitute a final written decision pursuant to 35 U.S.C. § 318(a). IPR2020-01267 (Patent 10,028,026 B2) IPR2020-01280 (Patent 9,998,791 B2) IPR2020-01359 (Patent 9,648,388 B2) 4 FOR PETITIONERS AT&T SERVICES, INC. and DIRECTV, LLC: Robert Fulghum Jeffery S. Becker Morgan G. Mayne BAKER BOTTS L.L.P. roger.fulghum@bakerbotts.com jeff.becker@bakerbotts.com morgan.grissum@bakerbotts.com FOR PATENT OWNER: Sal Lim David Alberti Hong Lin Russell Tonkovich FEINBERG DAY KRAMER ALBERTI LIM TONKOVICH & BELLOLI LLP slim@feinday.com dalberti@feinday.com hlin@feinday.com Michael D. Specht Jason A. Fitzsimmons Richard M. Bemben STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C. mspecht-ptab@sternekessler.com jfitzsimmons-ptab@sternekessler.com rbemben-ptab@sternekessler.com Kevin Greenleaf DENTONS US LLP kevin.greenleaf@dentons.com