Canon Kabushiki Kaisha

Patent Trials and Appeals Board

Jun 10, 2020

IPR2020-00359 (P.T.A.B. Jun. 10, 2020)

Trials@uspto.gov Paper 20
571-272-7822 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)

2
I. DISCUSSION
A. Settlement
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.
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)

3
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
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)

4
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).
B. Petitioner’s Motions to Seal
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.
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)

5
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.
C. Petitioner’s Requests for Entry of a Protective Order
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.
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)

6
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-
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)

7
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.

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)

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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