DivX LLC

Patent Trials and Appeals BoardDec 9, 2021

IPR2021-01580 (P.T.A.B. Dec. 9, 2021)

Trials@uspto.gov Paper 9 571-272-7822 Date: December 9, 2021 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ ROKU, INC., Petitioner, v. DIVX, LLC, Patent Owner. ____________ IPR2021-01579 (Patent 8,832,297 B2) IPR2021-01580 (Patent 8,832,297 B2)1 ____________ Before BART A. GERSTENBLITH, MONICA S. ULLAGADDI, and IFTIKHAR AHMED, Administrative Patent Judges. AHMED, Administrative Patent Judge. DECISION Settlement Prior to Institution of Trial 37 C.F.R. § 42.74 1 We exercise our discretion to issue one Order to be entered in both proceedings. The parties are not authorized to use a multiple-case caption. IPR2021-01579 (Patent 8,832,297 B2) IPR2021-01580 (Patent 8,832,297 B2) 2 I. DISCUSSION Petitioner Roku, Inc. (“Roku”) and Patent Owner DivX, LLC (“DivX”) filed (1) a Joint Motion to Terminate Pursuant to 35 U.S.C. § 317 (Paper 7 (“Mot.”)) based on a settlement agreement between them, (2) a true copy of their written settlement agreement (Ex. 2001), and (3) a Joint Request to Treat Settlement Information as Business Confidential Information and Keep Separate (Paper 8).2 Roku and DivX indicate that they have resolved their underlying dispute and have agreed to terminate these proceedings. Mot. 1. The parties filed what they represent is a true and correct copy of their written settlement agreement and indicate that it resolves these proceedings as well as related ITC litigation. Id. at 2–3. Generally, the Board expects that a proceeding will terminate with respect to a petitioner 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 at 86 (Nov. 2019)3 (“The Board expects that a proceeding will terminate after the filing of a settlement agreement, 2 Our citations to Papers and Exhibits are to those filed in IPR2021-01579. Similar Papers and Exhibits have been filed in IPR2021-01580 with identical numbers. 3 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated. IPR2021-01579 (Patent 8,832,297 B2) IPR2021-01580 (Patent 8,832,297 B2) 3 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 these proceedings not yet decided. Accordingly, we are persuaded that, under these circumstances, termination of these proceedings is appropriate. Additionally, we grant the Joint Request to Treat Settlement Information as Business Confidential Information and 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). II. ORDER Accordingly, it is ORDERED that the Joint Motion to Terminate Pursuant to 35 U.S.C. § 317 (Paper 7) is granted; FURTHER ORDERED that the Joint Request to Treat Settlement Information as Business Confidential Information and Keep Separate (Paper 8) is granted; FURTHER ORDERED that the settlement agreement (Ex. 2001) be treated as business confidential information, kept separate from the file of the above-referenced patent, and made available only to Federal IPR2021-01579 (Patent 8,832,297 B2) IPR2021-01580 (Patent 8,832,297 B2) 4 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 these proceedings are terminated. IPR2021-01579 (Patent 8,832,297 B2) IPR2021-01580 (Patent 8,832,297 B2) 5 For PETITIONER: Jon E. Wright Lestin L. Kenton Todd. C. Thurheimer STERNE, KESSLER, GOLDSTEIN & FOX PLLC jwright-PTAB@sternekessler.com lkenton-PTAB@sternekessler.com tthurheimer-PTAB@sternekessler.com For PATENT OWNER: Kenneth Weatherwax Nathan Lowenstein Bridget Smith Flavio Rose Edward Hsieh Parham Hendifar Patrick Maloney LOWENSTEIN & WEATHERWAX LLP weatherwax@lowensteinweatherwax.com lowenstein@lowensteinweatherwax.com smith@lowensteinweatherwax.com rose@lowensteinweatherwax.com hsieh@lowensteinweatherwax.com hendifar@lowensteinweatherwax.com maloney@lowensteinweatherwax.com