Intertrust Technologies Corporation

Patent Trials and Appeals BoardApr 20, 2021

IPR2020-00660 (P.T.A.B. Apr. 20, 2021)

Trials@uspto.gov 571-272-7822 Paper 25 Entered: April 20, 2021 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ DOLBY LABORATORIES, INC., Petitioner, v. INTERTRUST TECHNOLOGIES CORPORATION, Patent Owner. ____________ IPR2020-00660 (Patent 6,785,815 B2) IPR2020-01105 (Patent 8,191,157 B2) IPR2020-01106 (Patent 8,191,157 B2) IPR2020-01209 (Patent 7,694,342 B2)1 ____________ Before MICHAEL R. ZECHER, KIMBERLY McGRAW, and CHRISTOPHER L. OGDEN, Administrative Patent Judges. ZECHER, Administrative Patent Judge. TERMINATION Due to Settlement After Institution of Trial 35 U.S.C. § 317; 37 C.F.R. § 42.72 1 This Decision addresses an issue that is identical in all four proceedings. We, therefore, exercise our discretion to issue one Decision to be filed in each proceeding. IPR2020-00660 (Patent 6,785,815 B2) IPR2020-01105 (Patent 8,191,157 B2) IPR2020-01106 (Patent 8,191,157 B2) IPR2020-01209 (Patent 7,694,342 B2) 2 I. DISCUSSION On April 15, 2021, the parties filed the following two documents in each of the proceedings identified above: (1) a Joint Motion to Terminate Proceedings (Paper 24, “Mot.”)2; and (2) what appears to be a true copy of an Order entered in the district court case captioned Dolby Laboratories, Inc. v. Intertrust Techs. Corp., No. 3:19-cv-03371-EMC (N.D. Cal.) (Ex. 2031, “Joint Stipulation”) that narrows the disputes between Petitioner, Dolby Laboratories, Inc. (“Dolby”), and Patent Owner, Intertrust Technologies Corporation (“Intertrust”), by, amongst other things, stipulating to terminate the following four proceedings: IPR2020- 00660 (involving U.S. Patent No. 6,785,815 B2 (“the ’815 patent”)); IPR2020- 01105 (involving U.S. Patent No. 8,191,157 B2 (“the ’157 patent”)); IPR2020- 01106 (also involving the ’157 patent); and IPR2020-01209 (involving U.S. Patent No. 7,694,342 B2 (“the ’342 patent)). For the following reasons, we grant the parties’ Joint Motions to Terminate Proceedings. Each trial is still in its early stages. On October 15, 2020, we entered a decision instituting an inter partes review of claims 42 and 43 of the ’815 patent. IPR2020-00660, Paper 14. On January 5, 2021, we entered the following two additional decisions: (1) a decision instituting an inter partes review of claims 69– 75, 80, 81, and 84 of the ’157 patent (IPR2020-01105, Paper 14); and (2) a decision instituting an inter partes review of claims 86–90, 95, 96, and 99 of the ’157 patent (IPR2020-01106, Paper 12). Lastly, on February 16, 2021, we entered a decision instituting an inter partes review of claims 1, 7, 8, and 12 of the ’342 2 Unless otherwise noted, all citations are to the papers and exhibits filed in IPR2020-00660. Similar papers and exhibits were filed in IPR2020-01105, IPR2020-01106, and IPR2020-01209. IPR2020-00660 (Patent 6,785,815 B2) IPR2020-01105 (Patent 8,191,157 B2) IPR2020-01106 (Patent 8,191,157 B2) IPR2020-01209 (Patent 7,694,342 B2) 3 patent. IPR2020-01209, Paper 9. Since we entered these decisions granting institution, Intertrust has filed a Patent Owner Response in IPR2020-00660, Paper 20, but it has not yet filed a Patent Owner Response in each of IPR2020-01105, IPR2020-01106, and IPR2020-01209. Most importantly, substantive briefing is not yet completed in these proceedings and we have not yet decided the merits. In the Joint Motion to Terminate Proceedings, the parties indicate that they “have reached agreement to narrow disputes between them . . . pursuant to the terms and conditions of [the] Joint Stipulation made in writing.” Mot. 1. The parties represent that the Joint Stipulation was entered as an Order in the district court case on April 14, 2021, and that, “[p]ursuant to the [Joint] Stipulation, the Parties agreed to jointly move to terminate” all four proceedings. Id. (citing Ex. 2031 ¶ 4). The parties also represent that “there are no other collateral agreements or understandings, oral or written, between [Dolby and Intertrust] made in connection with, or in contemplation of, the termination of [these] proceeding[s].” Id. at 2. Under these particular circumstances, we determine that it is appropriate to terminate the trial in each proceeding without rendering any further decisions. See 37 C.F.R. § 42.72. II. ORDER In consideration of the foregoing, it is hereby ORDERED that the Joint Motions to Terminate Proceedings are granted, and these proceeding are hereby terminated. IPR2020-00660 (Patent 6,785,815 B2) IPR2020-01105 (Patent 8,191,157 B2) IPR2020-01106 (Patent 8,191,157 B2) IPR2020-01209 (Patent 7,694,342 B2) 4 For PETITIONER: Scott A. McKeown Mark D. Rowland Keyna Chow (admitted pro hac vice) Victor Cheung Shrut Kirti ROPES & GRAY LLP scott.mckeown@ropesgray.com mark.rowland@ropesgray.com keyna.chow@ropesgray.com victor.cheung@ropesgray.com shrut.kirti@ropesgray.com Leslie Spencer DESMARAIS LLP lspencer@desmaraisllp.com For PATENT OWNER: Christopher Mathews Razmig Messerian Jim M. Glass Tigran Guledjian Scott Florance QUINN EMANUEL URQUHART & SULLIVAN LLP chrismathews@quinnemanuel.com razmesserian@quinnemanuel.com jimglass@quinnemanuel.com tigranguledjian@quinnemanuel.com scottflorance@quinnemanuel.com