Rovi Guides, Inc.

Patent Trials and Appeals BoardNov 20, 2020

IPR2019-01431 (P.T.A.B. Nov. 20, 2020)

Trials@uspto.gov Paper 39 571-272-7822 Entered: November 20, 2020 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD COMCAST CABLE COMMUNICATIONS, LLC, Petitioner, v. ROVI GUIDES, INC., Patent Owner. IPR2019-01431 Patent 8,272,019 B2 Before JAMESON LEE, WESLEY B. DERRICK, and SHEILA F. McSHANE, Administrative Patent Judges. LEE, Administrative Patent Judge. TERMINATION Due to Settlement After Institution of Trial 35 U.S.C. § 317; 37 C.F.R. § 42.74 On November 13, 2020, the parties filed a Joint Motion to Terminate (Paper 37) and a Joint Request to Keep Settlement Confidential (Paper 38). Also on November 13, 2020, pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), the parties filed what they represent as “a true copy of any agreement or understanding (Exhibits 2020 and 2021) between Petitioner and Patent Owner made in connection with, or in contemplation of, the termination of the proceeding under 37 CFR § 42.74(b).” Papers 37, 1. IPR2019-01431 Patent 8,272,019 B2 2 Oral hearing in this case already was held on October 23, 2020. However, we have not yet issued a final written decision. The parties indicate that termination of this proceeding in its entirety is appropriate because Petitioner and Patent Owner have settled their disputes. Paper 37, 2. The parties state that good cause exists to terminate this proceeding “because (1) Petitioner and Patent owner have resolved their disputes regarding the ’019 Patent; (2) this proceeding is still at an early stage because the office has not yet decided the merits of the proceeding; and (3) terminating the proceeding now would thus serve the interests of judicial economy as well as the mutual interest of the parties.” Id. “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.” 35 U.S.C. § 317(a). Under the circumstances here, we agree it also would be appropriate to terminate the proceeding with respect to Patent Owner without rendering a final written decision. See 37 C.F.R. § 42.72. Because the parties have agreed to settle their disputes and have submitted settlement and license agreements, we agree with the parties that the settlement and license agreements, i.e., Exhibits 2020 and 2021, should be treated as business confidential information and kept separate from the file of the ’019 patent. 37 C.F.R. § 42.74(c). Accordingly, it is ORDERED that the Joint Motion to Terminate is granted; IPR2019-01431 Patent 8,272,019 B2 3 FURTHER ORDERED that the parties’ request that the settlement and licensing agreements, i.e., Exhibits 2020 and 2021, be treated as business confidential information under 37 C.F.R. § 42.74(c) is granted; FURTHER ORDERED that Exhibits 2020 and 2021 shall be treated as business confidential information under 37 C.F.R. § 42.74(c) and be kept apart from the file of the ’019 patent; and FURTHER ORDERED that this proceeding is terminated in its entirety with respect to both Petitioner and Patent Owner. IPR2019-01431 Patent 8,272,019 B2 4 For PETITIONER: Frederic M. Meeker Bradley C. Wright Bennett A. Ingvoldstad Grant M. Hodgson Blair A. Silver Banner & Witcoff, Ltd. fmeeker@bannerwitcoff.com bwright@bannerwitcoff.com bingvoldstad@bannerwitcoff.com ghodgson@bannerwitcoff.com bsilver@bannerwitcoff.com For PATENT OWNER: Jason Eisenberg Christian Camarce Christopher O’Brien Trent W. Merrell STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C. jasone-ptab@sternekessler.com ccamarce-ptab@sternekessler.com cobrien-PTAB@sternekessler.com tmerrell-PTAB@sternekessler.com