Rovi Guides, Inc.

Patent Trials and Appeals BoardNov 16, 2020

IPR2019-01434 (P.T.A.B. Nov. 16, 2020)

Trials@uspto.gov Paper 39 571-272-7822 Date: November 16, 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. IPR2019-01434 Patent 8,973,069 B2 Before WILLIAM M. FINK, Vice Chief Administrative Patent Judge, and BARBARA A. PARVIS and KRISTI L. R. SAWERT, Administrative Patent Judges. SAWERT, Administrative Patent Judge. TERMINATION Due to Settlement After Institution of Trial 35 U.S.C. § 317; 37 C.F.R. § 42.74 IPR2019-01434 Patent 8,973,069 B2 2 On November 12, 2020, pursuant to the Board’s authorization, Comcast Communications, LLC (“Petitioner”) and Rovi Guides, Inc. (“Patent Owner”) filed a joint motion to terminate this inter partes review pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. § 42.72. Paper 37 (“Joint Motion” or “Mot.”). The Joint Motion was accompanied by a true, unredacted copy of a Settlement Agreement (Exhibit 2014) and a true, unredacted copy of a Patent License Agreement (Exhibit 2015). The parties also filed a joint request to treat the Settlement Agreement and the Patent License Agreement as business confidential information, to be kept separate from the patent file, pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). Paper 38. In its Joint Motion, the parties “jointly request that the Board terminate this proceeding in its entirety.” Mot. 2. The parties state that they “have resolved their disputes regarding” U.S. Patent No. 8,973,069 B2 (“the ’069 patent”), “both in this proceeding and Patent Owner’s assertion of the ’069 Patent in the related district court litigation.” Id. at 1. The parties also state that they “do not anticipate further litigation between them concerning the ’069 Patent.” Id. The parties state that, for these reasons, “[t]ermination is appropriate at this stage and in view of a settlement between Petitioner and Patent Owner.” Id. at 2. The Board generally expects that “a proceeding will terminate after the filing of a settlement agreement, unless the Board has already decided the merits.” Consolidated Patent Trial Practice Guide, 86 (Nov. 2019), https://www.uspto.gov/sites/default/files/documents/tpgnov.pdf?MURL=; see also 37 C.F.R. § 42.72. Here, although the Board has instituted inter partes review of the ’069 patent, the Board has not heard oral argument and has not decided the merits of the proceeding. Under the circumstances IPR2019-01434 Patent 8,973,069 B2 3 presented here, therefore, we determine that it is appropriate to terminate this proceeding with respect to both Petitioner and Patent Owner. Accordingly, we grant the parties’ Joint Motion to terminate. We also determine that the parties have complied with the requirements of 37 C.F.R. § 42.74(c) to have the Settlement Agreement and the Patent License Agreement treated as business confidential information and kept separate from the files of the ’069 patent in this proceeding. Thus, we grant the parties’ request to treat the Settlement Agreement and the Patent License Agreement as business confidential. Accordingly, it is ORDERED that the Joint Motion to terminate is GRANTED; FURTHER ORDERED that the joint request to treat the parties’ Settlement Agreement (Exhibit 2014) and Patent License Agreement (Exhibit 2015) as business confidential information, to be kept separate from the patent file, is GRANTED; and FURTHER ORDERED that the instant proceeding is TERMINATED. IPR2019-01434 Patent 8,973,069 B2 4 FOR PETITIONER: Frederic M. Meeker Bradley C. Wright John H. Fleming John H. Curry Shambhavi Patel Blair A. Silver BANNER & WITCOFF LTD. FMeeker@bannerwitcoff.com BWright@bannerwitcoff.com JFleming@bannerwitcoff.com JCurry@bannerwitcoff.com SPatel@bannerwitcoff.com BSilver@bannerwitcoff.com FOR PATENT OWNER: Jason D. Eisenberg Robert E. Sokohl STERNE, KESSLER, GOLDSTEIN & FOX PLLC jasone-ptab@sternekessler.com rsokohl-ptab@sternekessler.com