Onstream Media Corporation

Patent Trials and Appeals Board

Jun 14, 2021

IPR2020-01527 (P.T.A.B. Jun. 14, 2021)

Trials@uspto.gov Paper 17
571-272-7822 Entered: June 14, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

FACEBOOK, INC.,
Petitioner,

v.

ONSTREAM MEDIA CORP.,
Patent Owner.
____________

IPR2020-01525 (Patent 9,467,728 B2)
IPR2020-01527 (Patent 10,200,648 B2)
IPR2020-01528 (Patent 10,038,930 B2)
____________

Before KARL D. EASTHOM, GEORGIANNA W. BRADEN, and
ARTHUR M. PESLAK, Administrative Patent Judges.

EASTHOM, Administrative Patent Judge.

TERMINATION1
Due to Settlement After Institution of Trial
Granting Request to Keep Settlement Agreement Separate
35 U.S.C. § 317; 37 C.F.R. § 42.74

1 This Termination Order applies to each case. The parties must obtain
prior Board authorization to employ this heading style.
IPR2020-01525 (Patent 9,467,728 B2)
IPR2020-01527 (Patent 10,200,648 B2)
IPR2020-01528 (Patent 10,038,930 B2)

2

DISCUSSION
On June 9, 2021, with Board authorization, the parties filed a Joint
Motion to Terminate the proceeding (Paper 13, “Termination Motion”), a
Settlement Agreement (Paper 14, Ex. 1036), and a Joint Request to File the
Settlement Agreement as business confidential information separate from
the inter partes review file of the relevant involved patent (Paper 16, “Joint
Request”).2
The parties represent that they have agreed to settle and that
Exhibit 1036 is their Settlement Agreement, and “certify that there are no
other agreements, oral or written, between the parties made in connection
with, or in contemplation of, the termination of the proceeding.”
Termination Motion 2.
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 Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756,
48,768 (Aug. 14, 2012) (“The Board expects that a proceeding will

2 Citations refer to Papers filed in IPR2020-01525. The parties filed
materially the same Papers in each case. The parties filed the Settlement
Agreement as Paper 14 but refer to it as Exhibit 1036.
IPR2020-01525 (Patent 9,467,728 B2)
IPR2020-01527 (Patent 10,200,648 B2)
IPR2020-01528 (Patent 10,038,930 B2)

3

terminate after the filing of a settlement agreement, unless the Board has
already decided the merits of the proceeding.”).
Each proceeding is at an intermediate stage. The parties have not
filed substantive briefing after institution. The Board has not issued a final
written decision and has not held an oral hearing. Under these
circumstances, we grant the Termination Motion in each case.
We also grant the Joint Request in each case. 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 as business confidential
information, 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).
ORDER
It is
ORDERED that each Termination Motion is granted;
FURTHER ORDERED that each Joint Request is granted.
FURTHER ORDERED that each Settlement Agreement shall be
treated as business confidential information, shall be kept separate from the
file of the involved patent as business confidential information, and shall be
made available only in accordance with the provisions of 35 U.S.C.
§ 317(b) and 37 C.F.R. § 42.74(c); and
FURTHER ORDERED that each proceeding is terminated both as to
Petitioner and Patent Owner.
IPR2020-01525 (Patent 9,467,728 B2)
IPR2020-01527 (Patent 10,200,648 B2)
IPR2020-01528 (Patent 10,038,930 B2)

4

FOR PETITIONER:

Lisa Nguyen
Richard Frenkel
Kyle Virgien
LATHAM & WATKINS LLP
lisa.nguyen@lw.com
rick.frenkel@lw.com
kyle.virgien@lw.com

FOR PATENT OWNER:

Oded Burger
Chandran B. Iyer
DAIGNAULT IYER LLP
oburger@daignaultiyer.com
cbiyer@daignaultiyer.com