IPR2020-01332 (P.T.A.B. Aug. 13, 2021)

Broadband iTV, Inc.

Patent Trials and Appeals BoardAug 13, 2021

IPR2020-01332 (P.T.A.B. Aug. 13, 2021)

Trials@uspto.gov Paper 37 Tel: 571-272-7822 Date: August 13, 2021 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ DISH NETWORK L.L.C., Petitioner, v. BROADBAND iTV, INC., Patent Owner. ____________ IPR2020-01332 Patent 10,506,269 B2 ____________ Before JEFFREY S. SMITH, JUSTIN T. ARBES, and DANIEL J. GALLIGAN, Administrative Patent Judges. GALLIGAN, Administrative Patent Judge. TERMINATION Due to Settlement After Institution of Trial 35 U.S.C. § 317; 37 C.F.R. § 42.74 IPR2020-01332 Patent 10,506,269 B2 2 On August 13, 2021, with our authorization, Petitioner DISH Network L.L.C. and Patent Owner Broadband iTV, Inc. filed a Joint Motion to Terminate (Paper 35), a copy of their settlement agreement (Ex. 1048), and a Joint Request that the Settlement Agreement Be Treated as Business Confidential Information (Paper 36). The parties represent that they have settled their dispute with respect to the subject patent and “jointly certify that there are no other agreements or understandings, oral or written, between Patent Owner and Petitioner, including any collateral agreements, made in connection with, or in contemplation of, the termination of the present proceeding as set forth in 35 U.S.C. § 317(b).” Paper 35, 1. Under 35 U.S.C. § 317(a), “[a]n 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.” In this case, the oral argument has not yet occurred. Under these circumstances and in view of the parties’ representations, we determine that it is appropriate to terminate this inter partes review. We also determine it is appropriate to treat the settlement agreement as business confidential information. ORDER Accordingly, it is ORDERED that the Joint Motion to Terminate is granted, and the proceeding is terminated; IPR2020-01332 Patent 10,506,269 B2 3 FURTHER ORDERED that the settlement agreement (Exhibit 1048) be treated as business confidential information and be kept separate from the files of the involved U.S. Patent No. 10,506,269 B2; and FURTHER ORDERED this paper does not constitute a final written decision pursuant to 35 U.S.C. § 318(a). IPR2020-01332 Patent 10,506,269 B2 4 FOR PETITIONER: Alyssa Caridis K. Patrick Herman ORRICK, HERRINGTON & SUTCLIFFE LLP a8cptabdocket@orrick.com p52ptabdocket@orrick.com FOR PATENT OWNER: Sal Lim David Alberti Hong Lin FEINBERG DAY KRAMER ALBERTI LIM TONKOVICH & BELLOLI LLP slim@feinday.com dalberti@feinday.com hlin@feinday.com Michael Specht Jason Fitzsimmons Richard Bemben STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C. mspecht-ptab@sternekessler.com jfitzsimmons-ptab@sternekessler.com rbemben-ptab@sternekessler.com Kevin Greenleaf DENTONS US LLP kevin.greenleaf@dentons.com