IPR2019-01413 (P.T.A.B. Nov. 19, 2020)

Rovi Guides, Inc.

Patent Trials and Appeals BoardNov 19, 2020

IPR2019-01413 (P.T.A.B. Nov. 19, 2020)

Trials@uspto.gov Paper 52 571-272-7822 Date: November 19, 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. _______________ IPR2019-01413 Patent 9,232,254 B2 ____________ Before KARL D. EASTHOM, ROBERT J. WEINSCHENK and CHRISTOPHER L. OGDEN, Administrative Patent Judges. EASTHOM, 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 Inter Partes Review (Paper 50 (“Motion”)) of U.S. Patent 9,232,254 B2 Settlement and Licensing Agreements (Exs. 2021, 2022) (collectively Case IPR2019-01413 Patent 9,232,254 B2 2 “Agreements”), and a Joint Request that the Settlement and Licensing Agreements be Treated as Business Confidential Information and Kept Separate Under 35 U.S.C. § 317(a) (“Request”) (Paper 51). Under 35 U.S.C. § 317(a), applicable to inter partes review proceedings, an “inter partes review . . . 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.” The Board has not “decided the merits of the proceeding.” See id. Under 35 U.S.C. § 317(b), “[a]ny agreement or understanding between the patent owner and a petitioner, including any collateral agreements referred to in such agreement or understanding, made in connection with, or in contemplation of, the termination of an inter partes review . . . shall be in writing and a true copy of such agreement or understanding shall be filed in the Office.” The Agreements appear to be a true copy of the agreement between the parties, specify the instant proceeding, and identify other matters that are to be settled between the parties. See Ex. 2021; Ex. 2022. Under these circumstances, we determine that it is appropriate to grant the Motion to terminate the trial without rendering a final written decision pursuant to 35 U.S.C. § 318(a) and to grant the Request as the Agreements contain sensitive business confidential information. See 37 C.F.R. §§ 42.5(a), 42.72. Accordingly, it is ORDERED that the Motion and Request are granted; FURTHER ORDERED that the Agreements, Exhibit 2021 and Case IPR2019-01413 Patent 9,232,254 B2 3 Exhibit 2022, be treated as business confidential information, designated “Board Only,” and kept separate from the file of the involved patent under the provisions of 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c); and FURTHER ORDERED that the inter partes review is terminated. PETITIONER: Frederic M. Meeker Bradley C. Wright Blair A. Silver C. Andy Mu Craig W. Kronenthal Wesley W. Jones BANNER & WITCOFF, LTD. fmeeker@bannerwitcoff.com bwright@bannerwitcoff.com bsilver@bannerwitcoff.com amu@bannerwitcoff.com ckronenthal@bannerwitcoff.com wjones@bannerwitcoff.com PATENT OWNER: Jason D. Eisenberg Jon E. Wright STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C. jasone-PTAB@sternekessler.com jwright-PTAB@sternekessler.com