Sound View Innovations LLC

Patent Trials and Appeals Board

Sep 3, 2020

IPR2020-00817 (P.T.A.B. Sep. 3, 2020)

Trials@uspto.gov Paper: 9
571.272.7822 Entered: September 3, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

WALMART INC. and VUDU, INC.,
Petitioner,
v.
SOUND VIEW INNOVATIONS, LLC,
Patent Owner.
____________

IPR2020-00817
Patent 6,708,213 B1
____________

Before JAMESON LEE, DEBRA K. STEPHENS, and KAMRAN JIVANI,
Administrative Patent Judges.

JIVANI, Administrative Patent Judge.

DECISION
Settlement Prior to Institution of Trial
37 C.F.R. § 42.74
IPR2020-00817
Patent 6,708,213 B1

2
I. INTRODUCTION
With the Board’s authorization, in the above-captioned preliminary
proceeding, Petitioner and Patent Owner (collectively “the Parties”) filed a Joint
Motion to Terminate. Paper 7 (“Joint Motion”). In support of the Joint Motion,
the Parties filed a copy of a written confidential settlement agreement. Ex. 2101
(“Settlement Agreement”). The Parties also filed a Joint Request to Treat
Settlement Agreement as Business Confidential Information. Paper 8 (“Joint
Request”).
II. DISCUSSION
In the Joint Motion, the Parties state that they have reached an agreement to
jointly seek termination of this proceeding (including dismissal of the petition) and
have memorialized their agreement in a written confidential settlement agreement.
Joint Motion 1. The Parties state that their agreement resolves their disputes in the
proceeding, and that they have agreed to voluntary dismissal of the related district
court litigation. Id. at 1–2. The Parties assert that “[t]he Settlement Agreement,
Exhibit 2101, has been made in writing, and a true and correct copy shall be filed
with this Office.” Id. at 5. The Parties also “certify that, aside from the Settlement
Agreement, there are no other agreements or understandings, oral or written,
between the Parties and made in connection with, or in contemplation of, the
termination of the inter partes review.” Id.
There are strong public policy reasons to favor settlement between the
parties to a proceeding. Office Patent Trial Practice Guide, 84 Fed. Reg. 64,280
(Nov. 21, 2019). The proceeding is in its preliminary phase, and we have not yet
decided whether to institute a trial in the proceeding. In view of the early stage of
the proceeding and the settlement between the Parties, we determine that it is
IPR2020-00817
Patent 6,708,213 B1

3
appropriate to dismiss the petition and terminate the proceeding as to the Parties,
without rendering a decision on institution or a final written decision.
In the Joint Request, the Parties jointly request to treat the Settlement
Agreement as business confidential information, and to have it be kept separate
from the files of the involved patent and associated proceeding. Joint Request 1.
After reviewing the Settlement Agreement between the Parties, we find that
the Settlement Agreement contains confidential business information regarding the
terms of settlement. Therefore, the Settlement Agreement (Ex. 2101) between the
Parties shall be treated as business confidential information under 37 C.F.R.
§ 42.74(c) and shall be kept separate from the files of the involved patents and
associated preliminary proceeding.
This Order does not constitute a final written decision pursuant to 35 U.S.C.
§ 318(a).
III. ORDER
Accordingly, it is:
ORDERED that the Joint Motion to Terminate is granted;
FURTHER ORDERED that the above-captioned proceeding is terminated
and the petition is dismissed; and
FURTHER ORDERED that the Joint Request to Treat Settlement
Agreement as Business Confidential Information is granted, and the Settlement
Agreement shall remain designated as “Parties and Board Only” in the Board’s
filing system, shall made available only to Federal Government agencies on
written request, or to any person on a showing of good cause, and shall be kept
separate from the files of the involved patent and associated proceeding, pursuant
to 37 C.F.R. § 42.74(c).

IPR2020-00817
Patent 6,708,213 B1

4
For PETITIONER:

Heidi L. Keefe
Phillip Morton
COOLEY LLP
hkeefe@cooley.com
pmorton@cooley.com

For PATENT OWNER:
Kenneth Weatherwax
Edward Hsieh
Parham Hendifar
Bridget Smith
Patrick Maloney
Jason Linger
LOWENSTEIN & WEATHERWAX LLP
weatherwax@lowensteinweatherwax.com
hsieh@lowensteinweatherwax.com
hendifar@lowensteinweatherwax.com
smith@lowensteinweatherwax.com
maloney@lowensteinweatherwax.com
linger@lowensteinweatherwax.com