IPR2020-00482 (P.T.A.B. Jun. 8, 2020)

Sound View Innovations, LLC

Patent Trials and Appeals BoardJun 8, 2020

IPR2020-00482 (P.T.A.B. Jun. 8, 2020)

Trials@uspto.gov Paper 8 571-272-7822 Date: June 8, 2020 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ AMC NETWORKS, INC., AMC PREMIERE LLC, WE TV LLC, SHUDDER LLC, SUNDANCETV LLC, DIGITAL STORE LLC, IFC IN THEATERS LLC, IFC TV LLC, HSN, INC., and QVC, INC., Petitioners, v. SOUND VIEW INNOVATIONS, LLC, Patent Owner. ____________ IPR2020-00482 Patent 9,462,074 B2 ____________ Before DEBRA K. STEPHENS, DANIEL J. GALLIGAN, and JOHN A. HUDALLA, Administrative Patent Judges. STEPHENS, Administrative Patent Judge. DECISION Settlement Prior to Institution of Trial 37 C.F.R. § 42.74 IPR2020-00482 Patent 9,462,074 B2 2 I. INTRODUCTION Petitioners AMC Networks, Inc., AMC Premier LLC, We TV LLC, Shudder LLC, SundanceTV LLC, Digital Store LLC, IFC In Theaters LLC, IFC TV LLC, HSN, Inc. and QVC, Inc. and Patent Owner Sound View Innovations, LLC (“Patent Owner”) (collectively referred to as “the Parties”) have requested that the above-identified inter partes review proceeding of U.S. Patent 9,462,074 B2 (“’074 Patent”) be terminated pursuant to a settlement. On April 29, 2020, we authorized the Parties to file a joint motion to terminate the above-identified proceeding. On May 20, 2020, the Parties filed a Joint Motion to Terminate the above-identified proceeding (Paper 6, “Joint Motion”) and two patent license agreements (Exhibits 2001, 2002, “Settlement Agreements”). The Parties represent the Settlement Agreement of Exhibit 2001 resolves the disputes between Patent Owner and Petitioners AMC Networks, Inc., AMC Premier LLC, We TV LLC, Shudder LLC, SundanceTV LLC, Digital Store LLC, IFC In Theaters LLC, and IFC TV LLC. The Parties further represent the Settlement Agreement of Exhibit 2002 resolves the disputes between Patent Owner and Petitioners HSN, Inc. and QVC, Inc. II. DISCUSSION In the Joint Motion, the Parties represent that they have reached an agreement to jointly seek termination of the above-identified inter partes review proceeding and that the filed copies of the Settlement Agreements are true and complete copies (Paper 6, 1, 3–4). The Parties further represent their Settlement Agreements (Exs. 2001, 2002) resolve all currently pending Patent Office and District Court proceedings between the Parties involving IPR2020-00482 Patent 9,462,074 B2 3 the above-identified patent at issue (id. at 2–3). The above-identified proceeding is at an early stage, and we have not yet decided whether to institute trial in the proceeding. In view of the early stage of the proceeding and the settlement between the Parties, we determine good cause exists to dismiss the petition and terminate the proceeding with respect to the Parties. The Parties also request the Settlement Agreements be treated as business confidential information and be kept separate from the files of the patent involved in the above-identified inter partes review proceeding (Paper 7, 1). After reviewing the Settlement Agreements, we find that the Settlement Agreements contain confidential business information regarding the terms of settlement. We determine that good cause exists to treat the Settlement Agreements as business confidential information pursuant to 37 C.F.R. § 42.74(c). III. CONCLUSION The joint motion to terminate this inter partes review is granted. This decision does not constitute a final written decision pursuant to 35 U.S.C. § 318(a). IV. ORDER Accordingly, for the reasons discussed above, it is: ORDERED that the Joint Motion to Terminate is granted, the petition in IPR2020-00482 is dismissed, and the proceeding is terminated; FURTHER ORDERED that the Parties’ request to Treat the Settlements Agreements as Business Confidential Information is granted, IPR2020-00482 Patent 9,462,074 B2 4 and the Settlement Agreements shall be kept separate from the files of Patent No. 9,462,074 B2 and made available only to Federal Government agencies on written request, or to any person on a showing of good cause, pursuant to 37 C.F.R. § 42.74(c). IPR2020-00482 Patent 9,462,074 B2 5 For PETITIONERS: Douglas W. McClellan Brian Chang Melissa Hotze Ilya (Eli) Svetlov WEIL, GOTSHAL & MANGES LLP doug.mcclellan@weil.com brian.chang@weil.com melissa.hotze@weil.com ilya.svetlov@weil.com For PATENT OWNER: Kenneth J. Weatherwax Bridget Smith Edward Hsieh Parham Hendifar Patrick Maloney Jason C. Linger LOWENSTEIN & WEATHERWAX LLP weatherwax@lowensteinweatherwax.com smith@lowensteinweatherwax.com hsieh@lowensteinweatherwax.com hendifar@lowensteinweatherwax.com maloney@lowensteinweatherwax.com linger@lowensteinweatherwax.com