`571-272-7822
`
`
`
`
`Paper 17
`Date: March 1, 2018
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`HONEYWELL INTERNATIONAL, INC.,
`Petitioner,
`
`v.
`
`INTELLICHECK, INC. 1,
`Patent Owner.
`____________
`
`CBM2017-00062 (Patent 7,899,751 B2)
`CBM2018-00010 (Patent 7,899,751 B2)2
`____________
`
`
`
`Before MEREDITH C. PETRAVICK, FRANCES L. IPPOLITO, and
`CHRISTOPHER G. PAULRAJ, Administrative Patent Judges.
`
`PETRAVICK, Administrative Patent Judge.
`
`JUDGMENT
`Termination Due to Settlement
`35 U.S.C. § 327 and 37 C.F.R. §§ 42.10, 42.74
`
`1 On March 1, 2001, Petitioner updated its Mandatory Notices to indicate its
`named changed from Intellicheck Mobilisa, Inc. to Intellicheck, Inc. Paper
`6, 1.
`2 This Order addresses the same or similar issue in the proceedings listed
`above, and we issue one Order to be filed in each proceeding.
`
`
`
`
`
`
`CBM2017-00062 (Patent 7,899,751 B2)
`CBM2018-00010 (Patent 7,899,751 B2)
`
`
`I. INTRODUCTION
`On February 28, 2018, the parties filed joint motions to terminate the
`
`instant proceedings (Paper 143), along with, a true copy of their written
`settlement agreement made in connection with the termination of the instant
`proceedings (Ex. 1039). The parties also filed joint requests to treat the
`settlement agreement as business confidential information. Paper 15. The
`Board authorized these filings by email on February 21, 2018. For the
`reasons set forth below, we grant the motions and requests.
`
`
`II. DISCUSSION
`Under 35 U.S.C. § 327(a), a covered business method patent review
`proceeding shall be terminated with respect to any petitioner upon the joint
`request of the petitioner and the patent owner, unless the Board has decided
`the merits of the proceeding before the request for termination is filed. See
`37 C.F.R. §§ 42.71(a), 42.72. These proceedings are in the early stages. In
`CBM2017-00062, we entered a decision to institute on January 22, 2018
`(Paper 12), and a patent owner’s response has not yet been filed. In
`CBM2018-00010, we have not yet entered a decision on institution. Thus,
`we have not yet decided the merits in these proceedings. Under 35 U.S.C. §
`327(a), “[i]f no petitioner remains in the inter partes review, the Office may
`terminate the review or proceed to a final written decision under section
`328(a).” Petitioner is the sole petitioner in this review. The Board has
`discretion to terminate this review with respect to Patent Owner.
`
`
`3 For the purposes of this Order, CBM2017-00062 is representative and all
`citations are to papers in CBM2017-00062 unless otherwise noted.
`
`2
`
`
`
`
`CBM2017-00062 (Patent 7,899,751 B2)
`CBM2018-00010 (Patent 7,899,751 B2)
`
`
`
`Under 35 U.S.C. § 327(b) and 37 C.F.R. § 42.74(b), any 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 the proceeding
`shall be in writing, and a true copy of such agreement or understanding shall
`be filed in the Office. The parties state that they have settled their dispute
`concerning the patent at issue and have reached a written agreement to
`terminate this proceeding. Paper 14, 1–2. In support of the joint motions,
`the parties submitted a true copy of their written agreement as Exhibit 1039.
`The parties also indicate the no other pending litigation or proceeding
`concerning the patent at issue. Paper 14, 3.
`Upon consideration of the facts in the case before us, we grant the
`joint motions and terminate these proceedings as to both Petitioner and
`Patent Owner without rendering final written decisions. We also grant the
`joint requests to maintain the settlement agreement as business confidential
`in accordance with 37 C.F.R. § 42.74(c).
`In CBM2018-00010, a Motion for Admission Pro Hac Vice of Amber
`N. Davis is pending. CBM2018-00010, Paper 7. We dismiss the Motion for
`Admission Pro Hac Vice of Amber N. Davis as moot.
`
`III. CONCLUSION
`
`It is:
`
`ORDERED that the joint motions to terminate these proceedings are
`
`granted, and these proceedings are, hereby, terminated; and
`
`FURTHER ORDERED that the parties’ joint requests that the
`settlement agreement be treated as business confidential information and
`
`3
`
`
`
`
`
`
`CBM2017-00062 (Patent 7,899,751 B2)
`CBM2018-00010 (Patent 7,899,751 B2)
`
`
`kept separate from the file of the involved patent under 35 U.S.C. § 327(b)
`and 37 C.F.R. § 42.74(c) is granted;
`
`FURTHER ORDERED that the Motion for Admission Pro Hac Vice
`of Amber N. Davis in CBM2018-00010 is dismissed as moot.
`
`For PETITIONER:
`Ashley Summer
`NELSON MULLINS RILEY & SCARBOROUGH, LLP
`ashley.summer@nelsonmullins.com
`
`David Yohannan
`QUARLES & BRADY, LLP
`david.yohannan@quarles.com
`
`For PATENT OWNER:
`
`Terry Sanks
`Amber Davis
`BEUSSE WOLTER SANKS & MAIRE, PLLC
`tsanks@bwsmiplaw.com
`adavis@bwsmiplaw.com
`
`
`
`4
`
`
`
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