`Patent No. 7,706,778
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
`
`UniKey Technologies, Inc.,
`Petitioner
`
`v.
`
`ASSA ABLOY AB,
`Patent Owner
`________________
`
`Case IPR2015-01440
`Patent No. 7,706,778
`________________
`
`JOINT MOTION TO TERMINATE INTER PARTES
`REVIEW OF USPN 7,706,778 PURSUANT TO 35 U.S.C. § 317
`
`
`
`
`
`
`2118/025100-0045
`8884629.1 a10/01/15
`
`
`
`
`
`
`IPR 2015-01440
`Patent No. 7,706,778
`
`I.
`
`RELIEF REQUESTED
`
`Pursuant to 35 U.S.C. § 317(a), Petitioner UniKey Technologies, Inc.
`
`(“Petitioner” or “UniKey”) and Patent Owner ASSA ABLOY AB (“Patent Owner”
`
`or “AAAB”) jointly request termination of this inter partes review of U.S. Patent
`
`No. 7,706,778 (the ‘778 patent). Termination of this review is appropriate because
`
`the parties have settled their dispute with regard to the ‘778 patent and have
`
`reached an agreement to, among other things, terminate this review. Ex. 1007,
`
`Settlement Agreements (submitted as business confidential information pursuant to
`
`35 U.S.C. § 317 (b) and 37 C.F.R. § 42.74 (c)).
`
`II.
`
`STATEMENT OF FACTS AND SUPPORT FOR TERMINATION
`
`UniKey filed this Petition on June 18, 2015. The Board has not entered a
`
`decision whether to grant the petition. 35 U.S.C. § 317(a) provides, in pertinent
`
`part, “[a]n 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.”
`
`“Generally, the Board expects that a proceeding will terminate after the filing of a
`
`settlement agreement.” Oracle Corp. v. Cmty. United IP, LLC, CBM2013-00015,
`
`Paper 13 (July 25, 2013) (citing Office Patent Trial Practice Guide, 77 Fed. Reg.
`
`48756, 48756-66 (Aug. 14, 2012)).
`
`2118/025100-0045
`8884629.1 a10/01/15
`
`
`-2-
`
`
`
`IPR 2015-01440
`Patent No. 7,706,778
`Pursuant to a written agreement of the parties, the patent infringement
`
`lawsuit between the parties relating to the ‘778 Patent has been dismissed without
`
`prejudice. The parties also have entered into a further agreement relating to
`
`termination of this inter partes proceeding. Therefore, the parties submit this
`
`proceeding should be terminated. Conmed Corporation v. Bonutti Skeletal
`
`Innovations LLC, IPR2013-00624, Paper 27 (April 30, 2014).
`
`The parties have submitted true and correct copies of both agreements
`
`contemporaneously with this Joint Motion pursuant to 35 U.S.C. § 317(b) and 37
`
`C.F.R. § 42.74(b). The parties desire that their settlement agreements be filed and
`
`maintained as business confidential information pursuant to 35 U.S.C. § 317(b)
`
`and 37 C.F.R. § 42.74(c), and have filed a separate joint request therefor. As
`
`stated in 35 U.S.C. § 317(a), because UniKey and AAAB jointly request this
`
`termination as to Petitioner UniKey, no estoppel under 35 U.S.C. § 315(e) shall
`
`attach to UniKey.
`
`
`
`
`
`2118/025100-0045
`8884629.1 a10/01/15
`
`
`-3-
`
`
`
`IPR 2015-01440
`Patent No. 7,706,778
`
`III. CONCLUSION
`
`In light of the foregoing, Petitioner UniKey and Patent Owner AAAB
`
`respectfully request that the Board grant this Petition to Terminate this proceeding.
`
`
`
`Dated: October 1, 2015
`
`
`
`
`
`Respectfully Submitted,
`
`
`
`
`
`
`
`BY: /Ronald P. Oines/
`Ronald P. Oines
`Benjamin Deming
`RUTAN & TUCKER, LLP
`611 Anton Blvd., Suite 1400
`Costa Mesa, CA 92626
`T: 714-641-5100
`F: 714-546-9035
`roines@rutan.com
`bdeming@rutan.com
`
`
`
`
`
`
`
`
`BY: /Steven M. Bauer/
`Steven M. Bauer, Reg. No. 31,481
`Joseph A. Capraro Jr., Reg. No. 36,471
`PROSKAUER ROSE LLP
`One International Place
`Boston, MA 02110
`Tel: (617) 526-9600
`Fax: (617) 526-9899
`PTABMattersBoston@proskauer.com
`jcapraro@proskauer.com
`Attorneys for UniKey Technologies, Inc.
`
`
`
`2118/025100-0045
`8884629.1 a10/01/15
`
`
`-4-
`
`
`
`IPR 2015-01440
`Patent No. 7,706,778
`
`CERTIFICATE OF SERVICE
`The undersigned hereby certifies that the foregoing JOINT MOTION TO
`TERMINATE INTER PARTES REVIEW OF USPN 7,706,778 PURSUANT
`TO 35 U.S.C. § 317 was served on October 1, 2015, in its entirety on the following
`via electronic filing with the Patent Review Processing System and via Federal
`Express:
`
`
`
`
`
`Steven M. Bauer
`Reg. No. 31,481
`Joseph A. Capraro, Jr.
`Reg. No. 36,471
`Proskauer Rose LLP
`One International Place
`Boston, MA 02110
`Tel: (617) 526-9700
`Fax: (617) 526-9899
`PTABMattersBoston@proskauer.com
`jcapraro@proskauer.com
`
`RUTAN & TUCKER LLP
`
`BY: /Benjamin C. Deming/
`Benjamin C. Deming
`
`2118/025100-0045
`8884629.1 a10/01/15
`
`
`-5-
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