`Tel: 571-272-7822
`
`Paper 10
`Entered: October 22, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`UNIKEY TECHNOLOGIES, INC.,
`Petitioner
`
`v.
`
`ASSA ABLOY AB
`Patent Owner
`
`
`
`
`
`
`
`Cases1
`IPR2015-01440 (7,706,778)
`IPR2015-01441 (8,150,374)
`
`
`
`Before RAMA G. ELLURU, BEVERLY M. BUNTING, and
`CHRISTOPHER G. PAULRAJ, Administrative Patent Judges.
`
`BUNTING, Administrative Patent Judge.
`
`
`
`JUDGMENT
`Termination of Proceedings
`35 U.S.C. § 317(a) and 37 C.F.R. § 42.72
`
`
`1 This Order addresses issues that are identical in both cases. We exercise
`our discretion to issue one Order to be filed in each case. The parties are not
`authorized to use this style heading for any subsequent papers.
`
`
`
`
`
`
`
`
`IPR2015-01440 (7,706,778)
`IPR2015-01441 (8,150,374)
`
`
`On October 1, 2015, UniKey Technologies, Inc. and ASSA ABLOY
`AB (collectively referred to as “the parties”) filed a joint motion to terminate
`each of these proceedings pursuant to a settlement agreement. Paper 7.2
`The parties also filed true copies of their written settlement agreement, made
`in connection with the termination of these proceedings, in accordance with
`35 U.S.C. § 317(b) and 37 C.F.R. § 42.72. Ex. 1007. Additionally, the
`parties submitted joint requests to have their settlement agreement treated as
`confidential business information under 35 U.S.C. § 317(b) and 37 C.F.R.
`§ 42.74(c). Paper 8.
`The parties submit that termination is appropriate because the parties
`have settled their dispute and have reached agreement to terminate both of
`these inter partes reviews. Paper 7 at 3. The parties represent that the
`settlement agreement ends all patent disputes between the parties, including
`their pending district court litigation, which was dismissed without
`prejudice. Id.
`The Parties are reminded that the Board is not a party to the
`settlement, and may identify independently any question of patentability.
`37 C.F.R. § 42.74(a). Generally, however, the Board expects that a
`proceeding will terminate after the filing of a settlement agreement. See,
`e.g., Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48768 (Aug.
`14, 2012). These proceedings are still in the preliminary stages, and the
`Board has not issued yet a decision to institute an inter partes review.
`Under the circumstances, based on the record before us, we determine
`that it is appropriate to terminate each of these proceedings with respect to
`
`2 Paper and exhibit numbers refer to IPR2015-01440.
`2
`
`
`
`
`IPR2015-01440 (7,706,778)
`IPR2015-01441 (8,150,374)
`
`
`both Petitioner and Patent Owner, at this early juncture, to promote
`efficiency and minimize unnecessary costs. Based on the facts, it is
`appropriate to enter judgement terminating these proceedings without
`rendering a final written decision and treat the settlement agreement as
`business confidential information. See 35 U.S.C. § 317(a); 37 C.F.R.
`§§ 42.72 and 42.74(c).
`
`
`ORDER
`In consideration of the foregoing, it is
`
`ORDERED that the parties’ joint request that the settlement
`
`agreement (Exhibit 1007) be treated as business confidential information
`under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), to be kept separate from
`the patent file, is GRANTED;
`
`FURTHER ORDERED that the joint motions to terminate IPR2015-
`01440 and IPR2015-01441 is GRANTED; and
`
`FURTHER ORDERED that these proceedings are TERMINATED.
`
`
`
`3
`
`
`
`
`IPR2015-01440 (7,706,778)
`IPR2015-01441 (8,150,374)
`
`
`For PETITIONER:
`
`Steven Bauer
`Joseph Capraro
`Gerald Worth
`PROSKAUER ROSE LLP
`PTABMattersBoston@proskauer.com
`jcapraro@proskauer.com
`gworth@proskauer.com
`
`
`
`For PATENT OWNER:
`
`Benjamin Deming
`RUTAN & TUCKER, LLP
`bdeming@rutan.com
`
`4
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