`Date: November 2, 2016
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ARISTOCRAT TECHNOLOGIES, INC.,
`Petitioner,
`
`v.
`
`IGT,
`Patent Owner.
`____________
`
`Case IPR2016-00491
`Patent 6,932,701
`____________
`
`Before JOSIAH C. COCKS, MICHAEL W. KIM, and RICHARD E. RICE,
`Administrative Patent Judges.
`
`KIM, Administrative Patent Judge.
`
`
`ORDER
`Granting Joint Motion to Terminate Proceeding and
`Granting Joint Request to Treat Agreement as Business
`Confidential Information
`37 C.F.R. §§ 42.72 & 42.74
`
`
`
`
`
`IPR2016-00491
`Patent 6,932,701
`
`
`
`
`
`On October 7, 2016, the parties filed (1) a Joint Motion to Terminate
`Pursuant to 35 U.S.C. § 317 and 37 C.F.R. § 42.74 (Paper 17, “Mot.”), and
`(2) a Joint Request to File Settlement Agreement as Business Confidential
`Information and to Maintain Said Agreement Separate from the Public File
`Pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) (Paper 18, citing
`Ex. 1024).
`
`Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under
`this chapter shall be terminated with respect to any petitioner upon the joint
`request of the petitioner and patent owner, unless the Office has decided the
`merits of the proceeding before the request for termination is filed.” The
`requirement for terminating review with respect to Petitioner is met. Further
`under 35 U.S.C. § 317(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 318(a).” Petitioner is the sole petitioner in this
`review. The Board has discretion to terminate this review with respect to
`Patent Owner.
`
`Under 35 U.S.C. § 317(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. We have considered the appropriate papers, and determine that the
`parties have complied with the requirements of § 317(b).
`In the Motion, the parties signify that “the parties have settled their
`dispute with respect to the ’701 patent, and have agreed to terminate this
`inter partes review.” Mot. 2. The parties further represent the following:
`
`2
`
`
`
`
`
`IPR2016-00491
`Patent 6,932,701
`
`
`“[T]he inter partes review is not at a stage in which the Office would have a
`complete enough record on which to make a decision on the merits. The
`Patent Owner’s Response has not yet been filed.” Mot. 3.
`Also in the Motion, the parties indicate that there are no other inter
`
`partes review proceedings for the ’701 patent currently before the U.S.
`Patent and Trademark Office. Mot. 4. The parties further state that their
`settlement agreement fully resolves all litigation and proceedings between
`the parties to this inter partes proceeding and that the parties will be filing a
`Stipulation and Order of Dismissal in the related district court litigation.
`Mot. 4.
`Under these circumstances, we determine that issuing a final written
`decision would not be an efficient use of judicial resources, and, thus, are
`persuaded that it is appropriate to exercise our discretion and terminate this
`proceeding with respect to both Petitioner and Patent Owner without
`rendering any further decisions. See 37 C.F.R. § 42.72.
`
`ORDER
`
`It is
`ORDERED that the parties’ Joint Motion to Terminate (Paper 17),
`both as to Petitioner and Patent Owner, is granted;
`FURTHER ORDERED that the parties’ Joint Request (Paper 18) to
`treat the settlement agreement (Exhibit 1024) as business confidential
`information under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) is granted;
`and
`
`FURTHER ORDERED that this proceeding is terminated with respect
`to both Petitioner and Patent Owner.
`
`
`3
`
`
`
`
`
`
`
`4
`
`IPR2016-00491
`Patent 6,932,701
`
`
`
`For PETITIONER:
`Andrea Reister
`areister@cov.com
`
`
`Jay Alexander
`jalexander@cov.com
`
`
`
`For PATENT OWNER:
`
`
`
`Robert Sterne
`rsterne@skgf.com
`
`Michelle Holoubek
`holoubek@skgf.com
`
`Holby Abern
`habern@ngelaw.com
`
`
`Kevin Cukierski
`kcukierski@ngelaw.com
`
`Adam Masia
`amasia@ngelaw.com
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