`571-272-7822
`
`
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`
`
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` Paper No. 13
`
` Entered: January 17, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`UNIFIED PATENTS INC.,
`Petitioner,
`
`v.
`
`SENTEGRA, LLC,
`
`Patent Owner.
`____________
`
`Case IPR2016-01109
`Patent 8,706,627 B2
`_______________
`
`
`
`
`
`
`
`
`
`
`Before JOSIAH C. COCKS, MATTHEW R. CLEMENTS, and
`KEVIN C. TROCK, Administrative Patent Judges.
`
`
`
`TROCK, Administrative Patent Judge
`
`JUDGMENT
`Termination of the Proceeding
`37 C.F.R. § 42.73
`
`
`
`
`
`
`
`
`
`Case IPR2016-01109
`Patent 8,706,627 B2
`
`Petitioner filed a petition for inter partes review in this case on May 27,
`
`2016 (Paper 1). Patent Owner filed a preliminary response to the petition on
`
`September 5, 2016 (Paper 6). A decision instituting trial in this proceeding
`
`was entered on November 29, 2016 (Paper 7). This proceeding, however, is
`
`still in its early stages and an initial conference call with the Board to discuss
`
`the case has not yet been held.
`
`On January 3, 2017, the parties filed a joint motion to terminate this
`
`proceeding (Paper 10, “Mot.”) accompanied by a copy of a settlement
`
`agreement (Exhibit 1015) and a joint motion to treat the settlement agreement
`
`as business confidential information (Paper 11) to be kept separate from the
`
`patent file, pursuant to 35 U.S.C. § 317 and 37 C.F.R. § 42.74.
`
`Petitioner indicates that it is not a party to any related district court
`
`litigation. Mot. 4. The parties also indicate that the following related district
`
`court litigations have been dismissed: (1) Sentegra, LLC v. Blackberry Limited
`
`et al., Case 14-cv-08389 (S.D.N.Y.); (2) Sentegra, LLC v. Lenovo Group
`
`Limited et al. Case 14-cv-09096 (S.D.N.Y.); (3) Sentegra, LLC v. LG
`
`Electronics MobileComm USA, Inc. et al., Case 15-cv-01535 (S.D.N.Y.); (4)
`
`Sentegra, LLC v. ASUS Computer International, Case 15-cv- 03768
`
`(S.D.N.Y.) (transferred as Sentegra, LLC v. ASUS Computer International,
`
`Case 16-cv-03136 (N.D. Cal.); and (5) Sentegra, LLC v. Samsung Electronics
`
`America, Inc., Case 15-cv- 09266 (S.D.N.Y.), and that the following related
`
`cases remain pending: (6) Sentegra, LLC v. BLU Products, Inc., Case 16-cv-
`
`00158 (D. Colo.); and (7) Sentegra, LLC v. Azend Group Corp., 16-cv-00263
`
`(D. Colo.). Id. at 4–5. The parties also indicate that there are no pending
`
`related inter partes review proceedings. Id. at 5.
`
`Patent Owner indicates that it will continue to participate in this
`
`proceeding if the motion to terminate is not granted. Id. Petitioner indicates
`
`
`
`2
`
`
`
`
`
`Case IPR2016-01109
`Patent 8,706,627 B2
`
`that it will no longer participate in these proceedings beyond responding to
`
`subpoenas for information or otherwise complying with orders issued by any
`
`court or governmental body. Id.
`
`Under these circumstances, we determine that it is appropriate to
`
`terminate this proceeding.
`
`Therefore, the joint motion to terminate the
`
`proceeding is GRANTED.
`
`Accordingly, it is
`
`ORDERED that the joint motion to treat the settlement agreement as
`
`business confidential information to be kept separate from the patent file is
`
`GRANTED;
`
`FURTHER ORDERED that the joint motion to terminate the proceeding
`
`is GRANTED; and
`
`FURTHER ORDERED that this proceeding is TERMINATED.
`
`
`
`3
`
`
`
`Case IPR2016-01109
`Patent 8,706,627 B2
`
`
`
`
`
`PETITIONER:
`
`Michael L. Kiklis
`Scott A. McKeown
`Thomas C. Yebernetsky
`Katherine D. Cappaert
`OBLON, MCCLELLAND, MAIER & NEUSTADT, LLP
`cpdocketkiklis@oblon.com
`cpdocketmckeown@oblon.com
`cpdocketyebernetsky@oblon.com
`cpdocketcappaert@oblon.com
`
`Jonathan Stroud
`UNIFIED PATENTS INC.
`jonathan@unifiedpatents.com
`
`PATENT OWNER:
`
`
`Zachary D. Silbersher
`Kroub, Silbersher & Kolmykov PLLC
` zsilbersher@kskiplaw.com
` gkroub@kskiplaw.com
`
`
`
`
`4
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