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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`HONEYWELL INTERNATIONAL INC.,
`Petitioner
`
`v.
`
`ALLURE ENERGY, INC.,
`Patent Owner
`____________
`
`Case IPR2016-01605
`Patent 8,498,749
`____________
`
`
`
`JOINT MOTION TO TERMINATE PROCEEDING UNDER 35 U.S.C. § 317
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`1
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`Pursuant to 35 U.S.C. § 317(a), the Petitioner, Honeywell International Inc.,
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`and Patent Owner, Allure Energy, Inc., (collectively, “Parties”) hereby jointly
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`move for an order terminating the Inter Partes review, subject to the terms of the
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`Settlement Agreement, dated April 13, 2017, entered into by the Parties.
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`The IPR Proceeding relates to a petition for Inter Partes Review filed
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`August 12, 2016, directed to U.S. Patent No. 8,498,749 (the “’749 Patent”), and
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`assigned Proceeding Number IPR2016-01605. The PTAB instituted trial on
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`February 3, 2017. (Paper No. 6.)
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`The Parties have settled their dispute, and have reached agreement to
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`terminate this IPR Proceeding. The Parties’ Settlement Agreement has been made
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`in writing, and a copy of same is being filed concurrently herewith as an Exhibit.
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`There are no other agreements relating to the proceeding.
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`In addition, the Parties desire that the Settlement Agreement be maintained
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`as business confidential information under 37 C.F.R. § 42.74(c), and a separate
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`joint request to that effect is being filed concurrently herewith.
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`As stated in 35 U.S.C. § 317(a), because Petitioner and Patent Owner jointly
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`request this termination, no estoppel under 35 U.S.C. § 315(e) shall attach to
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`Petitioner.
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`1
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`1. Reasons Why Termination Is Appropriate.
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`Termination is proper under 35 U.S.C. § 317(a) because the Parties are
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`jointly requesting termination and the Office has not yet “decided the merits of the
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`proceeding before the request for termination is filed.” Patent Owner’s Response
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`to the Petition and Institution Decision has not yet been filed, and is not due until
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`May 22, 2017, under the current Scheduling Order, as modified by a joint
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`stipulation by the parties. (Paper Nos. 7 and 8.)
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`As noted in the Patent Office Trial Practice Guidelines, “there are strong
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`public policy reasons to favor settlement between the parties to a proceeding . . . .
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`The Board expects that a proceeding will terminate after the filing of a settlement
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`agreement, unless the Board has already decided the merits of the proceeding. 35
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`U.S.C. 317(a), as amended, and 35 U.S.C. 327.”1 Accordingly, termination is
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`appropriate here.
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`
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`2.
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`Status of Related District Court Litigation.
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`There is no underlying litigation involving the ‘749 Patent. However, there
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`is litigation between Petitioner and Patent Owner that is addressed by the
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`Settlement Agreement that involves related patents U.S. 8,626,344 and U.S.
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`8,497,797. That litigation is styled Allure Energy, Inc. v. Honeywell Int’l Inc.,
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`1 See Federal Register Vol. 77, No. 157 at 48768.
`2
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`Case Number 1:15-cv-00079-RP, W.D. Texas and has settled. No other parties are
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`involved in the litigation.
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`3.
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`Related IPR Proceedings
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`The Parties are also involved in the following IPR proceedings, and pursuant
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`to the Settlement Agreement, have already submitted a joint motion to terminate
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`both IPR2016-01093 and IPR 2016-01605.
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`Case No.
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`IPR2016-01093
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`IPR2016-01475
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`Filing Date
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`May 24, 2016
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`July 21, 2016
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`Subject Patent
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`US 8,509,954
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`US 8,174,381
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`For the foregoing reasons, the Parties jointly request termination of IPR No.
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`IPR2016-01605.
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`Respectfully submitted,
`
`/Bruce J. Rose/
`Bruce J. Rose, Reg. No. 37,431, for
`Petitioner, Honeywell International Inc.
`
`/John S. Artz/
`John S. Artz, Reg. No. 36,431, for
`Patent Owner, Allure Energy, Inc.
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`Date: May 4, 2017
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`Date: May 4, 2017
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`3
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`HONEYWELL INTERNATIONAL INC.,
`Petitioner
`
`v.
`
`ALLURE ENERGY, INC.,
`Patent Owner
`____________
`
`Case IPR2016-01605
`Patent 8,498,749
`____________
`
`
`
`JOINT REQUEST TO FILE SETTLEMENT AGREEMENT AS BUSINESS
`CONFIDENTIAL INFORMATION PURSUANT TO 35 U.S.C. § 317
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`Pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), Petitioner,
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`
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`Honeywell International Inc., and Patent Owner, Allure Energy, Inc., (collectively,
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`“Parties”) jointly request to file the Settlement Agreement, including the entirety of
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`the Exhibit to the Joint Motion To Terminate Proceeding, as business confidential
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`information, which shall be kept separate from the file of the involved patents.
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`Respectfully submitted,
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`/Bruce J. Rose/
`Bruce J. Rose, Reg. No. 37,431, for
`Petitioner, Honeywell International Inc.
`
`/John S. Artz/
`John S. Artz, Reg. No. 36,431, for
`Patent Owner, Allure Energy, Inc.
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`Date: May 4, 2017
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`Date: May 4, 2017
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`1
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 CFR § 42.6(e)(1), the undersigned certifies that on May 4,
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`2017, a complete and entire copy of:
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`JOINT MOTION TO TERMINATE PROCEEDING UNDER
`35 U.S.C. § 317
`
`JOINT REQUEST TO FILE SETTLEMENT AGREEMENT AS BUSINESS
`CONFIDENTIAL INFORMATION PURSUANT TO 35 U.S.C. § 317
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`were provided via email, to Petitioner by serving the email correspondence address
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`of record as follows:
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`Bruce J. Rose
`Alston & Bird LLP
`101 S. Tryon, Ste 4000
`Charlotte, NC 28280
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`Email: bruce.rose@alston.com, ben.pleune@alston.com,
`christopher.douglas@alston.com
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`
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`
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`BLOOMFIELD 39285-215 1824601v1
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`
`
`
`
`
`
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`/John S. Artz/
`John S. Artz
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`2
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