`571-272-7822
`
`Date Entered: May 5, 2017
`
`
`
`
`
`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 B2
`____________
`
`Before BART A. GERSTENBLITH, KEVIN W. CHERRY, and
`SCOTT C. MOORE Administrative Patent Judges.
`
`CHERRY, Administrative Patent Judge.
`
`
`DECISION
`Termination of Trial and Settlement
`35 U.S.C. § 317; 37 C.F.R. §§ 42.72, 42.74
`
`
`
`
`
`
`
`IPR2016-01605
`Patent 8,498,749 B2
`
`
`By an email dated April 25, 2017, we authorized Patent Owner Allure
`Energy, Inc. and Petitioner Honeywell International, Inc. (collectively, “the
`Parties”) to file a joint motion to terminate the instant proceeding
`accompanied by true copies of all their agreements in contemplation of
`termination and a joint request to treat the filed copies of those agreements
`as business confidential information under 37 C.F.R. § 42.74(c).
`On May 4, 2017, the Parties filed a Joint Motion to Terminate
`Proceeding Under 35 U.S.C. § 317 (Paper 9, 1–4), a copy of a written
`Settlement Agreement (Paper 10), and a Joint Request to File Settlement
`Agreement as Business Confidential Information Pursuant to 35 U.S.C.
`§ 317 (Paper 9, 5–6).
`The Parties indicate that they have settled their underlying dispute and
`have agreed to terminate this proceeding pursuant to the Settlement
`Agreement, a true and correct copy of which they have filed with their
`Motion. Paper 9, 1–2. The Parties further indicate that there are no other
`proceedings concerning the subject patent; that the Settlement Agreement
`was duly executed by the Parties on April 13, 2017; that the Settlement
`Agreement is the entire and complete settlement agreement between the
`Parties; and that, beyond the Settlement Agreement, there are no other
`agreements relating to this proceeding. Id. at 1.
`Generally, 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. 48,756, 48,768 (Aug. 14, 2012). Although trial has
`been instituted, we have not decided the merits of the proceeding. See
`35 U.S.C. § 317(a) (“An inter partes review instituted under this chapter
`shall be terminated with respect to any petitioner upon the joint request of
`2
`
`
`
`
`IPR2016-01605
`Patent 8,498,749 B2
`
`
`the petitioner and the patent owner, unless the Office has decided the merits
`of the proceeding before the request for termination is filed.”); 37 C.F.R.
`§ 42.72 (“The Board may terminate a trial without rendering a final written
`decision, where appropriate . . . .”). We are persuaded that, under these
`circumstances, termination of this proceeding is appropriate.
`This paper does not constitute a final written decision pursuant to
`35 U.S.C. § 318(a).
`Accordingly, it is
`ORDERED that the Parties’ Joint Motion to Terminate Proceeding
`Under 35 U.S.C. § 317 (Paper 9, 1–4) is granted;
`FURTHER ORDERED that the Parties’ Joint Request to File
`Settlement Agreement as Business Confidential Information Pursuant to
`35 U.S.C. § 317 (Paper 9, 5–6) is granted;
` FURTHER ORDERED that the Settlement Agreement (Paper 10)
`shall be kept separate from the file of the above-referenced patent, pursuant
`to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c); and
`FURTHER ORDERED that this trial is terminated.
`
`3
`
`
`
`
`
`
`4
`
`
`IPR2016-01605
`Patent 8,498,749 B2
`
`For Petitioner:
`
`Bruce J. Rose
`S. Benjamin Pleune
`Christopher TL Douglas
`ALSTON & BIRD LLP
`bruce.rose@alston.com
`ben.pleune@alston.com
`christopher.douglas@alston.com
`
`
`
`For Patent Owner:
`John Artz
`Bryan Schomer
`DICKINSON WRIGHT, PLLC
`jsartz@dickinsonwright.com
`bschomer@dickinsonwright.com
`
`
`
`
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