Joint Motion to Terminate, IPR2017-01271
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`U.S. Patent 7,084,735
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`CKET NO.: 2211726–00136US1
`Filed on behalf of Unified Patents Inc.
`By: David L. Cavanaugh, Reg. No. 36,476
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`Michael Van Handel, Reg. No. 68,292
`Wilmer Cutler Pickering Hale and Dorr LLP
`1875 Pennsylvania Ave., NW
`Washington, DC 20006
`Tel: (202) 663-6000
`Email: David.Cavanaugh@wilmerhale.com
`
`Jonathan Stroud, Reg. No. 72,518
`Ashraf Fawzy, Reg. No. 67,914
`Unified Patents Inc.
`1875 Connecticut Ave. NW, Floor 10
`Washington, D.C., 20009
`Tel: (202) 805-8931
`Email: jonathan@unifiedpatents.com
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________________________________
`
`UNIFIED PATENTS INC.
`Petitioner
`
`v.
`
`AUTOLOXER LLC
`
`IPR2017-01271
`U.S. Patent 7,084,735
`
`
`JOINT MOTION TO TERMINATE
`UNDER 35 U.S.C. § 317(a)
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`U.S. Patent 7,084,735
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`
`
`CKET NO.: 2211726–00136US1
`Filed on behalf of Unified Patents Inc.
`By: David L. Cavanaugh, Reg. No. 36,476
`
`Michael Van Handel, Reg. No. 68,292
`Wilmer Cutler Pickering Hale and Dorr LLP
`1875 Pennsylvania Ave., NW
`Washington, DC 20006
`Tel: (202) 663-6000
`Email: David.Cavanaugh@wilmerhale.com
`
`Jonathan Stroud, Reg. No. 72,518
`Ashraf Fawzy, Reg. No. 67,914
`Unified Patents Inc.
`1875 Connecticut Ave. NW, Floor 10
`Washington, D.C., 20009
`Tel: (202) 805-8931
`Email: jonathan@unifiedpatents.com
`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________________________________
`
`UNIFIED PATENTS INC.
`Petitioner
`
`v.
`
`AUTOLOXER LLC
`
`IPR2017-01271
`U.S. Patent 7,084,735
`
`
`JOINT MOTION TO TERMINATE
`UNDER 35 U.S.C. § 317(a)
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`Joint Motion to Terminate, IPR2017-01271
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`U.S. Patent 7,084,735
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`Pursuant to 35 U.S.C. § 317(a), Petitioner Unified Patents Inc.
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`(“Unified”) and Patent Owner Autoloxer LLC (“Autoloxer”) jointly requests
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`dismissal and termination of the inter partes review proceedings concerning
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`U.S. Patent 7,084,735 in IPR2017-01271.
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`Petitioner and Patent Owner have entered into a written confidential
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`settlement agreement that resolves this matter. The parties are concurrently
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`filing a copy of the settlement agreement as EX1025 along with a request to
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`treat it as confidential business information pursuant to 35 U.S.C. § 317(b).
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`The undersigned represents that there are no other agreements, oral or
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`written, between the parties made in connection with, or in contemplation of,
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`the termination of the present proceeding and that EX1025 represents a true
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`and accurate copy of the agreement between the parties that resolves the
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`present proceeding.
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`On November 30, 2017, the Parties informed the Board of the
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`settlement via e-mail and requested authorization to file a joint motion to
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`terminate the proceeding with respect to both the Patent Owner and the
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`Petitioner. As set forth in an Order entered on December 1, 2017, the Board
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`authorized the filing of the requested joint motion to terminate this
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`proceeding. Accordingly, Petitioner and Patent Owner jointly request
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`termination of the present proceeding.
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`Joint Motion to Terminate, IPR2017-01271
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`U.S. Patent 7,084,735
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`Public policy favors terminating the present inter partes review
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`proceeding. Congress and federal courts have expressed a strong interest in
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`encouraging settlement in litigation. See, e.g., Delta Air Lines, Inc. v.
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`August, 450 U.S. 346, 352 (1981) (“The purpose of [Fed. R. Civ. P.] 68 is to
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`encourage the settlement of litigation.”); Bergh v. Dept. of Transp., 794 F.2d
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`1575, 1577 (Fed. Cir. 1986) (“The law favors settlement of cases.”), cert.
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`denied, 479 U.S. 950 (1986). The Federal Circuit places a particularly strong
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`emphasis on settlement. See Cheyenne River Sioux Tribe v. U.S., 806 F.2d
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`1046, 1050 (Fed. Cir. 1986) (noting that the law favors settlement to reduce
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`antagonism and hostility between parties). And, the Board’s Trial Practice
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`Guide stresses that “[t]here are strong public policy reasons to favor
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`settlement between the parties to a proceeding.” Office Patent Trial Practice
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`Guide, 77 Fed. Reg. 48,756, 46,768 (Aug. 14, 2012).
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`Ending this IPR proceeding early promotes the Congressional goal of
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`establishing a more efficient patent system by limiting unnecessary and
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`counterproductive costs. See Changes to Implement Inter Partes Review
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`Proceedings, Post-Grant Review Proceedings, and Transitional Program for
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`Covered Business Method Patents, 77 Fed. Reg. 48,680 (Aug. 14, 2012).
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`Permitting termination provides certainty and fosters an environment that
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`Joint Motion to Terminate, IPR2017-01271
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`U.S. Patent 7,084,735
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`promotes settlements, creating a timely, cost-effective alternative to
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`litigation.
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`Additionally, termination of this IPR proceeding is appropriate as the
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`Board has not yet “decided the merits of the proceeding.” See, e.g., Office
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`Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48768 (Aug. 14, 2012).
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`Unified filed its petition for inter partes review on April 13, 2017. The
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`Board instituted inter partes review on October 10, 2017. The parties have
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`now settled their dispute, and have reached agreement to terminate this inter
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`partes review proceeding. No substantive post-institution briefing has
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`occurred, and no depositions have been taken or scheduled. The USPTO can
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`conserve its resources through terminating the proceedings now, removing
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`the need for the Board to further consider these and future arguments, hold a
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`hearing, and render a Final Decision. Furthermore, no other party’s rights
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`will be prejudiced by termination of this proceeding.
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`There are no pending administrative adjudications or district court
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`litigations asserting the patent-at-issue currently pending.
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`Joint Motion to Terminate, IPR2017-01271
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`U.S. Patent 7,084,735
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`Therefore, Unified and Autoloxer respectfully request termination of
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`this inter partes review proceeding concerning U.S. Patent 7,084,735
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`(IPR2017-01271).
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`Date: Dec. 5, 2017
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`Respectfully submitted,
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`___________________________
`Jonathan Stroud, Reg. No. 72,518
`Chief Patent Counsel
`Unified Patents Inc.
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`___________________________
`David Bennett, Reg. No. 43,493
`Direction IP Law
`Counsel for Autoloxer LLC
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`Joint Motion to Terminate, IPR2017-01271
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`U.S. Patent 7,084,735
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a copy of the foregoing Joint
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`Motion to Terminate the petition for inter partes review of U.S. Patent
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`7,084,735 was served on Dec. 5, 2017 via electronic mail directed to the
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`attorney of
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`record
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`for
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`the patent
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`at
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`the
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`following
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`address:
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`dbennett@directionip.com. Patent Owner has consented to electronic
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`service.
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`Date: Dec. 5, 2017
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`Respectfully submitted,
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`___________________________
`Jonathan Stroud
`Reg. No. 72,518
`jonathan@unifiedpatents.com
`Unified Patents Inc.
`1875 Connecticut Ave. NW, Floor 10
`Washington, D.C., 20009
`Tel: (202) 805-8931
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`5
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