`Trials@uspto.gov
`Entered: December 14, 2017
`571-272-7822
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNIFIED PATENTS INC.,
`Petitioner,
`
`v.
`
`AUTOLOXER LLC,
`Patent Owner.
`____________
`
`Case IPR2017-01271
`Patent 7,084,735 B2
`____________
`
`Before JUSTIN T. ARBES, BRIAN J. McNAMARA, and
`SCOTT B. HOWARD, Administrative Patent Judges.
`
`HOWARD, Administrative Patent Judge.
`
`DECISION
`Termination of Trial
`35 U.S.C. § 317; 37 C.F.R. §§ 42.72, 42.74(c)
`
`
`
`
`IPR2017-01271
`Patent 7,084,735 B2
`
`
`On December 1, 2017, in response to a joint e-mail request made on
`November 30, 2017, we authorized the parties to file a joint motion to
`terminate the proceeding and a joint request that the settlement agreement be
`treated as business confidential information. Paper 9. Pursuant to that
`authorization, on December 5, 2017, the parties filed a Joint Motion to
`Terminate (Paper 11), a Joint Motion to Keep Confidential and Separate
`under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) (Paper 10), and a true
`copy of the parties’ settlement agreement (Ex. 1025).
`In the Joint Motion to Terminate, the parties represent that they “have
`entered into a written confidential settlement agreement that resolves this
`matter.” Paper 11, 1. The parties further represent that Exhibit 1025
`“represents a true and accurate copy of the agreement between the parties
`that resolves the present proceeding” and “that there are no other
`agreements, oral or written, between the parties made in connection with, or
`in contemplation of, the termination of the present proceeding.” Id. The
`parties further represent that “[t]here are no pending administrative
`adjudications or district court litigations asserting the patent-at-issue
`currently pending.” Id. at 3.
`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.”
`Although a Decision to Institute was entered on October 2, 2017
`(Paper 7), “[n]o substantive post-institution briefing has occurred,” “no
`depositions have been taken or scheduled,” and we have not entered a Final
`Written Decision on the merits. See Paper 11, 3.
`
`
`
`2
`
`
`
`IPR2017-01271
`Patent 7,084,735 B2
`
`
`The parties further indicate that termination of the proceeding would
`save significant additional expenditures of resources by the Board and the
`parties, and would further serve the purpose of inter partes review
`proceedings to provide an efficient and less costly alternative forum for
`patent disputes. Id. at 2–3. In view of the circumstances presented in this
`case, we agree. Indeed, there are strong public policy reasons to favor
`settlement between the parties to a proceeding. Office Patent Trial Practice
`Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). When, as here, we
`have not entered a Final Written Decision on the merits, we generally expect
`that trial will terminate after the filing of a settlement agreement. See id.
`Accordingly, we determine that it is appropriate to terminate trial without
`entering a Final Written Decision as to the patentability of claims 1–3, 5, 6,
`and 28 of U.S. Patent No. 7,084,735 B2. See 37 C.F.R. § 42.72.
`
`
`ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that the parties’ request to treat the settlement agreement
`(Ex. 1025) 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 the Joint Motion to Terminate this
`proceeding is GRANTED, and this proceeding is hereby terminated.
`
`
`
`3
`
`
`
`IPR2017-01271
`Patent 7,084,735 B2
`
`PETITIONER:
`David Cavanaugh
`Michael Van Handel
`WILMER CUTLER PICKERING HALE AND DORR LLP
`david.cavanaugh@wilmerhale.com
`michael.vanhandel@wilmerhale.com
`
`Jonathan Stroud
`Ashraf Fawzy
`UNIFIED PATENTS INC.
`jonathan@unifiedpatents.com
`afawzy@unifiedpatents.com
`
`
`PATENT OWNER:
`David Bennett
`DIRECTION IP LAW
`dbennett@directionip.com
`
`
`
`
`
`sl
`
`
`
`4
`
`
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