`571-272-7822
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`Paper No 21
`Entered: October 17, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`UNIFIED PATENTS INC.
`Petitioner,
`
`v.
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`GLOBAL EQUITY MANAGEMENT (SA) PTY. LTD.
`Patent Owner.
`
`
`Case IPR2017-01467
`U.S. Patent 6,690,400 B1
`
`
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`Before KARL D. EASTHOM, MATTHEW R. CLEMENTS, and
`KEVIN C. TROCK, Administrative Patent Judges.
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`TROCK, Administrative Patent Judge
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`DECISION
`Termination of the Proceeding
`37 C.F.R. § 42.74
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`IPR2017-01467
`U.S. Patent 6,690,400 B1
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`Petitioner filed a petition requesting inter partes review of U.S. Patent
`No. 6,690,400 (“the ’400 patent”) on May 30, 2017 (Paper 2). Patent Owner
`filed a preliminary response on September 6, 2017. Paper 6. We issued a
`decision instituting inter partes review of the ’400 patent on December 4,
`2017. Paper 7. On December 6, 2017, we issued a Scheduling Order (Paper
`8) setting a hearing for this case on August 31, 2018.
`On August 10, 2018, the Board received an email from counsel
`requesting permission to file a joint motion to terminate review of the ’400
`patent pursuant to 35 U.S.C. § 317 and 37 C.F.R. §§ 42.72, 42.74, and a
`joint motion to file a confidential settlement agreement as business
`confidential information. On August 14, 2018, we granted via email the
`parties’ request to file the joint motions. On August 15, 2018, the parties
`agreed via email to waive the August 31, 2018 hearing date.
`On August 22, 2018, the parties filed a Joint Motion to Terminate
`pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. § 42.71(a) (Paper 18) and a
`Joint Motion to File Settlement Agreement as Business Confidential
`Information under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) (Paper 19),
`accompanied by a copy of the settlement agreement (Ex. 1028).
`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.”
`Generally, the Board expects that a proceeding will terminate as to settling
`parties 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).
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`2
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`IPR2017-01467
`U.S. Patent 6,690,400 B1
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`The Board has not held a hearing in this proceeding and has not issued
`a final written decision resolving this proceeding on the merits. The parties
`indicate that the settlement agreement fully resolves this matter. Paper 18, 1.
`The Board is persuaded that, under these circumstances, it is appropriate to
`terminate this proceeding. Therefore, the joint motion to terminate the
`proceeding is GRANTED.
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`Accordingly, it is
`ORDERED that the joint motion to treat the settlement agreement (Ex.
`1028) as business confidential information and 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.
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`3
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`IPR2017-01467
`U.S. Patent 6,690,400 B1
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`FOR PETITIONER:
`Vincent J. Galluzzo
`Teresa Stanek Rea
`CROWELL & MORING LLP
`vgalluzzo@crowell.com
`trea@crowell.com
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`FOR PATENT OWNER:
`Mark A. Cantor
`Richard J. Cantor
`BROOKS KUSHMAN P.C.
`mcantor@brookskushman.com
`rjcantor@brookskushman.com
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`4
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