`Tel: 571-272-7822
`
`
`Paper No. 14
`Entered: August 3, 2018
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNIFIED PATENTS INC.,
`Petitioner,
`
`v.
`
`QUANTUM STREAM INC.,
`Patent Owner.
`____________
`
`Case IPR2017-01672
`Patent 9,047,626 B2
`____________
`
`
`
`
`
`
`
`Before BARRY L. GROSSMAN, BEVERLY M. BUNTING, and
`RICHARD H. MARSCHALL, Administrative Patent Judges.
`
`MARSCHALL, Administrative Patent Judge.
`
`
`
`DECISION
`Granting Joint Motion to Terminate Proceeding
`35 U.S.C. § 317(a); 37 C.F.R. § 42.72
`Granting Joint Request to Treat Settlement Agreement
`as Business Confidential Information
`35 U.S.C. § 317(b); 37 C.F.R. § 42.74(c)
`
`
`
`
`IPR2017-01672
`Patent 9,047,626 B2
`
`
`
`
`Pursuant to our e-mail authorization on July 12, 2018, Petitioner,
`Unified Patents Inc., and Patent Owner, Quantum Stream Inc., filed a Joint
`Motion to Terminate Proceedings (Paper 12, “Joint Motion to Terminate”)
`and a Joint Motion to File Agreement as Business Confidential Information
`(Paper 13, “Joint Motion re Business Confidential”). Pursuant to 37 C.F.R.
`§ 42.74(b), the parties also filed what they represent is a true copy of their
`written settlement agreement (Ex. 1018, “Settlement Agreement”).
`In this proceeding, a Petition for Inter Partes Review of U.S. Patent
`No. 9,047,626 B2 (“the ’626 patent”) was filed on June 23, 2017 (“the
`Petition”). See Paper 2. We instituted an inter partes review on all
`challenged claims and grounds set forth in the Petition on January 16, 2018.
`See Paper 7. We have not issued a final written decision in this matter.
`In the Joint Motion to Terminate, the parties indicate that they have
`reached an agreement regarding their dispute involving the ’626 patent.
`Joint Motion to Terminate, 2. The parties certify that “[t]here are no
`collateral agreements or understandings made in connection with, or in
`contemplation of, the termination of this proceeding.” Id.
`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.” The
`parties indicate that termination as to both parties is appropriate here. As
`noted above, we have not rendered a final written decision on the merits. In
`view of the circumstances presented in this proceeding, we agree that
`termination is appropriate. Indeed, there are strong public policy reasons to
`favor settlement between the parties to a proceeding. Office Patent Trial
`
`
`
`IPR2017-01672
`Patent 9,047,626 B2
`
`Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). Accordingly,
`we determine that it is appropriate to terminate this proceeding without
`rendering a final written decision. See 37 C.F.R. § 42.72. Therefore, the
`Joint Motion is granted. This paper does not constitute a final written
`decision pursuant to 35 U.S.C. §§ 318(a).
`
`Accordingly, it is:
`ORDERED that the Joint Motion to File Agreement as Business
`Confidential Information (Paper 13), to treat the Settlement Agreement (Ex.
`1018) as business confidential information and kept separate from the file of
`U.S. Patent No. 9,047,626 B2, under the provisions of 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
`Proceedings (Paper 12) is granted, and this proceeding is hereby terminated.
`
`
`
`3
`
`
`
`IPR2017-01672
`Patent 9,047,626 B2
`
`For PETITIONER:
`David L. McCombs
`David O’Dell
`Raghav Bajaj
`HAYNES AND BOONE, LLP
`david.mccombs.ipr@haynesboone.com
`david.odell.ipr@haynesboone.com
`raghav.bajaj.ipr@haynesboone.com
`
`Roshan Mansinghani
`Jonathan Stroud
`roshan@unifiedpatents.com
`jonathan@unifiedpatents.com
`
`
`For PATENT OWNER:
`Gregory S. Gewirtz
`Jonathan A. David
`LERNER, DAVID, LITTENBERG, KRUMHOLZ & MENTLIK, LLP
`ggewirtz.ipr@ldlkm.com
`jdavid.ipr@ldlkm.com
`
`4
`
`
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