`571-272-7822
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` Paper 8
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`
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` Entered: January 9, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`STATE FARM MUTUAL AUTOMOBILE INSURANCE COMPANY,
`Petitioner,
`v.
`PLANO ENCRYPTION TECHNOLOGIES, LLC,
`Patent Owner.
`____________
`
`Cases IPR2017-01721 (Patent 5,991,399),
` IPR2017-01783 (Patent 5,974,550)1
`____________
`
`
`
`Before JONI Y. CHANG, ANNETTE R. REIMERS, and
`MICHELLE N. WORMMEESTER, Administrative Patent Judges.
`
`CHANG, Administrative Patent Judge.
`
`
`
`JUDGMENT
`Termination of Proceeding
`37 C.F.R. § 42.73
`
`
`
`
`
`
`1 This Order addresses the same issues in both above-identified proceedings.
`Therefore, we exercise our discretion to issue one Order to be entered in
`each proceeding.
`
`
`
`IPR2017-01721 (Patent 5,991,399)
`IPR2017-01783 (Patent 5,974,550)
`
`
`On January 5, 2018, Petitioner, State Farm Mutual Automobile
`Insurance Company (“State Farm”), and Patent Owner, Plano Encryption
`Technologies LLC (“Plano”), filed a Joint Motion to Terminate in each
`above-identified proceeding. Paper 7 (“Mot.”).2 The parties also filed a true
`copy of their Written Settlement Agreement, made in connection with the
`termination of these proceedings. Ex. 1019. For the reasons stated below,
`the Joint Motions to Terminate are granted.
`Generally, the Board expects that a proceeding will terminate after the
`filing of a settlement agreement. See Office Patent Trial Practice Guide, 77
`Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). Here, in the Joint Motions to
`Terminate, the parties represent that they have reached a settlement that
`resolves all disputes between the parties as to the involved patents.
`Mot. 2−3. In particular, the district court proceedings3 related to the instant
`proceedings have been dismissed. Id. at 3; Ex. 1020.
`State Farm filed its Petition on July 14, 2017 (Paper 1), and Plano
`filed its Patent Owner Preliminary Response on November 7, 2017 (Paper
`6). However, the Board has not decided whether to institute a review. Even
`if the Board institutes a review and commences a trial, State Farm will no
`longer participate. That means even if a review is instituted, State Farm will
`
`
`2 All citations are to IPR2017-01783, as representative.
`3 Plano Encryption Techs., LLC v. Alkami Tech., Inc., Case Nos. 2:16-cv-
`1032-JRG (Lead Case) and 2:16-cv-01072-JRG (Consolidated Case) (E.D.
`Tex.) that asserted infringement of U.S. Patent Nos. 5,974,550 and
`5,991,399.
`
`2
`
`
`
`IPR2017-01721 (Patent 5,991,399)
`IPR2017-01783 (Patent 5,974,550)
`
`not file a reply to any patent owner response or an opposition to any motion
`to amend claims. State Farm also will not be conducting any cross
`examination of Plano’s witnesses. In addition, Plano may not have an
`opportunity to cross examine State Farm’s witness whose testimony is relied
`upon by State Farm’s Petition.
`As no trial has been instituted based on State Farm’s Petition, the
`instant proceeding is in the preliminary proceeding stage. Based on the
`particular facts of this case, it is appropriate to enter judgment.
`In consideration of the foregoing, it is:
`ORDERED that the Joint Motions to Terminate in IPR2017-01721
`
`and IPR2017-01783 are granted;
`FURTHER ORDERED that the above-identified proceedings hereby
`are terminated as to all parties including State Farm and Plano; and
`FURTHER ORDERED that a copy of this Judgment be entered into
`the record of each above-identified proceeding.
`
`
`
`
`
`
`
`
`3
`
`
`
`IPR2017-01721 (Patent 5,991,399)
`IPR2017-01783 (Patent 5,974,550)
`
`For PETITIONER:
`R. William Beard, Jr.
`Jerry F. Suva
`Truman H. Fenton
`SLAYDEN GRUBERT BEARD PLLC
`wbeard@sgbfirm.com
`jsuva@sgbfirm.com
`tfenton@sgbfirm.com
`
`
`
`For PATENT OWNER:
`Bradley D. Liddle
`bdliddle@gmail.com
`
`Andy Han
`Han IP Corporation
`andyh@hansantos.com
`
`4
`
`
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