`571-272-7822
`
`
`Paper 8
`Entered: April 12, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UNIFIED PATENTS INC.,
`Petitioner,
`v.
`
`
`
`CHECKSUM VENTURES, LLC.,
`Patent Owner.
`_______________
`
`Case IPR2019-00491
`Patent 8,301,906 B2
`_______________
`
`
`Before RAMA G. ELLURU, CHARLES J. BOUDREAU, and
`STEPHEN E. BELISLE, Administrative Patent Judges.
`
`BELISLE, Administrative Patent Judge.
`
`
`
`ORDER
`Dismissing the Petition Pursuant to Settlement
`37 C.F.R. §§ 42.5(a), 42.71(a), 42.74
`
`
`
`On April 4, 2019, pursuant to Board authorization, Petitioner and
`
`Patent Owner filed a joint motion to dismiss the Petition prior to institution.
`
`Paper 6. Along with the motion, the parties filed a copy of a document
`
`described as a settlement agreement (Paper 6, 1; Ex. 1022), as well as a joint
`
`request to treat the settlement agreement as business confidential
`
`information and to have it be kept separate from the file of the involved
`
`
`
`IPR2019-00491
`Patent 8,301,906 B2
`
`patent (Paper 7; see 37 C.F.R. § 42.74(c) (a party to a settlement may
`
`request that the settlement agreement be treated as business confidential
`
`information and be kept separate from the patent file)).
`
`
`
`The case is in a preliminary stage. The Board has not yet issued a
`
`decision on whether to institute the proceeding. The parties state in the joint
`
`motion that they have settled their dispute and have reached agreement to
`
`dismiss the Petition. Paper 6, 1. The parties represent that Exhibit 1022 is
`
`“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. We are persuaded that,
`
`under these circumstances, it is appropriate to dismiss the Petition in the
`
`proceeding. 37 C.F.R. §§ 42.5(a), 42.71(a). This Order does not constitute a
`
`final written decision pursuant to 35 U.S.C. § 318(a).
`
`It is therefore
`
`
`
`ORDERED that the joint motion is granted and the Petition is
`
`dismissed in this proceeding; and
`
`
`
`FURTHER ORDERED that the joint request that the settlement
`
`agreement be treated as business confidential information, to be kept
`
`separate from the patent file, is granted in this proceeding.
`
`
`
`
`
`
`2
`
`
`
`IPR2019-00491
`Patent 8,301,906 B2
`
`For PETITIONER:
`
`P. Andrew Riley
`Robert A. Hall
`MEI & MARK LLP
`ariley@meimark.com
`rhall@meimark.com
`
`Roshan S. Mansinghani
`Jonathan Stroud
`UNIFIED PATENTS INC.
`roshan@unifiedpatents.com
`jbowser@unifiedpatents.com
`
`
`For PATENT OWNER:
`
`Richard A. Baker
`NEW ENGLAND INTELLECTUAL PROPERTY, LLC
`rbaker@newenglandip.com
`
`Alexander Pokot
`AP PATENTS
`alex@ap-patents.com
`
`
`
`3
`
`
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