`571-272-7822
`
` Paper No. 12
` Entered: July 25, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`UBER TECHNOLOGIES, INC. and CHOICE HOTELS
`INTERNATIONAL, INC.
`Petitioners,
`
`v.
`
`FALL LINE PATENTS, LLC
`Patent Owner.
`____________
`
`Case IPR2018-00535
`Patent 9,454,748 B2
`____________
`
`Before MICHELLE N. WORMMEESTER, SHEILA F. McSHANE, and
`JOHN R. KENNY, Administrative Patent Judges.
`
`KENNY, Administrative Patent Judge.
`
`DECISION
`Termination of the Proceeding
`35 U.S.C. § 317 and 37 C.F.R. §§ 42.72, 42.74
`
`1
`
`Instacart, Ex. 1026
`
`
`
`IPR2018-00535
`Patent 9,454,748 B2
`
`DISCUSSION
`On July 11, 2018, in response to a joint email request from the parties,
`we authorized the parties to file a joint motion to terminate this case and a
`joint request to file their settlement agreements as business confidential
`information. In response, the parties filed a Joint Motion to Terminate
`Proceedings Pursuant to 35 U.S.C. § 317 and 37 C.F.R. § 42.74 (Paper 10,
`“Joint Mot.”) and a Joint Request to File Settlement Agreements as Business
`Confidential Information Under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c)
`(Paper 11). The parties also filed copies of their written settlement
`agreements under 37 C.F.R. § 42.74(b). Exs. 2001, 2002. For the reasons
`discussed below, the parties’ Joint Motion to Terminate and Joint Request to
`File the Settlement Agreements as Business Confidential Information are
`granted.
`In the Joint Motion to Terminate, the parties indicate that termination
`of this proceeding is appropriate because they have settled their disputes
`involving U.S. Patent No. 9,454,748 B2 (“the ’748 patent”). Joint Mot. 2.
`Further, the parties represent that all claims have been dismissed in the
`related litigations. Id. at 2–3. The parties also represent that there are no
`other litigations in which the ’748 patent is asserted, and the parties identify
`only IPR2018–00043, filed by Unified Patents, Inc., as a pending inter
`partes review proceeding challenging the ’748 patent. Id. at 3. Further, the
`parties represent that there are no other collateral agreements or
`understandings made that relate to the termination of this IPR. Id. at 2. And
`as the parties indicate, this proceeding is at an early stage, and trial has not
`been instituted. 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
`
`2
`
`
`
`IPR2018-00535
`Patent 9,454,748 B2
`
`request of the petitioner and patent owner, unless the Office has decided the
`merits of the proceeding before the request for termination is filed.” Further,
`under 37 C.F.R. § 42.74(b), “[a]ny agreement or understanding between the
`parties made in connection with, or in contemplation of, the termination of a
`proceeding shall be in writing and a true copy shall be filed with the Board
`before termination of the trial.”
`
`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, the proceeding is still in its
`preliminary stages and we have not entered a decision on whether or not to
`institute an inter partes proceeding, we generally expect that the proceeding
`will terminate after the filing of a settlement agreement. See id. Because the
`parties have filed their written settlement agreements, and the related district
`court litigations were dismissed, we determine that it is appropriate to
`terminate this proceeding. See 37 C.F.R. §§ 42.72, 42.74.
`
`
`II. ORDER
`
`Accordingly, it is:
`
`ORDERED that the parties’ request to treat the settlement agreements
`
`(Exs. 2001 and 2002) 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 parties’ Joint Motion to Terminate is
`GRANTED, and this proceeding is terminated.
`
`
`
`
`
`3
`
`
`
`IPR2018-00535
`Patent 9,454,748 B2
`
`For PETITIONER:
`
`Jonathan I. Detrixhe
`Gerard M. Donovan
`REED SMITH LLP
`jdetrixhe@reedsmith.com
`gdonovan@reedsmith.com
`
`For PATENT OWNER:
`Terry L. Watt
`CROWE & DUNLEVY
`terry.watt@crowedunlevy.com
`
`Matthew J. Antonelli
`Michael E. Ellis
`Larry D. Thompson, Jr.
`ANTONELLI, HARRINGTON & THOMPSON LLP
`matt@ahtlawfirm.com
`michael@ahtlawfirm.com
`larry@ahtlawfirm.com
`
`4
`
`
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