UniKey Technologies, Inc.v.ASSA ABLOY AB

Patent Trial and Appeal Board

Oct 22, 2015

11397542 (P.T.A.B. Oct. 22, 2015)

Trials@uspto.gov Paper 10
Tel: 571-272-7822 Entered: October 22, 2015
UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

UNIKEY TECHNOLOGIES, INC.,
Petitioner
v.
ASSA ABLOY AB
Patent Owner

Cases1
IPR2015-01440 (7,706,778)
IPR2015-01441 (8,150,374)

Before RAMA G. ELLURU, BEVERLY M. BUNTING, and
CHRISTOPHER G. PAULRAJ, Administrative Patent Judges.
BUNTING, Administrative Patent Judge.

JUDGMENT
Termination of Proceedings
35 U.S.C. § 317(a) and 37 C.F.R. § 42.72

1 This Order addresses issues that are identical in both cases. We exercise
our discretion to issue one Order to be filed in each case. The parties are not
authorized to use this style heading for any subsequent papers.

IPR2015-01440 (7,706,778)
IPR2015-01441 (8,150,374)

2

On October 1, 2015, UniKey Technologies, Inc. and ASSA ABLOY
AB (collectively referred to as “the parties”) filed a joint motion to terminate
each of these proceedings pursuant to a settlement agreement. Paper 7.2
The parties also filed true copies of their written settlement agreement, made
in connection with the termination of these proceedings, in accordance with
35 U.S.C. § 317(b) and 37 C.F.R. § 42.72. Ex. 1007. Additionally, the
parties submitted joint requests to have their settlement agreement treated as
confidential business information under 35 U.S.C. § 317(b) and 37 C.F.R.
§ 42.74(c). Paper 8.
The parties submit that termination is appropriate because the parties
have settled their dispute and have reached agreement to terminate both of
these inter partes reviews. Paper 7 at 3. The parties represent that the
settlement agreement ends all patent disputes between the parties, including
their pending district court litigation, which was dismissed without
prejudice. Id.
The Parties are reminded that the Board is not a party to the
settlement, and may identify independently any question of patentability.
37 C.F.R. § 42.74(a). Generally, however, the Board expects that a
proceeding will terminate after the filing of a settlement agreement. See,
e.g., Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48768 (Aug.
14, 2012). These proceedings are still in the preliminary stages, and the
Board has not issued yet a decision to institute an inter partes review.
Under the circumstances, based on the record before us, we determine
that it is appropriate to terminate each of these proceedings with respect to

2 Paper and exhibit numbers refer to IPR2015-01440.
IPR2015-01440 (7,706,778)
IPR2015-01441 (8,150,374)

3

both Petitioner and Patent Owner, at this early juncture, to promote
efficiency and minimize unnecessary costs. Based on the facts, it is
appropriate to enter judgement terminating these proceedings without
rendering a final written decision and treat the settlement agreement as
business confidential information. See 35 U.S.C. § 317(a); 37 C.F.R.
§§ 42.72 and 42.74(c).

ORDER
In consideration of the foregoing, it is
ORDERED that the parties’ joint request that the settlement
agreement (Exhibit 1007) be treated as business confidential information
under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), to be kept separate from
the patent file, is GRANTED;
FURTHER ORDERED that the joint motions to terminate IPR2015-
01440 and IPR2015-01441 is GRANTED; and
FURTHER ORDERED that these proceedings are TERMINATED.

IPR2015-01440 (7,706,778)
IPR2015-01441 (8,150,374)

4

For PETITIONER:

Steven Bauer
Joseph Capraro
Gerald Worth
PROSKAUER ROSE LLP
PTABMattersBoston@proskauer.com
jcapraro@proskauer.com
gworth@proskauer.com

For PATENT OWNER:

Benjamin Deming
RUTAN & TUCKER, LLP
bdeming@rutan.com