Getty Images (Us), Inc.v.Uniloc USA, Inc.

Patent Trial and Appeal Board

Feb 17, 2016

10035347 (P.T.A.B. Feb. 17, 2016)

Trials@uspto.gov Paper No. 32
571.272.7822 Filed: February 17, 2016
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

PHOTOSHELTER, INC., AND VECTORSTOCK MEDIA LTD.
Petitioner,

v.

UNILOC USA, INC. AND UNILOC LUXEMBOURG S.A.,
Patent Owner.
____________

Case CBM2015-00023
Patent 7,099,849 B1
____________

Before MICHAEL P. TIERNEY, BENJAMIN D. M. WOOD, and
PATRICK R. SCANLON, Administrative Patent Judges.

TIERNEY, Administrative Patent Judge.

JUDGMENT
Termination of the Proceeding
37 C.F.R. § 42.73

Pursuant to 35 U.S.C. § 327(b) and 37 C.F.R. § 42.74, the parties filed
copies of settlement agreements (Exhibits 1033 and 1034) along with a joint
request to treat the settlement agreements as business confidential, to be
CBM2015-00023
Patent 7,099,849 B1

2
separate from the patent file (Paper 31). In addition, the parties filed a joint
motion to terminate the proceeding pursuant to 35 U.S.C. § 327. Paper 30.
The standard for settling a covered business method patent review is
set forth in 35 U.S.C. § 327(a), which provides that a review 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. Generally, the Board
expects that a proceeding will terminate after the filing of a settlement
agreement, if the settlement agreement includes all parties. See, e.g., Office
Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012).
The parties have filed such an agreement. Exs. 1033 and 1034. In their
accompanying motion to terminate, the parties indicate that they have settled
their dispute with regard to U.S. Patent No. 7,099,849, including the
underlying patent litigation between them.
Oral argument has not yet been held. Under these circumstances, we
are persuaded that it is appropriate to terminate this proceeding with respect
to both Petitioner and Patent Owner. Based on the facts of this case, it is
appropriate to enter judgment.1 Therefore, the joint motion to terminate the
proceeding is GRANTED.

1 A judgment means a final written decision by the Board, or a termination
of a proceeding. 37 C.F.R. § 42.2.
CBM2015-00023
Patent 7,099,849 B1

3
Accordingly, it is
ORDERED that the parties’ request that the settlement agreements be
treated as business confidential information, to be kept separate from the
patent file, is GRANTED;
FURTHER ORDERED that the joint motion to terminate the
proceeding is GRANTED;
FURTHER ORDERED that the proceeding is TERMINATED.

PETITIONER:
Paul Hickman
TECHNOLOGY & INTELLECTUAL PROPERTY STRATEGIES GROUP
PC
phickman@tipsgroup.com

PATENT OWNER:
Sean D. Burdick
Brett Mangrum
UNILOC USA, INC.
sean.burdick@unilocusa.com
brett.mangrum@unilocusa.com