Pay-Plus Solutions, Inc.v.STONEEAGLE SERVICES, INC.

Patent Trial and Appeal Board

Oct 5, 2015

13715053 (P.T.A.B. Oct. 5, 2015)

Trials@uspto.gov Paper 15
571-272-7822 Entered: October 5, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

PAY-PLUS SOLUTIONS, INC.,
Petitioner,

v.

STONEEAGLE SERVICES, INC.,
Patent Owner.
_______________

Case IPR2015-00569
Patent RE44,748 E
_______________

Before MEREDITH C. PETRAVICK, JAMES P. CALVE, and
JAMES B. ARPIN, Administrative Patent Judges.

ARPIN, Administrative Patent Judge.

ORDER
Termination of the Proceeding
37 C.F.R. § 42.74

Pursuant to our e-mail authorization, on October 1, 2015, the parties filed a
Joint Motion to Terminate Proceedings (Paper 13, “Joint Mot.”) pursuant to 35
U.S.C. § 317(a), as well as 37 C.F.R. §§ 42.72 and 42.74(a). Contemporaneously,
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pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), the parties filed a Joint
Motion to File Settlement Agreement as Business Confidential Information (Paper
14), including true copies of a Settlement Agreement, License Agreement, and
Non-Disclosure Agreement.
Although we issued an Institution Decision (Paper 8) on July 31, 2015; we
are at an early stage in this proceeding, and none of Due Dates 1–7 set forth in the
Scheduling Order (Paper 9) has passed. The parties previously have identified a
related, co-pending U.S. litigation between the parties (Paper 1, 1; Paper 5, 2) and
now inform us that the Settlement Agreement “resolv[es] the dispute in [this
proceeding] and the potential appeal of the district court judgment regarding this
patent between the parties. No on-going or other litigation or proceeding involving
the subject patent is contemplated in the foreseeable future.” Joint Mot. 2.
Further, the parties “certify that there are no collateral agreements or
understandings made in connection with, or in contemplation of, the termination of
this [proceeding].” Id. Thus, we understand that the filed agreements settle all
disputes between the parties with respect to this proceeding. Under these
circumstances, we determine that good cause exists to terminate this proceeding,
without rendering a final written decision.
ORDER
Accordingly, it is
ORDERED that the Joint Motion to Terminate is granted;
FURTHER ORDERED that Joint Motion to File Settlement Agreement as
Business Confidential Information is granted;
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FURTHER ORDERED that the Joint Motion to File Settlement Agreement
as Business Confidential Information (Paper 14), including the Settlement
Agreement, License Agreement, and Non-Disclosure Agreement, shall be treated
as business confidential information, to be kept separate from the patent file;
FURTHER ORDERED that the parties shall file a redacted version of the
Joint Motion to File Settlement Agreement as Business Confidential Information
(Paper 14), omitting copies of the business confidential agreements; and
FURTHER ORDERED that the case is terminated.

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PETITIONER:

Michael S. Pavento
Russell A. Korn
KILPATRICK TOWNSEND & STOCKTON LLP
mpavento@kilpatricktownsend.com
rkorn@kilpatricktownsend.com

PATENT OWNER:

Andriy Lytvyn
Anton J. Hopen
SMITH & HOPEN, P.A.
andriy.lytvyn@smithhopen.com
anton.hopen@smithhopen.com