Phoenix Payment Systems, Inc.v.Protegrity Corporation

Patent Trial and Appeal Board

Jun 11, 2014

12916274 (P.T.A.B. Jun. 11, 2014)

Trials@uspto.gov Paper 9
Tel: 571-272-7822 Entered: June 11, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________
PHOENIX PAYMENT SYSTEMS, INC.
Petitioner
v.
PROTEGRITY CORP.
Patent Owner
_______________

Case CBM2014-00121
Patent 8,402,281 B2
_______________

Before MEREDITH C. PETRAVICK, TRENTON A. WARD, and
GREGG I. ANDERSON, Administrative Patent Judges.

PETRAVICK, Administrative Patent Judge.

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

INTRODUCTION
On June 9, 2014, the Board authorized, via email, the parties to file a
motion to terminate the instant proceedings. On June 10, 2014, the parties
filed a joint motion to terminate the instant proceeding (Paper 7), along with,
what they describe as a true copy of their written settlement agreement,
CBM2014-00121
Patent 8,402,281 B2

2
made in connection with the termination of the instant proceeding (Ex.
1010). The parties also filed a joint request to treat the settlement agreement
as business confidential information. Paper 8. For the reasons set forth
below, the motion and request is granted.

DISCUSSION
Under 35 U.S.C. § 327(a), “[a] post grant review instituted under this
chapter 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.” See 37
C.F.R. § 42.72. The parties are reminded that the Board is not a party to the
settlement, and may independently identify 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. 48,756, 48,768 (Aug.
14, 2012).
The parties filed a joint motion stating that they settled their dispute
and move to terminate this proceeding, pursuant to 35 U.S.C. § 327(a).
Paper 7 at 1. The parties filed what they describe as a true copy of their
written settlement agreement, made in connection with the termination of the
instant proceeding. Ex. 1010. The motion indicates that the parties also
reached an agreement to terminate the related district court case between the
parties. Paper 7 at 1 (citing Protegrity Corp. v. Phoenix Payment Sys., Inc.,
No. 3:13-cv-1386-VLB (D. Conn.). This proceeding is in the early stages,
as the Board has not issued a decision instituting a trial or a final decision.
CBM2014-00121
Patent 8,402,281 B2

3
Under these circumstances, it is appropriate to enter judgment1 terminating
this proceeding without rendering a final written decision.

CONCLUSION
It is:
ORDERED that the joint motion to terminate the proceeding is
GRANTED, and this proceeding is, hereby, terminated; and
FURTHER ORDERED that the parties’ joint request that the
settlement agreement (Ex. 1010) be treated as business confidential
information and kept separate from the file of the involved patent under 35
U.S.C. § 327(b) and 37 C.F.R. § 42.74(c) is GRANTED.

PETITIONER:
Patrick McPherson
Arvind Jairam
pdmcpherson@duanemorris.com
ajairam@duanemorris.com

PATENT OWNER:
Rajiv P. Patel
Robert R. Sachs
rpatel-ptab@fenwick.com
rsachs-ptab@fenwick.com

1 A judgment means a final written decision by the Board, or a termination
of a proceeding. 37 C.F.R. § 42.2.