IPR2016-00836

U.S. Patent 8,285,648

DOCKET NO.: 098173-1006063
Filed on behalf of Unified Patents Inc.
By: Paul C. Haughey, Reg. No. 31,836
Scott Kolassa, Reg. No. 55,337
Kilpatrick Townsend & Stockton LLP
Two Embarcadero Center, Eighth Floor
San Francisco, CA 941113834
Tel: (415) 5760200
Email: phaughey@kilpatricktownsend.com
Jonathan Stroud, Reg. No. 72,518
Kevin Jakel, Reg. No. 58,790
Unified Patents Inc.
1875 Connecticut Ave. NW, Floor 10
Washington, D.C., 20009
Tel: (202) 805-8931
Email: jonathan@unifiedpatents.com
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________________________________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________________________________
UNIFIED PATENTS INC.
Petitioner
v.
VERIFY SMART CORP.
Patent Owner
IPR2016-00836
Patent 8,285,648
JOINT MOTION TO TERMINATE
UNDER 35 U.S.C. 317(a)

IPR2016-00836
U.S. Patent 8,285,648
Pursuant to 35 U.S.C. 317(a), Petitioner Unified Patents Inc.
(Unified) and Patent Owner Verify Smart Corp. (Verify Smart) jointly
request termination of the Inter Partes Review of U.S. Patent 8,285,648, in
IPR201600836.
On June 20, the Parties informed the Board of the settlement and
requested a phone conference, if the Board so desired, requesting
authorization to file a joint motion to terminate the proceeding with respect
to both the Patent Owner and the Petitioner. The Board, on June 21,
authorized the filing of this requested joint motion to terminate this
proceeding as to both parties.
This inter partes review has not been instituted. Termination of this
IPR is appropriate as the Board has not yet decided the merits of the
proceeding. See, e.g., Office Patent Trial Practice Guide, 77 Fed. Reg.
48756, 48768 (Aug. 14, 2012). Unified filed its petition for inter partes
review on April 13, 2016. Verify Smart has not yet filed a response, which
would be due on July 22, 2016. The parties have now settled their dispute,
and have reached agreement to terminate this inter partes review.
This Settlement Agreement has been made in writing, and a true and
correct copy shall be filed with this Office as business confidential
information pursuant to 35 U.S.C. 317(b). As stated in 35 U.S.C. 317(a),

IPR2016-00836
U.S. Patent 8,285,648
because Unified and Verify Data Corp. request this termination as to
Petitioner Unified, no estoppel under 35 U.S.C. 315(e) shall attach to
Unified.
There has been no institution in this IPR. Ending this IPR early
promotes the Congressional goal of establishing a more efficient patent
system by limiting unnecessary and counterproductive costs. See Changes to
Implement

Inter

Partes

Review

Proceedings,

Post-Grant

Review

Proceedings, and Transitional Program for Covered Business Method

Patents, 77 Fed. Reg. 48,680 (Aug.14, 2012). Permitting termination as to all
parties provides certainty and fosters an environment that promotes
settlements, creating a timely, cost-effective alternative to litigation.
Therefore, Unified and Verify Smart respectfully request termination
of the Inter Partes Review of U.S. Patent No., Case No. IPR2016-00836.

Date: June 22, 2016

Respectfully submitted,
___________________________
Jonathan Stroud, Reg. No. 72,518
Chief Patent Counsel
Unified Patents Inc.