Case IPR2013-00206; U.S. Patent No. 8,251,997
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________________
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`NUVASIVE, INC.
`Petitioner
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`v.
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`WARSAW ORTHOPEDIC, INC.
`Patent Owner
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`_____________________________
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`Case IPR2013-00206
`Patent No. 8,251,997
`_____________________________
`JOINT MOTION TO TERMINATE PROCEEDING PURSUANT
`TO 35 U.S.C § 317(A)
`JOINT NOTICE OF SETTLEMENT PURSUANT TO
`35 U.S.C. § 317(B) AND 37 C.F.R. § 42.74
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`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________________
`
`
`
`NUVASIVE, INC.
`Petitioner
`
`v.
`
`WARSAW ORTHOPEDIC, INC.
`Patent Owner
`
`_____________________________
`
`Case IPR2013-00206
`Patent No. 8,251,997
`_____________________________
`JOINT MOTION TO TERMINATE PROCEEDING PURSUANT
`TO 35 U.S.C § 317(A)
`JOINT NOTICE OF SETTLEMENT PURSUANT TO
`35 U.S.C. § 317(B) AND 37 C.F.R. § 42.74
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
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`Case IPR2013-00206; U.S. Patent No. 8,251,997
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`I. Relief Requested.
`Pursuant to 35 U.S.C. § 317(a) and (b), and as authorized by the Board in an
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`email dated April 4, 2017, Patent Owner, Warsaw Orthopedic, Inc. and Petitioner,
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`Nuvasive, Inc., provide notice that they have reached a settlement and jointly
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`request termination of the Inter Partes Review of U.S. Patent No. 8,251,997 (“’997
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`patent”), Case No. IPR2013-00206. The Parties request that the Board treat the
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`Settlement Agreement as business confidential information and keep it separate
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`from the file of the involved patent.
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`II. Statement of Reasons for the Relief Requested.
`The Parties have reached a Settlement Agreement regarding their disputes
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`relating to the ‘997 patent. Because the underlying dispute has been resolved, the
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`Parties submit that the present Inter Partes Review is ripe for termination. The
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`present Inter Partes Review is also at a procedural stage affording termination.
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`The present Inter Partes Review has been remanded to the Board from the U.S.
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`Court of Appeals for the Federal Circuit (“Federal Circuit”) in a Decision dated
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`August 9, 2016. Patent Owner has already briefed the Board on the issues forming
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`the basis of the remand. However, it is unnecessary for the Board to reach a
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`decision on these issues in view of the requested termination. Termination will at
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`the very least conserve the resources of the Board in considering these issues.
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`Case IPR2013-00206; U.S. Patent No. 8,251,997
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`III. Related Litigation and PTAB Proceedings.
`The Parties have settled the underlying litigation involving the ‘997 patent.
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`As indicated in Petitioner’s Petition for Inter Partes Review dated March 22, 2013
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`and Patent Owner’s Mandatory Notices dated May 12, 2013, the underlying
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`litigation was styled Warsaw Orthopedic, Inc. et al. v. NuVasive, Inc. (originally
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`filed in N.D. Ind. as Case No. 3:12-cv-00438-JD-CAN on Aug. 17, 2012, and
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`transferred to S.D. Cal. on Nov. 8, 2012, as Case No. 3:12-cv-02738-CAB (MDD)).
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`Patent Owner’s related corporate entities, Medtronic Sofamor Danek USA, Inc.,
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`Medtronic Puerto Rico Operations Co., and Medtronic Sofamor Danek Deggendorf,
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`GMBH, were subject to the underlying litigation as counterclaim defendants. As
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`part of the Settlement Agreement, Patent Owner submits that the underlying
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`litigation was also settled with respect to these related corporate entities.
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`In addition to Case No. IPR2013-00206, the ‘997 patent was also subject to
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`Case. No. IPR2013-00208. Case No. IPR2013-00208 was also subject to the
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`Decision dated August 9, 2016, and Patent Owner did not appeal the corresponding
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`findings of the Federal Circuit.
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`Patent Owner represents that no additional district court litigation is
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`currently pending involving the ‘997 patent.
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`Case IPR2013-00206; U.S. Patent No. 8,251,997
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`IV. Submission of the Settlement Agreement.
`Submitted concurrently with this Motion is a true copy of the Settlement
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`Agreement between the Parties (Ex. 2069), as required by 35 U.S.C. § 317(b) and
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`37 C.F.R. § 42.74(b).
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`The Parties jointly request that this Settlement Agreement be treated as
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`business confidential information and be kept separate from the file of the involved
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`patent, pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). Ex. 2069 is being
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`submitted concurrently having “availability” in the PTAB E2E system of “Parties
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`and Board Only” as advised in FAQ G2. The Parties jointly request that this
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`Settlement Agreement (Ex. 2069) be made available only to Federal Government
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`agencies on written request or to any person only on a showing of good cause.
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`V. Conclusion.
`For the reasons stated above, the Parties respectfully request that the Board
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`terminate Inter Partes Review of U.S. Patent No. 8,251,997, Case No. IPR2013-
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`00206.
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`Case IPR2013-00206; U.S. Patent No. 8,251,997
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`Dated: April 19, 2017
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`Respectfully submitted,
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`/Thomas H. Martin/
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`Thomas H. Martin
`Registration No. 34,383
`Attorney for Patent Owner
`MARTIN & FERRARO, LLP
`1557 Lake O’Pines Street, NE
`Hartville, Ohio 44632
`Telephone: (330) 877-0700
`Facsimile: (330) 877-2030
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`Dated: April 19, 2017
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`Respectfully submitted,
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`
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`/Michael T. Rosato/
`Michael T. Rosato
`Registration No. 52,182
`Attorney for Petitioner
`WILSON SONSINI
`GOODRICH & ROSATI
`701 Fifth Avenue, Suite 5100
`Seattle, WA 98104
`Telephone: (206) 883-2529
`Facsimile: (206) 883-2699
`Email: mrosato@wsgr.com
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`Case IPR2013-00206; U.S. Patent No. 8,251,997
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a copy of the JOINT MOTION TO
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`TERMINATE PROCEEDING PURSUANT TO 35 U.S.C. § 317(A) and JOINT
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`NOTICE OF SETTLEMENT PURSUANT TO 35 U.S.C. § 317(B) AND 37 C.F.R.
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`§ 42.74 was served in its entirety via electronic mail to the following:
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`Michael T. Rosato
`Wilson Sonsini Goodrich & Rosati
`701 Fifth Avenue
`Suite 5100
`Seattle, WA 98104-7036
`Email: mrosato@wsgr.com
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`Paul D. Tripodi II
`Wilson Sonsini Goodrich & Rosati
`633 West Fifth Street
`Suite 1550
`Los Angeles, CA 90071-2005
`Email: ptripodi@wsgr.com
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`Date of Service:
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`April 19, 2017
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`/Thomas H. Martin/
`Signature:
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`Thomas H. Martin, Reg. No. 34,383
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