`
`Filed on behalf of:
`
`Petitioners Boston Scientific Corp. and Boston Scientific Scimed, Inc.
`
`By: David R. Marsh, Ph.D.
`
`Kristan L. Lansbery, Ph.D.
`
`ARNOLD & PORTER LLP
`555 12th Street, N.W.
`
`
`Washington, DC 20004
`
`Tel: (202) 942-5068
`
`Fax: (202) 942-5999
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`BOSTON SCIENTIFIC CORP. and
`BOSTON SCIENTIFIC SCIMED, INC.,
`
`Petitioners,
`
`v.
`
`VASCULAR SOLUTIONS, INC.,
`
`Patent Owner.
`_______________
`
`Case IPR2014-00760
`Patent 8,048,032
`
`_______________
`
`JOINT MOTION TO TERMINATE INTER PARTES REVIEW
`PURSUANT TO 35 U.S.C. § 317(a) AND 37 C.F.R. §§ 42.72 AND 42.74
`
`
`
`
`
`
`
`
`
`
`
`
`Pursuant to the Board’s Order of August 6, 2014 (see Paper 6), 35 U.S.C.
`
`§ 317(a), and 37 C.F.R. §§ 42.72 and 42.74, Petitioners Boston Scientific
`
`Corporation and Boston Scientific Scimed, Inc. (collectively, “Petitioners”) and
`
`Patent Owner Vascular Solutions, Inc. (“Patent Owner”) jointly and respectfully
`
`request termination by operation of settlement of IPR2014-00760, which is
`
`directed to U.S. Patent No. 8,048,032.
`
`Petitioners and Patent Owner respectfully submit that termination is
`
`appropriate in the instant proceeding because the parties have (1) reached a
`
`settlement agreement (i) to terminate the instant proceeding and (ii) resolving the
`
`disputes concerning the involved patents of the instant proceeding and related
`
`proceedings: U.S. Patent Nos. 8,048,032, 8,142,413, and 8,292,850 and (2) moved
`
`to terminate the instant proceeding prior to (i) Patent Owner’s preliminary response
`
`and (ii) institution of trial.
`
`The statuses of other matters concerning the involved patents are as follows:
`
`Case
`
`Status
`
`Related Proceeding: IPR2014-00759
`(U.S. Patent No. 8,142,413)
`Related Proceeding: IPR2014-00761
`(U.S. Patent No. 8,048,032)
`Related Proceeding: IPR2014-00762
`(U.S. Patent No. 8,292,850)
`Related Proceeding: IPR2014-00763
`(U.S. Patent No. 8,292,850)
`Related Litigation in the U.S. District
`Court for the District of Minnesota:
`
`A Joint Motion to Terminate is being
`filed concurrently herewith.
`A Joint Motion to Terminate is being
`filed concurrently herewith.
`A Joint Motion to Terminate is being
`filed concurrently herewith.
`A Joint Motion to Terminate is being
`filed concurrently herewith.
`The Settlement Agreement provides for
`dismissal of this litigation. A joint
`
`
`
`-1-
`
`
`
`
`
`stipulation of dismissal was filed with
`the U.S. District Court for the District of
`Minnesota on August 8, 2014.
`Pending
`
`Vascular Solutions, Inc. v. Boston
`Scientific Corp., No. 12-1172
`(JRT/SER) (May 16, 2013)
`Reissue Application for U.S. Patent No.
`8,292,850: Serial No. 14/070161
`Reissue Continuation Application for
`U.S. Patent No. 8,292,850: Serial No.
`14/195385
`Reissue Continuation Application for
`U.S. Patent No. 8,292,850: Serial No.
`14/195413
`Reissue Continuation Application for
`U.S. Patent No. 8,292,850: Serial No.
`14/195435
`
`Filed concurrently herewith as Exhibit 1042 is a true and complete copy of
`
`Pending
`
`Pending
`
`Pending
`
`the parties’ Settlement Agreement resolving the dispute in the instant proceeding,
`
`the four related Inter Partes Reviews, and the related district court litigation. The
`
`parties request that the Settlement Agreement be treated as business confidential
`
`information, kept separate from the files of involved U.S. Patent Nos. 8,048,032,
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`8,142,413, and 8,292,850, and made available only to Federal Government
`
`agencies on written request to the Board or to any person on a showing of good
`
`cause. Filed concurrently herewith is the parties’ Joint Request to File Settlement
`
`Agreement as Business Confidential Information Pursuant to 35 U.S.C. § 317(b)
`
`and 37 C.F.R. § 42.74(c).
`
`In accordance with 35 U.S.C. § 317(a), because Petitioners and Patent
`
`Owner jointly request this termination as to Petitioners, no estoppel under 35
`
`U.S.C. § 315(e) shall attach to Petitioners.
`
`
`
`-2-
`
`
`
`
`
`The parties respectfully and jointly request termination of the instant
`
`proceeding because of the foregoing reasons.
`
`
`Dated: August 8, 2014
`
`Respectfully submitted,
`
`
`
` By: /David R. Marsh/
`
`David R. Marsh, Ph.D.
`
`Kristan L. Lansbery, Ph.D.
`ARNOLD & PORTER LLP
`555 12th Street, N.W.
`Washington, DC 20004
`Tel:
`(202) 942-5068
`Fax: (202) 942-5999
`
`Attorneys for Petitioners
`
`/Kenneth E. Levitt/
`Kenneth E. Levitt
`DORSEY & WHITNEY LLP
`Suite 1500
`50 South Sixth Street
`Minneapolis, MN 55402
`Tel:
`(612) 340-2600
`Fax: (612) 340-2868
`
`Attorney for Patent Owner
`
`
`
`-3-
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies that copies of the foregoing Joint Motion to
`
`Terminate Inter Partes Review Pursuant to 35 U.S.C. § 317(a) and 37 C.F.R.
`
`§§ 42.72 and 42.74, Exhibit 1042, and Petitioners’ August 8, 2014 Updated Exhibit
`
`List were served on August 8, 2014 to the following Counsel for Patent Owner via
`
`e-mail, pursuant to the parties’ agreement concerning service:
`
`Kenneth E. Levitt, Lead Counsel
`DORSEY & WHITNEY LLP
`Suite 1500
`50 South Sixth Street
`Minneapolis, MN 55402
`VSI-BSC-IPR@dorsey.com
`
` and -
`
` -
`
`
`Brad D. Pedersen
`PATTERSON THUENTE PEDERSEN, P.A.
`4800 IDS Center
`80 South Eighth Street
`Minneapolis, MN 55402
`PRPS@ptslaw.com
`
`Attorneys for Patent Owner
`
`
`
`
`
`/David R. Marsh/
`David R. Marsh (Atty. Reg. No. 41,408)
`ARNOLD & PORTER LLP
`555 12th Street, N.W.
`Washington, D.C. 20004
`Tel: (202) 942-5068
`Fax: (202) 942-5999
`
`-4-
`
`
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