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