`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
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`GENEDX, INC.
`Petitioners
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`v.
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`MYRIAD GENETICS, INC.
`Patent Owner
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`_____________________
`
`CASE IPR2014-01313
`Patent 6,051,379
`_____________________
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`JOINT MOTION TO TERMINATE PROCEEDING
`PURSUANT TO 35 U.S.C. § 317
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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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`JOINT MOTION TO TERMINATE PROCEEDING
`CASE IPR2014-01313
`Pursuant to 35 U.S.C. § 317 and 37 C.F.R. § 42.74, and pursuant to the
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`authorization to file this motion provided by the Board via email to the parties on
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`February 12, 2015, Petitioner GeneDx (“GeneDx”) and Patent Owner Myriad
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`Genetics (“Myriad”) jointly request termination of the Inter Partes Review of U.S.
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`Patent No. 6,051,379 Case IPR2014-01313.
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`Section 317 contemplates termination of inter partes review upon the joint
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`request of the petitioner and the patent owner, unless the Office has decided the
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`merits of the proceeding before the request for termination is filed. See 35 U.S.C.
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`§ 317.
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`The parties have settled their dispute and have reached agreement to
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`terminate this inter partes review and the parties' co-pending inter partes review
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`proceedings (IPR2014-01296; IPR2014-01298; IPR2014-01299; IPR2014-01301;
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`IPR2014-01310; IPR2014-01311; IPR2014-01312; IPR2014-01314; IPR2014-
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`01315; IPR2014-01316; IPR2015-00152; and IPR2015-00154). The parties'
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`settlement agreement has been made in writing, and a true and correct copy is
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`being filed with this Office as Exhibit 1031. Also being filed as Exhibit 1032 is a
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`copy of the Order from the U.S. District Court for the District of Utah granting the
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`parties’ Stipulation of Dismissal of that concurrent case pursuant to the settlement
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`agreement. The parties are also filing concurrently herewith a joint request to treat
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`the settlement agreement as business confidential information and keep it separate
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`- 2 -
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`JOINT MOTION TO TERMINATE PROCEEDING
`CASE IPR2014-01313
`from the files of the IPR and the involved patent pursuant to 35 U.S.C. § 317(b)
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`and 37 C.F.R. § 42.74(c).
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`Termination under Section 317 is appropriate since the Office has not yet
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`decided the merits of the proceeding. Indeed, this inter partes review has not been
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`instituted. GeneDx filed its petition for inter partes review on August 18, 2014.
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`No Motions or Petitions are outstanding in this proceeding. No other party’s rights
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`will be prejudiced by the termination of this inter partes review.
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`Accordingly, GeneDx and Myriad respectfully request termination of the
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`Inter Partes Review of U.S. Patent No. 6,051,379 Case IPR2014-01313.
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`Date: February 17, 2015
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`Respectfully submitted,
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`/Eldora L. Ellison/
`Eldora L. Ellison, Ph.D., Reg. No. 39,967
`STERNE, KESSLER, GOLDSTEIN & FOX PLLC
`1100 New York Avenue, N.W.
`Washington, DC 20005-3934
`(202) 371-2600
`Attorneys for Petitioner
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`
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`/Dorothy P. Whelan/
`Dorothy P. Whelan, Reg. No. 33,814
`J. Patrick Finn, III, Reg. No. 44,109
`FISH & RICHARDSON P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`(612) 288-9696
`Attorneys for Patent Owner
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`Date: /February 15, 2015/
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`- 3 -
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`CERTIFICATION OF SERVICE (37 C.F.R. §§ 42.6(e), 42.105(a))
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`The undersigned hereby certifies that the above-captioned “Joint Motion to
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`Terminate Proceeding Pursuant to 35 U.S.C. § 317,” along with Exhibits 1031 and
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`1032 was served in its entirety on February 17, 2015 upon the following counsel of
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`record for the Patent Owner via electronic delivery:
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`Dorothy P. Whelan
`J. Patrick Finn, III
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`whelan@fr.com
`IPR28496-0022IP1@fr.com
`
`
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`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`
`/Eldora L. Ellison/
`Eldora L. Ellison, Ph.D., Reg. No. 39,967
`Lead Attorney for Petitioner GeneDx, Inc.
`
`
`Date: February 17, 2015
`
`
`1100 New York Avenue, N.W.
`Washington, D.C. 20005 - 3934
`(202) 371-2600
`
`
`
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