`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`SMITH & NEPHEW, INC. &
`ARTHROCARE CORPORATION
`Petitioners
`
`v.
`
`ARTHREX, INC.
`Patent Owner
`_____________
`
`Case No. IPR2016-00505
`Patent No. 8,343,186
`
`Case No. IPR2016-00506
`Patent No. 8,623,052
`
`Case No. IPR2016-00507
`Case No. IPR2016-00508
`Patent No. 8,801,755
`_____________
`
`SETTLEMENT AGREEMENT
`
`S&N Exhibit 1049
`S&N v. Arthrex
`IPR2016-00505
`
`
`
`
`
`
`
`
`
`This Settlement Agreement (“Agreement”) is entered into as of the date of
`
`the last signature below (the “Effective Date”) between Arthrex, Inc. (“Arthrex”), a
`
`corporation organized and existing under the laws of the State of Delaware having
`
`its principal place of business at 1370 Creekside Boulevard, Naples, Florida 34108,
`
`and Smith & Nephew, Inc. (“Smith & Nephew”), a corporation organized and
`
`existing under the laws of the State of Delaware having its principal place of
`
`business at 1450 Books Road, Memphis, Tennessee 38116 and ArthroCare
`
`Corporation (“ArthroCare”), a corporation organized and existing under the laws
`
`of the State of Delaware having its principal place of business at 7000 W. William
`
`Cannon Drive, Building 1, Austin, Texas 78735.
`
`RECITALS
`
`WHEREAS, Arthrex served Smith & Nephew and ArthroCare with a
`
`complaint alleging infringement of U.S. Patent Nos. 8,343,186, 8,623,052, and
`
`8,801,755 on June 25, 2015;
`
`WHEREAS, on January 27, 2016 Smith & Nephew and ArthroCare filed
`
`petitions to institute inter partes review of U.S. Patent Nos. 8,343,186, 8,623,052,
`
`and 8,801,755;
`
`WHEREAS, the Patent Trial and Appeal Board (“the Board”) instituted inter
`
`partes review trials against U.S. Patent Nos. 8,343,186, 8,623,052, and 8,801,755
`
`on July 27, 2016 (IPR Nos. 2016-00505, —00507, -00508) and August 2, 2016 (IPR
`
`No. 2016-00506);
`
`WHEREAS, pursuant to Federal Rule of Civil Procedure 41, Arthrex has
`
`dismissed with prejudice its allegations that Smith & Nephew and ArthroCare
`
`infringe one or more claims of U.S. Patent Nos. 8,343,186, 8,623,052, and
`
`8,801,755;
`
`
`
`WHEREAS, the parties jointly moved to sever U.S. Patent Nos. 6,214,031,
`
`6,511,499 and 7,195,634 (“the Corkscrew Patents”) from the cases Arthrex, Inc. v.
`
`Smith & Nephew et al., 2:15-cv~1047~RSP and 2:15-cv—l759-RSP and to stay
`
`litigation with respect to the Corkscrew Patents pending resolution of IPR Nos.
`
`2016—00483, -00484, —00485, —00486, —00487;
`
`WHEREAS, the district court granted the parties’ joint motion concerning
`
`the Corkscrew Patents;
`
`WHEREAS, the parties agree that if the Board issues a final written decision
`
`confirming one or more claim of a Corkscrew Patent that Arthrex elected in its
`
`August 15, 2016 Final Election of Claims, the parties will propose to the district
`
`court a pretrial schedule for such claim(s);
`
`WHEREAS, Smith & Nephew and ArthroCare withdrew their motion to
`
`strike Arthrex’s amended infringement contentions and amended expert reports in
`
`Arthrex, Inc. v. Smith & Nephew et al., 2:15-cv-1047-RSP and 2:15-CV-l759—RSP;
`
`WHEREAS, Smith & Nephew and ArthroCare withdrew their motion to
`
`stay in Arthrex, Inc. v. Smith & Nephew er al., 2:l5—cv-1047-RSP and 2: 15—cv-
`
`1759-RSP;
`
`WHEREAS, Smith & Nephew agreed that it will not seek to renew its
`
`motion to stay between now and the currently scheduled December 2016 trial date
`
`with respect to U.S. Patent Nos. 5,993,451, 6,629,977, 6,875,216, 7,322,986,
`
`8,821,541, and 9,179,907.
`
`NOW, THEREFORE, in consideration of the mutual promises, premises and
`
`covenants contained in this Agreement, the parties agree as follows:
`
`The parties will jointly request, pursuant to 35 U.S.C. § 317, that the Board
`
`terminate IPR Nos. 2016-00505, —00506, -00507, -00508 with respect to
`
`Petitioners Smith & Nephew and ArthroCare.
`
`
`
`This Agreement is the only agreement between the parties made in
`
`connection with, or in contemplation of, the termination of IPR Nos. 2016-00505, -
`
`00506, —O0507, and -00508.
`
`Smith & Nephew, Inc.
`and Ar hroC r
`
` By:
`
`Title: General Counsel
`
`Title: Associate General Counsel
`
`Intellectual Property
`
`Date:
`
`jollollflllfl
`
`Date:
`
`/a//a/;o/;
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