`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`
`ANCESTRY.COM DNA, LLC,
`
`Petitioner,
`
`v.
`
`DNA GENOTEK INC.,
`
`Patent Owner.
`
`Patent No. 8,221,381 B2
`
`
`Inter Partes Review No. IPR2016-01152
`
`
`
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`JOINT MOTION TO TERMINATE PROCEEDING
`PURSUANT TO 35 U.S.C. § 317(A)
`
`
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`sd-693919
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`
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`IPR2016-01152
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`
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`Docket No. 604140000013
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`Pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. §§ 42.72 & 42.74, DNA
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`GENOTEK INC. (“Patent Owner”) and ANCESTRY.COM DNA, LLC
`
`(“Petitioner”) jointly move for termination of the inter partes review of U.S. Patent
`
`No. 8,221,381 B2 (“the ’381 Patent”) in the above-captioned Case No. IPR2016-
`
`01152. This Joint Motion was authorized by the Board pursuant to its e-mail dated
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`February 1, 2017. In that correspondence, the Board deemed that it would treat
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`this Joint Motion as a request to withdraw Petitioner’s request for rehearing.
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`Petitioner filed its second petition for inter partes review of the ’381 Patent
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`on June 3, 2016 (Paper 1). Patent Owner filed a preliminary response on
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`September 9, 2016 (Paper 6). On November 23, 2016, the Board issued its
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`Decision Denying Institution (Paper 11). On December 23, 2016, Petitioner
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`requested rehearing (Paper 12). The parties have since settled their dispute, and
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`agreed to terminate this inter partes review of the ’381 Patent.
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`The parties’ Settlement Agreement has been made in writing and was
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`executed by Patent Owner on January 30, 2017, and by Petitioner on February 1,
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`2017. In accordance with 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b), a true copy
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`of the Settlement Agreement is being submitted concurrently herewith as Exhibit
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`2004. The parties certify that there are no collateral agreements or understandings,
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`oral or written, made in connection with, or in contemplation of, the termination of
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`this inter partes review, and that the Settlement Agreement reflects the final
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`sd-693919
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`1
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`IPR2016-01152
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`
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`Docket No. 604140000013
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`settlement and resolution of all disputes between Patent Owner and Petitioner
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`regarding this inter partes review.
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`Submitted concurrently herewith is a request by Patent Owner and Petitioner
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`that the Settlement and License Agreement be treated as business confidential
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`information, be kept separate from the file of the involved patents, and be made
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`available only to Federal Government agencies on written request, or to any person
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`on a showing of good cause pursuant to 35 U.S.C. § 317(b) and 37 C.F.R.
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`§ 42.74(c).
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`No other petitioners remain in this inter partes review, and no final written
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`decision on the merits has been entered. For at least these reasons, termination of
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`this inter partes review is proper under 35 U.S.C. § 317(a) and 37 C.F.R.
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`§ 42.74(a). Should this joint motion to terminate be denied, Petitioner would not
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`continue to participate in this proceeding.
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`As stated in 35 U.S.C. § 317(a) and 37 C.F.R. § 42.73(d), because Patent
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`Owner and Petitioner jointly request this termination, no estoppel under 35 U.S.C.
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`§ 315(e) shall attach to the Petitioner.
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`
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`sd-693919
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`2
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`IPR2016-01152
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`
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`Docket No. 604140000013
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`
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`Dated: February 1, 2017
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`Respectfully submitted,
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`By /s/ Jennifer R. Bush
`Jennifer R. Bush
`Reg. No. 50,784
`FENWICK & WEST LLP
`801 California Street
`Mountain View, CA 94041
`jbush-ptab@fenwick.com
`Telephone: 650-988-8500
`Facsimile: 650-938-5200
`
`Attorneys for Petitioner
` Ancestry.com DNA, LLC
`
`
`
`
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`Dated: February 1, 2017
`
`
`
`
`
`Respectfully submitted,
`
`By /s/ Brian M. Kramer
`Brian M. Kramer
`Registration No. 48,994
`MORRISON & FOERSTER LLP
`12531 High Bluff Drive, Suite 100
`BMKramer@mofo.com
`San Diego, CA 92130
`Tel: 858-314-5415
`Fax: 858-720-5125
`
`Attorneys for Respondent
`DNA Genotek Inc.
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`sd-693919
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`3
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`IPR2016-01152
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`Docket No. 604140000013
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`Certificate of Service (37 C.F.R. § 42.6(e)(4))
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`I hereby certify that the attached JOINT MOTION TO TERMINATE
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`PROCEEDING PURSUANT TO 35 U.S.C. § 317(a) was served as of the below
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`date by electronic mail, on the Petitioner at the following correspondence address:
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`DBecker-PTAB@fenwick.com
`Daniel M. Becker
`Jennifer R. Bush
`Fenwick & West LLP
`801 California Street
`Mountain View, CA 94041
`Tel: (650) 988-8500
`Fax: (650) 938-5200
`
`By /s/ Brian M. Kramer
`Brian M. Kramer
`
`
`
`
`
`Dated: February 1, 2017
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`
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`sd-693919
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`4
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