`571-272-7822
`
`
`
`Paper 15
`Entered: February 3, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ANCESTRY.COM DNA, LLC,
`Petitioner,
`
`v.
`
`DNA GENOTEK INC.,
`Patent Owner.
`____________
`
`Case IPR2016-01152
`Patent 8,221,381 B2
`____________
`
`
`
`
`
`Before WILLIAM V. SAINDON, HYUN J. JUNG, and
`MICHELLE N. WORMMEESTER, Administrative Patent Judges.
`
`WORMMEESTER, Administrative Patent Judge.
`
`DECISION
`Granting Joint Motion to Terminate Proceeding and
`Dismissing Petitioner’s Request for Rehearing and Reconsideration
`37 C.F.R. § 42.72
`
`
`
`
`
`
`
`
`IPR2016-01152
`Patent 8,221,381 B2
`
`
`On February 1, 2017, the parties filed a joint motion to terminate the
`instant proceeding pursuant to a Settlement and License Agreement
`(“Settlement Agreement”). Paper 13. The parties also filed as Exhibit 2004
`a copy of their Settlement Agreement, made in connection with the
`termination of the instant proceeding, in accordance with 35 U.S.C. § 317(b)
`and 37 C.F.R. § 42.74(b). Paper 13, 1–2; Ex. 2004. The parties represent
`that Exhibit 2004 is “a true copy” of the Settlement Agreement. Paper 13, 1.
`In a concurrently filed paper, the parties jointly request that the
`Settlement Agreement be treated as business confidential information and be
`kept separate from the file of the involved patent. Paper 14.
`The Board denied institution of a trial on November 23, 2016.
`Paper 11. Petitioner subsequently filed a Request for Rehearing and
`Reconsideration on December 23, 2016. Paper 12. Under these
`circumstances, we will consider the parties’ joint motion to terminate to be a
`request to withdraw Petitioner’s Request for Rehearing and Reconsideration.
`Because the Petition was denied, the only outstanding request for rehearing
`has been withdrawn, and there is no remaining time for filing a request for
`rehearing, our denial of the petition (Paper 11) remains the final disposition
`of this case.
`
`Accordingly, it is
`ORDERED that the joint motion to terminate the instant proceeding is
`granted;
`FURTHER ORDERED that Petitioner’s Request for Rehearing and
`Reconsideration (Paper 12) is hereby deemed withdrawn;
`
`2
`
`
`
`IPR2016-01152
`Patent 8,221,381 B2
`
`
`FURTHER ORDERED that the parties’ joint request that the
`Settlement Agreement (Ex. 2004) be treated as business confidential
`information and be kept separate from the file of the involved patent is
`granted; and
`FURTHER ORDERED that the Settlement Agreement (Ex. 2004) be
`treated as business confidential information and be kept separate from the
`file of the involved patent, under 37 C.F.R § 42.74(c), and made available
`only under the provisions of 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).
`
`3
`
`
`
`FOR PETITIONER:
`
`Daniel Becker
`Jennifer R. Bush
`FENWICK & WEST LLP
`DBecker-PTAB@fenwick.com
`Jbush-ptab@fenwick.com
`
`FOR PATENT OWNER:
`
`Brian M. Kramer
`Peng Chen
`Desmond O'Sullivan
`MORRISON & FOERSTER LLP
`bmkramer@mofo.com
`pchen@mofo.com
`dosullivan@mofo.com
`
`