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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`
`VISIONSENSE CORP.
`Petitioner,
`
`v.
`
`NOVADAQ TECHNOLOGIES ULC
`Patent Owner.
`
`Patent No. 8,892,190
`
`
`_______________
`
`
`
`Inter Partes Review No. IPR2017-01426
`____________________________________________________________
`
`JOINT MOTION TO TERMINATE PROCEEDING
`PURSUANT TO 35 U.S.C. § 317(A)
`
`
`
`va-514816
`
`
`
`IPR2017-01426
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`
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`Pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. §§ 42.72 & 42.74, Novadaq
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`Technologies ULC (“Patent Owner”) and Visionsense Corp. (“Petitioner”) jointly
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`move for termination of the inter partes review of U.S. Patent No. 8,892,190 (“the
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`’190 Patent”) in the above-captioned Case No. IPR2017-01426. This Joint Motion
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`was authorized by the Board pursuant to its e-mail dated April 16, 2018.
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`Petitioner filed its petition for inter partes review of the ’190 Patent on May
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`11, 2017 (Paper 1), however, only one page was filed. The Petitioner refiled the
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`petition on May 22, 2017 (Paper 4). Patent Owner filed a preliminary response on
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`August 23, 2017 (Paper 11). On November 16, 2017, the Board issued its
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`Institution Decision (Paper 12). The parties have since settled their dispute, and
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`agreed to terminate this inter partes review of the ’190 Patent.
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`The parties’ Settlement Agreement has been made in writing and was
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`executed by Patent Owner and Petitioner on April 16, 2018. In accordance with 35
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`U.S.C. § 317(b) and 37 C.F.R. § 42.74(b), a true copy of the Settlement Agreement
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`is being submitted concurrently herewith as Exhibit 2006. The parties certify that
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`there are no other agreements, oral or written, between the parties made in
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`connection with, or in contemplation of, the termination of this inter partes review,
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`and that the Settlement Agreement reflects the final settlement and resolution of all
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`disputes between Patent Owner and Petitioner regarding this inter partes review.
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`va-514816
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`1
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`IPR2017-01426
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`Submitted concurrently herewith is a request by Patent Owner and Petitioner
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`that the Settlement Agreement be treated as business confidential information, be
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`kept separate from the file of the involved patent, and be made available only to
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`Federal Government agencies on written request, or to any person on a showing of
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`good cause pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 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.
`
`Date: April 16, 2018
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`Respectfully Submitted,
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`
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`By: /Jon Bockman/
`Jonathan Bockman, Reg. No. 45,640
`Morrison & Foerster LLP
`1650 Tysons Boulevard, Suite 400
`McLean, VA 22102
`Tel: (703) 760-7769
`
`Attorney for Patent Owner Novadaq
`Technologies ULC
`
`
`
`
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`
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`va-514816
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`2
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`
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`IPR2017-01426
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`Date: April 16, 2018
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`
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`
`
`By: /Joseph M. Casino/
`Joseph M. Casino, Reg. No. 57,224
`Wiggin and Dana LLP
`450 Lexington Avenue
`Suite 3800
`New York, NY 10017
`Tel: (212)551-2842
`
`Attorney for Petitioner Visionsense Corp.
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`va-514816
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`3
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`IPR2017-01426
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`
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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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`
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`PROCEEDING PURSUANT TO 35 U.S.C. § 317(A) was served on the date listed
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`below via electronic mail upon the following counsel of record for Petitioner.
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`Joseph M. Casino
`Abraham Kasdan
`Wiggin and Dana LLP
`450 Lexington Avenue
`New York, NY 10017
`jcasino@wiggin.com
`akasdan@wiggin.com
`
`
`Dated: April 16, 2018
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`
`
`
`
`/Jon Bockman/
`Jonathan Bockman, Reg. No. 45,640
`
`
`
`va-514816
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`4
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