`571-272-7822
`
`
`
`
`
` Paper No. 25
` Entered: April 18, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`VISIONSENSE CORP.,
`Petitioner,
`
`v.
`
`NOVADAQ TECHNOLOGIES INC.,
`Patent Owner.
`____________
`
`Case IPR2017-01426
`Patent 8,892,190 B2
`____________
`
`
`Before HYUN J. JUNG, MICHAEL L. WOODS, and
`AMANDA F. WIEKER, Administrative Patent Judges.
`
`JUNG, Administrative Patent Judge.
`
`
`
`
`ORDER
`The Record
`37 C.F.R. § 42.7
`
`Termination
`35 U.S.C. § 317 and 37 C.F.R. § 42.74
`
`
`
`
`
`
`
`
`
`
`IPR2017-01426
`Patent 8,892,190 B2
`
`
`I. THE RECORD
`As discussed in our Order (Paper 8), Paper 1 appears to be only a
`caption page for an attempted filing of a petition. Also, pursuant to the same
`Order, Petitioner has refiled Exhibits 1001–1016 in accordance with 37
`C.F.R. § 42.63 and refiled a “Declaration of David J. Langer, M.D.”
`(Paper 2) as Exhibit 1017. Petitioner certifies that the declaration and
`exhibits have been refiled with no changes other than those required by
`applicable rules. Paper 10.
`Further, pursuant to our Decision instituting inter partes review in this
`proceeding (Paper 12), Petitioner has filed the original application related to
`Exhibit 1004 and an affidavit attesting to the accuracy of Exhibit 1004.
`Paper 14.
`Accordingly, Papers 1 and 2 and originally filed Exhibits 1001–1016
`will be expunged.
`
`
`II. TERMINATION
`After obtaining authorization from the Board, the parties filed a Joint
`Motion to Terminate Proceeding Pursuant to 35 U.S.C. § 317(a). Paper 23.
`The parties indicate that they “have since settled their dispute, and agreed to
`terminate this inter partes review of the ’190 Patent.” Id. at 1. The parties
`also represent that “a true copy of the Settlement Agreement is being
`submitted concurrently herewith as Exhibit 2006,” and the “parties certify
`that there are no other agreements, oral or written, between the parties made
`
`
`
`2
`
`
`
`IPR2017-01426
`Patent 8,892,190 B2
`
`in connection with, or in contemplation of, the termination of this inter
`partes review.” Id.
`Concurrent with the filing of the joint motion and Exhibit 2006, the
`parties filed a Joint Request that the Settlement Agreement Filed Separately
`as Exhibit 2006 Be Treated as Business Confidential Information and Be
`Kept Separate from the Files. Paper 24; see also Paper 23, 2 (identifying the
`joint request). The parties understand that the settlement agreement can be
`made available only to Federal Government agencies upon written request or
`to any person on a showing of good cause pursuant to 35 U.S.C. § 317(b)
`and 37 C.F.R. § 42.74(c). Paper 23, 2; Paper 24, 1.
`“An inter partes review instituted under this chapter shall be
`terminated with respect to any petitioner upon the joint request of the
`petitioner and the patent owner, unless the Office has decided the merits of
`the proceeding before the request for termination is filed.” 35 U.S.C.
`§ 317(a). A decision on the merits of the proceeding has not yet been made,
`and thus, under these circumstances, we determine it is appropriate to
`terminate the inter partes review in IPR2017-01426 and grant the parties’
`joint motion. Also, we grant the parties’ joint request, and the agreement
`filed will be treated as business confidential information and be kept
`separate from the patent file. 37 C.F.R. § 42.74(c).
`
`
`III. ORDER
`
`It is
`ORDERED that Papers 1 and 2 be expunged;
`FURTHER ORDERED that originally submitted Exhibits 1001–1016,
`filed on May 11, 2017, be expunged;
`
`
`
`3
`
`
`
`IPR2017-01426
`Patent 8,892,190 B2
`
`
`FURTHER ORDERED that the parties’ Joint Request that the
`Settlement Agreement Filed Separately as Exhibit 2006 Be Treated as
`Business Confidential Information and Be Kept Separate from the Files
`(Paper 24) is granted; and
`FURTHER ORDERED that the parties’ Joint Motion to Terminate
`Proceeding Pursuant to 35 U.S.C. § 317(a) (Paper 23) is granted.
`
`
`
`PETITIONER:
`Joseph M. Casino
`Abraham Kasdan
`WIGGIN AND DANA LLP
`jcasino@wiggin.com
`akasdan@wiggin.com
`
`
`PATENT OWNER:
`Jonathan Bockman
`Matthew I. Kreeger
`Christopher Gloria
`Kenneth A. Kuwayti
`MORRISON & FOERSTER LLP
`JBockman@mofo.com
`MKreeger@mofo.com
`CGloria@mofo.com
`KKuwayti@mofo.com
`57767-190-IPR@mofo.com
`
`
`
`4
`
`
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