Paper No. 6
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`WATERS TECHNOLOGIES CORPORATION
`Petitioner,
`
`v.
`
`BIOMEDICAL DEVICE CONSULTANTS & LABORATORIES OF
`COLORADO, LLC
`Patent Owner.
`____________
`
`Case IPR2018-00498
`Patent 9,186,224
`____________
`
`
`
`JOINT MOTION TO TERMINATE PROCEEDING
`UNDER 35 USC §317(A) AND 37 CFR § 42.72 AND
`JOINT REQUEST THAT THE SUBMITTED SETTLEMENT
`AGREEMENT BE KEPT SEPARATE AS
`BUSINESS CONFIDENTIAL INFORMATION
`
`\WBD (US) 42717545v1
`
`
`
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`
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`WATERS TECHNOLOGIES CORPORATION
`Petitioner,
`
`v.
`
`BIOMEDICAL DEVICE CONSULTANTS & LABORATORIES OF
`COLORADO, LLC
`Patent Owner.
`____________
`
`Case IPR2018-00498
`Patent 9,186,224
`____________
`
`
`
`JOINT MOTION TO TERMINATE PROCEEDING
`UNDER 35 USC §317(A) AND 37 CFR § 42.72 AND
`JOINT REQUEST THAT THE SUBMITTED SETTLEMENT
`AGREEMENT BE KEPT SEPARATE AS
`BUSINESS CONFIDENTIAL INFORMATION
`
`\WBD (US) 42717545v1
`
`
`
`
`
`I.
`
`JOINT MOTION FOR TERMINATION OF THE REVIEW
`
`Under 35 USC § 317(a) and 37 CFR § 42.72, Petitioner, Waters
`
`Technologies Corporation, and Patent Owner, Biomedical Device Consultants &
`
`Laboratories of Colorado, LLC, (collectively, “the Parties”) jointly request to
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`terminate the present inter partes review, Case No. IPR2018-00498, challenging
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`US Patent No. 9,186,224 (the ‘224 Patent).
`
`As an initial matter, the Patent Trial and Appeal Board (hereinafter “the
`
`Board”) authorized the Parties to file by May 18, 2018, this joint motion for
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`termination and a request for treating the written settlement agreement as business
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`confidential information via a communication on May 11, 2018.
`
`Petitioner filed the present inter partes review petition on January 15, 2018.
`
`Patent Owner filed its preliminary response on April 27, 2018. The Board has not
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`yet issued a decision on institution.
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`Termination is appropriate at this time for the following reasons:
`
`The Parties have since settled their disputes, including those involving the
`
`‘224 Patent, and have reached agreement to terminate this inter partes review. A
`
`Settlement Agreement has been made in writing and was fully executed by the
`
`Parties on May 4, 2018. Complying with 35 USC §317(b) and 37 CFR § 42.74(b),
`
`a true copy of this Settlement Agreement is submitted concurrently herewith as
`
`1
`
`
`
`WBD (US) 42717545v1
`
`
`
`
`
`Exhibit 1019. No other such agreements, written or oral, exist between or among
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`the Parties. There are no other agreements, oral or written, between the Parties
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`made in connection with, or in contemplation of, the termination of this
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`proceeding.
`
`The Settlement Agreement also requires that the Patent Owner file a notice
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`of dismissal with prejudice of the related district court proceedings between the
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`Parties, specifically: Biomedical Device Consultants & Laboratories of Colorado,
`
`LLC v. TA Instruments – Waters LLC, 0:17-cv-03403-DWF-SER (D.Minn).
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`Patent Owner represents that there are no other pending district court actions
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`in which the ‘224 Patent has been asserted.
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`Finally, this joint request is proper because no final written decision on the
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`merits has been entered, and because no other parties remain in this inter partes
`
`review.
`
`II.
`JOINT REQUEST THAT THE SUBMITTED SETTLEMENT
`AGREEMENT BE KEPT SEPARATE AND TREATED AS BUSINESS
`CONFIDENTIAL INFORMATION
`
`Under 35 USC §317(b) and 37 CFR §42.74(c), the Parties also request that
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`the Settlement Agreement “be treated as business confidential information, [] be
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`kept separate from the file of the involved patents, 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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`2
`
`
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`WBD (US) 42717545v1
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`
`
`
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`good cause.” 317 USC §317(b). In view of this request, the Settlement Agreement
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`(Exhibit 1019) has been filed for access by the “Parties and Board Only.”
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`III. CONCLUSION
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`For the reasons above, the Parties jointly request that this motion be granted
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`pursuant to 35 USC §317 and 37 CFR §§ 42.72 through 42.74.
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`Dated: May 14, 2018
`
`Respectfully submitted,
`
`By: /Brad J. Hattenbach 29830/
`Brad J. Hattenbach
`Reg. No. 42,642
`Dorsey & Whitney LLP
`1400 Wewatta Ave., Suite 400
`Denver, CO 80202
`
`Counsel for Patent Owner
`
`
`
`By: /Deborah M. Vernon, Reg. No. 55,699/
`Deborah M. Vernon, PhD
`Reg. No. 55,699
`Womble Bond Dickinson (US) LLP
`Two International Place
`Boston, MA 02110
`
`Counsel for Petitioner
`
`3
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`
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`WBD (US) 42717545v1
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`
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`IPR2018-00498
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`
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`PETITIONER’S UPDATED
`LIST OF EXHIBITS
`
`
`Exhibit No.
`
`Short Name
`
`Description
`
`‘224 Patent US Patent No. 9,186,224 to McCloskey et al.
`
`Original
`Application
`
`USSN 14/523,104, filed on October 24, 2014
`
`Billiar
`
`Declaration of Prof. Billiar
`
`
`
`Curriculum Vitae of Prof. Billiar
`
`Office Action Office Action mailed March 20, 2015
`
`Interview
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`Interview Summary mailed May 14, 2015
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`Response
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`Amendment & Response Mailed June 17, 2015
`
`Allowance
`
`Notice of Allowance mailed September 17, 2015
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`Inventor
`Declaration
`
`Inventor Declaration dated May 10, 2013 (and
`filed with Response Mailed June 15, 2015)
`
`Pickard
`
`US Patent No. 4,682,491 to Pickard
`
`St. Jude
`
`US Patent No. 5,916,800 to Elizondo et al. and
`assigned to St. Jude [sic] Medical, Inc.
`
`Woodward
`
`US Patent No. 3,208,448 to Woodward
`
`Iwasaki
`
`Iwasaki et al., Implications for the Establishment
`of Accelerated Fatigue Test Protocols for
`Prosthetic Heart Valves, Artificial Organs Vol. 26
`No. 5:420-429 (2002).
`
`Reul et al., Durability/Wear Testing of Heart
`Valve Substitutes, J Heart Valve Dis Vol. 7, No. 2:
`151-157 (March 1998).
`
`1001
`
`1002
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`1003
`
`1004
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`1005
`
`1006
`
`1007
`
`1008
`
`1009
`
`1010
`
`1011
`
`1012
`
`1013
`
`1014
`
`Reul
`
`1015
`
`ISO 5840
`
`International Standard ISO 5840, Cardiovascular
`implants – Cardiac valve prostheses, Fourth
`
`WBD (US) 42717545v1
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`i
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`
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`1016
`
`
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`1017
`
`Girard
`
`IPR2018-00498
`
`Edition, (March 2005).
`
`Certificate of Service for Complaint in
`Biomedical Device Consultants & Laboratories of
`Colorado, LLC v. TA Instruments – Waters LLC,
`Civil No. 0:17-cv-03403 DWF-SER (D. Minn)
`
`Declaration of Michael Girard In Support of
`Motion for Preliminary Injunction in Civil No.
`0:17-cv-03403
`
`1018
`
`1019
`
`‘224 Claims Claims of US Patent No. 9,186,224
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`Settlement
`
`Settlement Agreement – executed on May 4,
`2018.
`
`WBD (US) 42717545v1
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`ii
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`
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`IPR2018-00498
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`CERTIFICATE OF SERVICE
`
`I hereby certify that, on May 14, 2018, I caused a true and correct copy of:
`
`• JOINT MOTION TO TERMINATE PROCEEDING
`UNDER 35 USC §317(A) AND 37 CFR § 42.72 AND JOINT
`REQUEST THAT THE SUBMITTED SETTLEMENT
`AGREEMENT BE KEPT SEPARATE AS
`BUSINESS CONFIDENTIAL INFORMATION
`
`• Exhibit 1019
`
`• Petitioner’s Updated Exhibit List
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`to be served via electronic mail at the following address provided by patent
`
`owner:
`
`
`
`Docketing-DV@dorsey.com
`
`BDC-WatersIPR@dorsey.com
`
`Dated: May 14, 2018
`
`/Tricia A. Troup/
`
`Tricia A. Troup, Paralegal
`Womble Bond Dickinson (US) LLP
`
`Certificate of Service
`
`
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