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Trials@uspto.gov
`571.272.7822
`
`
`
`
`
`Paper 39
`Entered: August 9, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`ILLUMINA, INC.,
`Petitioner,
`
`v.
`
`TRUSTEES OF COLUMBIA UNIVERSITY
`IN THE CITY OF NEW YORK,
`
`Patent Owner.
`____________
`
`IPR2020-00988 (Patent 10,407,458 B2)
`IPR2020-01065 (Patent 10,407,459 B2)
`IPR2020-01125 (Patent 10,457,984 B2)
`IPR2020-01177 (Patent 10,435,742 B2)
` IPR2020-01323 (Patent 10,428,380 B2)1
`____________
`
`Before SUSAN L. C. MITCHELL, ZHENYU YANG, JAMES A. WORTH,
`ROBERT A. POLLOCK, MICHELLE N. ANKENBRAND, and
`DEVON ZASTROW NEWMAN, Administrative Patent Judges.2
`
`PER CURIAM
`
`
`TERMINATION
`Due to Settlement After Institution of Trial
`35 U.S.C. § 317; 37 C.F.R. § 42.74
`
`1 This Order applies to each of the above-listed proceedings. We exercise
`our discretion to issue one Order to be filed in each proceeding. Unless
`otherwise authorized, the parties shall not use this heading style in any
`subsequent papers.
`2 This is not a decision by an expanded panel.
`
`

`

`IPR2020-00988 (Patent 10,407,458 B2)
`IPR2020-01065 (Patent 10,407,459 B2)
`IPR2020-01125 (Patent 10,457,984 B2)
`IPR2020-01177 (Patent 10,435,742 B2)
`IPR2020-01323 (Patent 10,428,380 B2)
`
`
`INTRODUCTION
`With the Board’s authorization, Petitioner and Patent Owner
`(collectively “the Parties”) filed a Joint Motion to Terminate the above-
`identified proceedings due to settlement. Paper 32 (“Joint Motion”).3 In
`support of the Joint Motion, the Parties filed a Confidential Settlement
`Agreement (Ex. 1169 (“2021 Settlement Agreement”)), as well as a Joint
`Request to File Settlement Agreement as Business Confidential Information
`pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) (Paper 33 (“Joint
`Request”)). In our Order mailed July 23, 2021, we denied, without
`prejudice, the Joint Motion and the Joint Request because the 2021
`Settlement Agreement refers to a collateral agreement, namely a 2017
`Settlement Agreement, that had not been filed with the Board. Paper 35, 3.
`The Parties have now filed a copy of the 2017 Settlement Agreement
`(Ex. 1170 (“2017 Settlement Agreement”)), as well as a Renewed Joint
`Motion to Terminate (Paper 37 (“Renewed Joint Motion”)) and Renewed
`Joint Request to File Settlement Agreement as Business Confidential
`Information (Paper 38 (“Renewed Joint Request”)).
`
`
`II. DISCUSSION
`Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under
`this chapter shall be terminated with respect to any petitioner upon the joint
`
`
`3 Unless otherwise noted, Paper and Exhibit numbers herein refer to
`IPR2020-00988. Similar papers and exhibits were filed in IPR2020-01065,
`IPR2020-01125, IPR2020-01177, and IPR2020-01323.
`
`2
`
`

`

`IPR2020-00988 (Patent 10,407,458 B2)
`IPR2020-01065 (Patent 10,407,459 B2)
`IPR2020-01125 (Patent 10,457,984 B2)
`IPR2020-01177 (Patent 10,435,742 B2)
`IPR2020-01323 (Patent 10,428,380 B2)
`
`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.”
`Section 35 U.S.C. § 317(a) also provides that if no petitioner remains in the
`inter partes review, the Office may terminate the review.
`In the Renewed Joint Motion, the Parties represent that they have
`reached an agreement to jointly seek termination of the above-identified
`inter partes reviews, and that the filed copies of the 2021 Settlement
`Agreement (Ex. 1169) and 2017 Settlement Agreement (Ex. 1170) constitute
`a true and complete copy of the agreement. Renewed Joint Motion 1. The
`Parties further represent that the 2021 Settlement Agreement and 2017
`Settlement Agreement resolve “all disputes between the parties” involving
`Patent 10,407,458 B2, Patent 10,407,459 B2, Patent 10,457,984 B2, Patent
`10,435,742 B2, and Patent 10,428,380 B2, including the pending Patent
`Office and District Court proceedings between the Parties. Id. at 1–2. The
`Parties further represent that “[n]o other petitioners remain in these inter
`partes review proceedings.” Id. at 1.
`We instituted trial in each of the above-identified proceedings
`between December 8, 2020 and January 13, 2021. IPR2020-00988, Paper
`20; IPR2020-01065, Paper 19; IPR2020-01125, Paper 20; IPR2020-01177,
`Paper 19; IPR2020-01323, Paper 17. We have not yet decided the merits of
`any of the above-identified proceedings, and no final written decision has
`been entered in any case. Notwithstanding that each proceeding has moved
`beyond the preliminary stage, the Parties have shown adequately that the
`termination of these proceedings is appropriate. Under these circumstances,
`
`3
`
`

`

`IPR2020-00988 (Patent 10,407,458 B2)
`IPR2020-01065 (Patent 10,407,459 B2)
`IPR2020-01125 (Patent 10,457,984 B2)
`IPR2020-01177 (Patent 10,435,742 B2)
`IPR2020-01323 (Patent 10,428,380 B2)
`
`we determine that good cause exists to terminate the above-identified
`proceedings with respect to the Parties.
`The Parties also filed a Renewed Joint Request that the 2021
`Settlement Agreement (Ex. 1169) and 2017 Settlement Agreement
`(Ex. 1170) each be treated as business confidential information and be kept
`separate from the file of the respective patents involved in these inter partes
`reviews. Renewed Joint Request 1. After reviewing the 2021 Settlement
`Agreement and 2017 Settlement Agreement between Petitioner and Patent
`Owner, we find that each agreement contains confidential business
`information regarding the terms of settlement. We determine that good
`cause exists to treat the 2021 Settlement Agreement (Ex. 1169) and 2017
`Settlement Agreement (Ex. 1170) between Petitioner and Patent Owner as
`business confidential information pursuant to 35 U.S.C. § 317(b) and 37
`C.F.R. § 42.74(c).
`This Order does not constitute a final written decision pursuant to
`35 U.S.C. § 318(a).
`
`
`III. ORDER
`Accordingly, for the reasons discussed above, it is:
`ORDERED that the Renewed Joint Motion to Terminate (Paper 37) is
`granted, and IPR2020-00988, IPR2020-01065, IPR2020-01125, IPR2020-
`01177, and IPR2020-01323 are terminated with respect to Petitioner and
`Patent Owner pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. § 42.72;
`
`4
`
`

`

`IPR2020-00988 (Patent 10,407,458 B2)
`IPR2020-01065 (Patent 10,407,459 B2)
`IPR2020-01125 (Patent 10,457,984 B2)
`IPR2020-01177 (Patent 10,435,742 B2)
`IPR2020-01323 (Patent 10,428,380 B2)
`
`FURTHER ORDERED that the Renewed Joint Request (Paper 38) to
`
`File the 2021 Settlement Agreement (Ex. 1169) and 2017 Settlement
`Agreement (Ex. 1170) as Business Confidential Information is granted; and
`
`FURTHER ORDERED that the 2021 Settlement Agreement and 2017
`Settlement Agreement (IPR2020-00988, Ex. 1169 and 1170; IPR2020-
`01065, Ex. 1169 and 1170; IPR2020-01125, Ex. 1169 and 1170; IPR2020-
`01177, Ex. 1169 and 1170; and IPR2020-01323, Ex. 1169 and 1170) shall
`be kept separate from the files of Patent 10,407,458 B2, Patent 10,407,459
`B2, Patent 10,457,984 B2, Patent 10,435,742 B2, and Patent 10,428,380 B2
`and made available only to Federal Government agencies on written request,
`or to any person on a showing of good cause, pursuant to 37 C.F.R.
`§ 42.74(c).
`
`
`
`
`
`
`
`
`
`
`
`
`5
`
`

`

`IPR2020-00988 (Patent 10,407,458 B2)
`IPR2020-01065 (Patent 10,407,459 B2)
`IPR2020-01125 (Patent 10,457,984 B2)
`IPR2020-01177 (Patent 10,435,742 B2)
`IPR2020-01323 (Patent 10,428,380 B2)
`
`FOR PETITIONER:
`
`Kerry Taylor
`Nathanael R. Luman
`Michael L. Fuller
`William R. Zimmerman
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2kst@knobbe.com
`2nrl@knobbe.com
`2mlf@knobbe.com
`2wrz@knobbe.com
`
`
`FOR PATENT OWNER:
`
`John P. White
`Gary J. Gershik
`COOPER & DUNHAM LLP
`jwhite@cooperdunham.com
`ggershik@cooperdunham.com
`
`John D. Murnane
`Justin J. Oliver
`VENABLE LLP
`jdmurnane@venable.com
`joliver@venable.com
`
`6
`
`

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