Filed July 20, 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
`IPR2020-01065 Patent 10,407,459
`IPR2020-01125 Patent 10,457,984
`IPR2020-01177 Patent 10,435,742
`IPR2020-01323 Patent 10,428,380*
`
`
`
`
`
`
`
`
`
`
`
`JOINT MOTION TO TERMINATE
`PURSUANT TO 35 U.S.C. § 317 AND 37 C.F.R. § 42.74
`
`*This identical paper is being filed in each of the above five proceedings.
`
`
`
`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
`IPR2020-01065 Patent 10,407,459
`IPR2020-01125 Patent 10,457,984
`IPR2020-01177 Patent 10,435,742
`IPR2020-01323 Patent 10,428,380*
`
`
`
`
`
`
`
`
`
`
`
`JOINT MOTION TO TERMINATE
`PURSUANT TO 35 U.S.C. § 317 AND 37 C.F.R. § 42.74
`
`*This identical paper is being filed in each of the above five proceedings.
`
`
`
`Illumina v. Columbia
`IPR2020-00988, -01065, -01125, -01177, & -01323
`
`I.
`
`STATEMENT OF THE PRECISE RELIEF REQUESTED
`
`Pursuant to 35 U.S.C. § 317 and 37 C.F.R. § 42.74, Petitioner Illumina, Inc.
`
`(“Illumina”) and Patent Owner The Trustees of Columbia University in the City of
`
`New York (“Columbia”) jointly move to terminate the above-referenced inter partes
`
`review proceedings in light of the parties’ settlement of their disputes regarding the
`
`involved patents, U.S. Patent Numbers 10,407,458, 10,407,459, 10,457,984,
`
`10,435,742, and 10,428,380. The filing of this Joint Motion was authorized by the
`
`Board in an e-mail dated July 16, 2021. The parties are filing, concurrently with this
`
`motion, a true copy of their written Settlement Agreement (Ex. 1169) in connection
`
`with these matters as required by the statute. Given that Illumina is the only
`
`Petitioner in these proceedings, the settlement effectively resolves all disputes, and
`
`the entire proceedings should be dismissed as to both Petitioner and Patent Owner.
`
`II. STATEMENT OF REASONS FOR THE RELIEF REQUESTED
`
`On July 13, 2021, Petitioner and Patent Owner reached an agreement
`
`resolving all disputes regarding the patents involved in the inter partes review
`
`proceedings, which include the above-captioned inter partes reviews, as well as the
`
`related district court litigation between Petitioner and Patent Owner. No other
`
`petitioners remain in these inter partes review proceedings. Accordingly,
`
`termination is appropriate because all disputes between the parties regarding U.S.
`
`- 1 -
`
`
`
`Illumina v. Columbia
`IPR2020-00988, -01065, -01125, -01177, & -01323
`
`Patent Numbers 10,407,458, 10,407,459, 10,457,984, 10,435,742, and 10,428,380
`
`have been resolved.
`
`Illumina’s petitions and Columbia’s responses to the petitions have been filed
`
`in these cases. No further trial briefs have been filed, and oral argument has not yet
`
`taken place. Accordingly, termination is appropriate because these proceedings are
`
`still in a relatively early stage.
`
`Pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b), filed separately
`
`herewith as Exhibit 1169 is a true copy of the written Settlement Agreement
`
`resolving the disputes in the above-captioned inter partes reviews. The parties also
`
`are filing separately herewith a request that the settlement agreement be treated as
`
`business confidential information and be kept separate from the files of this
`
`proceeding in accordance with 37 C.F.R. § 42.74(c).
`
`For at least these reasons, Patent Owner and Petitioner submit that termination
`
`of these inter partes reviews is appropriate. Pursuant to 35 U.S.C. § 317(a), because
`
`the inter partes reviews are being terminated with respect to the Petitioner, no
`
`estoppel pursuant to 35 U.S.C. § 315(e) shall attach to Petitioner Illumina.
`
`
`
`
`
`- 2 -
`
`
`
`Illumina v. Columbia
`IPR2020-00988, -01065, -01125, -01177, & -01323
`
`
`
`
`
`Dated:
`
`July 20, 2021
`
`
`
`
`
`Respectfully Submitted By:
`
`
`
`
`
`
`
`
`
`/John P. White/
`John P. White, Reg. No. 28,678
`Gary J. Gershik, Reg. No. 39,992
`COOPER & DUNHAM LLP
`
`John D. Murnane, Reg. No. 29,836
`Justin J. Oliver, Reg. No. 44,986
`VENABLE LLP
`
`Attorneys for Patent Owner,
`Trustees of Columbia University in the
`City of New York
`
`
`
`
`/Kerry Taylor/
`Kerry S. Taylor, Reg. No. 43,947
`Michael L. Fuller, Reg. No. 36,516
`William R. Zimmerman (pro hac vice)
`Nathanael R. Luman, Reg. No. 63,160
`KNOBBE, MARTENS, OLSON
`
`& BEAR, LLP
`
`Attorneys for Petitioner,
`Illumina, Inc.
`
`- 3 -
`
`
`
`Illumina v. Columbia
`IPR2020-00988, -01065, -01125, -01177, & -01323
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a true and correct copy of the foregoing is being served
`
`on July 20, 2021, via email, pursuant to agreement of the parties, to counsel for the
`
`Trustees of Columbia University in the City of New York, at the email addresses
`
`below:
`
`John P. White
`jwhite@cooperdunham.com
`Gary J. Gershik
`ggershik@cooperdunham.com
`ColumbiaIPR@cooperdunham.com
`Cooper & Dunham, LLP
`30 Rockefeller Plaza, 20th Floor
`New York, NY 10112
`
`John D. Murnane
`VENABLE LLP
`jmurnane@venable.com
`1290 Avenue of the Americas
`New York, NY 10104
`
`Justin J. Oliver
`VENABLE LLP
`joliver@venable.com
`600 Massachusetts Ave.
`Washington, D.C. 20001
`
`
`
`Dated: July 20, 2021
`
`
`
`
`
`By: /Kerry Taylor/
`Kerry Taylor (Reg. No. 43,947)
`Nathanael R. Luman (Reg. No. 63,160)
`Michael L. Fuller (Reg. No. 36,516)
`William R. Zimmerman (admitted pro hac vice)
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`Attorneys for Petitioner
`ILLUMINA, INC.
`
`35343197
`
`
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
