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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________
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`ILLUMINA, INC.
`Petitioner,
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`v.
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`TRUSTEES OF COLUMBIA UNIVERSITY
`IN THE CITY OF NEW YORK
`Patent Owner.
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`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*
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`JOINT MOTION TO TERMINATE
`PURSUANT TO 35 U.S.C. § 317 AND 37 C.F.R. § 42.74
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`*This identical paper is being filed in each of the above five proceedings.
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`Illumina v. Columbia
`IPR2020-00988, -01065, -01125, -01177, & -01323
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`I.
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`STATEMENT OF THE PRECISE RELIEF REQUESTED
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`Pursuant to 35 U.S.C. § 317 and 37 C.F.R. § 42.74, Petitioner Illumina, Inc.
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`(“Illumina”) and Patent Owner The Trustees of Columbia University in the City of
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`New York (“Columbia”) jointly move to terminate the above-referenced inter partes
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`review proceedings in light of the parties’ settlement of their disputes regarding the
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`involved patents, U.S. Patent Numbers 10,407,458, 10,407,459, 10,457,984,
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`10,435,742, and 10,428,380. The filing of this Joint Motion was authorized by the
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`Board in an e-mail dated July 16, 2021. The parties are filing, concurrently with this
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`motion, a true copy of their written Settlement Agreement (Ex. 1169) in connection
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`with these matters as required by the statute. Given that Illumina is the only
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`Petitioner in these proceedings, the settlement effectively resolves all disputes, and
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`the entire proceedings should be dismissed as to both Petitioner and Patent Owner.
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`II. STATEMENT OF REASONS FOR THE RELIEF REQUESTED
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`On July 13, 2021, Petitioner and Patent Owner reached an agreement
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`resolving all disputes regarding the patents involved in the inter partes review
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`proceedings, which include the above-captioned inter partes reviews, as well as the
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`related district court litigation between Petitioner and Patent Owner. No other
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`petitioners remain in these inter partes review proceedings. Accordingly,
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`termination is appropriate because all disputes between the parties regarding U.S.
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`- 1 -
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`Illumina v. Columbia
`IPR2020-00988, -01065, -01125, -01177, & -01323
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`Patent Numbers 10,407,458, 10,407,459, 10,457,984, 10,435,742, and 10,428,380
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`have been resolved.
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`Illumina’s petitions and Columbia’s responses to the petitions have been filed
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`in these cases. No further trial briefs have been filed, and oral argument has not yet
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`taken place. Accordingly, termination is appropriate because these proceedings are
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`still in a relatively early stage.
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`Pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b), filed separately
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`herewith as Exhibit 1169 is a true copy of the written Settlement Agreement
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`resolving the disputes in the above-captioned inter partes reviews. The parties also
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`are filing separately herewith a request that the settlement agreement be treated as
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`business confidential information and be kept separate from the files of this
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`proceeding in accordance with 37 C.F.R. § 42.74(c).
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`For at least these reasons, Patent Owner and Petitioner submit that termination
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`of these inter partes reviews is appropriate. Pursuant to 35 U.S.C. § 317(a), because
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`the inter partes reviews are being terminated with respect to the Petitioner, no
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`estoppel pursuant to 35 U.S.C. § 315(e) shall attach to Petitioner Illumina.
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`- 2 -
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`Illumina v. Columbia
`IPR2020-00988, -01065, -01125, -01177, & -01323
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`Dated:
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`July 20, 2021
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`Respectfully Submitted By:
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`/John P. White/
`John P. White, Reg. No. 28,678
`Gary J. Gershik, Reg. No. 39,992
`COOPER & DUNHAM LLP
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`John D. Murnane, Reg. No. 29,836
`Justin J. Oliver, Reg. No. 44,986
`VENABLE LLP
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`Attorneys for Patent Owner,
`Trustees of Columbia University in the
`City of New York
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`/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
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`& BEAR, LLP
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`Attorneys for Petitioner,
`Illumina, Inc.
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`- 3 -
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`Illumina v. Columbia
`IPR2020-00988, -01065, -01125, -01177, & -01323
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`CERTIFICATE OF SERVICE
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`I hereby certify that a true and correct copy of the foregoing is being served
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`on July 20, 2021, via email, pursuant to agreement of the parties, to counsel for the
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`Trustees of Columbia University in the City of New York, at the email addresses
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`below:
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`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
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`John D. Murnane
`VENABLE LLP
`jmurnane@venable.com
`1290 Avenue of the Americas
`New York, NY 10104
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`Justin J. Oliver
`VENABLE LLP
`joliver@venable.com
`600 Massachusetts Ave.
`Washington, D.C. 20001
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`Dated: July 20, 2021
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`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.
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`35343197
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