`
`____________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`
`DANISCO US INC. and DUPONT NUTRITION BIOSCIENCES ApS,
`Petitioners,
`
`v.
`
`NOVOZYMES A/S,
`Patent Owner.
`
`_________________
`
`Case IPR2021-00189
`U.S. Patent 10,555,541
`____________
`
`
`JOINT MOTION TO TERMINATE PROCEEDING
`
`
`
`Attorney Docket No.: 30541-0018IP1
`Case No.: IPR2021-00189
`
`EXHIBITS
`
`Exhibit No.
`2001
`2002
`
`Exhibit Description
`Selected File History of Larsen Application No. 14/405,072
`CONFIDENTIAL Settlement agreement dated August 13,
`2021, with all collateral agreements
`
`
`
`
`
`
`
`i
`
`
`
`Attorney Docket No.: 30541-0018IP1
`Case No.: IPR2021-00189
`Petitioners Danisco US Inc. and DuPont Nutrition Biosciences ApS, and
`
`
`
`Patent Owner Novozymes A/S (collectively “Parties”) hereby jointly move for an
`
`order terminating the petition for inter partes review filed December 4, 2020,
`
`directed to Patent No. 10,555,541 (the ’541 patent”) and assigned case number
`
`IPR2021-00189.
`
`Patent Owner filed their mandatory notices on December 21, 2020, and their
`
`preliminary response on March 16, 2021. The PTAB entered the decision
`
`instituting trial on May 17, 2021 (Paper 10).
`
`The Parties have settled their dispute and have reached agreement to
`
`terminate this proceeding. The Parties’ settlement agreement and any collateral
`
`agreements have been made in writing, and true copies of the same are attached as
`
`Confidential Exhibit 2002. The parties confirm that, other than the agreements
`
`provided in Confidential Exhibit 2002, there are no other agreements, oral or
`
`written, between the parties made in connection with, or in contemplation of, the
`
`termination of this proceeding.
`
`In addition, the Parties desire the settlement agreement and collateral
`
`agreements of Confidential Exhibit 2002 be maintained as business confidential
`
`under 37 C.F.R. §42.74(c), and a separate joint request to that effect is being filed
`
`concurrently herewith.
`
`1
`
`
`
`Attorney Docket No.: 30541-0018IP1
`Case No.: IPR2021-00189
`1. Reasons Why Termination Is Appropriate
`
`Termination is proper because the Parties are jointly requesting termination,
`
`the review is still in its early stages, and the Office has not yet “decided the merits
`
`of the proceeding before the request for termination is filed.” As noted in the
`
`Patent Office Trial Practice Guidelines, “there are strong public policy reasons to
`
`favor settlement between the parties to a proceeding . . . . The Board expects that a
`
`proceeding will terminate after the filing of a settlement agreement, unless the
`
`Board has already decided the merits of the proceeding.” 1 Accordingly,
`
`termination is appropriate here.
`
`The Parties understand that if the Board terminates this petition for inter
`
`partes review, no estoppel under 35 U.S.C. § 315(e) or 37 C.F.R. § 42.73(d)(1) will
`
`attach to Petitioner. The Parties understand that if the Board terminates this petition
`
`for inter partes review before a final written decision on patentability, no
`
`preclusion will attach to Patent Owner under 37 C.F.R. § 42.73(d)(3).
`
`As authorized by email on August 20, 2021, true copies of all agreements
`
`made in connection with, or in contemplation of, the termination of this petition for
`
`inter partes review are being contemporaneously filed herewith as Confidential
`
`Exhibit 2002.
`
`
`
`
`
`
`1 See Federal Register Vol. 77, No. 157 at 48768.
`2
`
`
`
`
`
`Attorney Docket No.: 30541-0018IP1
`Case No.: IPR2021-00189
`There are no other pending proceedings between the Petitioner and Patent
`
`Owner relating to the ’541 patent.
`
`For the foregoing reasons, the Parties jointly request termination of
`
`IPR2021-00189.
`
`
`
`
`
`
`
`Date: August 27, 2021
`
`
`
`Date:August 27, 2021
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`
`
`
`/Michael Flibbert/
`Michael Flibbert, Reg. No. 33,234
`Pier DeRoo, Reg. No. 69,340
`
`
`Counsel for Petitioner
`
`/Dorothy Whelan/
`Dorothy Whelan, Reg. No. 33,814
`Robert Sullivan, Reg. No. 30,499
`Michael Zoppo, Reg. No. 61,074
`Kathryn Grey, Reg. No. 69,591
`
`Counsel for Patent Owner
`
`3
`
`
`
`Attorney Docket No.: 30541-0018IP1
`Case No.: IPR2021-00189
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 CFR §§ 42.6(e)(1), the undersigned certifies that on August
`
`27, 2021, a copy of Joint Motion to Terminate Proceeding, Joint Request to Keep
`
`Agreements Confidential and Separate Under 37 C.F.R. § 42.74(c) and
`
`accompanying Confidential Exhibit 2002 were provided via email, to Petitioner, by
`
`serving the email correspondence addresses of record as follows:
`
`
`
`
`
`
`
`
`Michael J. Flibbert
`Pier D. DeRoo
`Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
`901 New York Avenue, NW
`Washington, DC 20001
`
`Email: michael.flibbert-IPR@finnegan.com
`pier.deroo@finnegan.com
`
`
`
`/Diana Bradley/
`Diana Bradley
`Fish & Richardson P.C.
` 60 South Sixth Street, Suite 3200
` Minneapolis, MN 55402
` (858) 678-5667
`
`
`
`
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
