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