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Inter Partes Review of U.S. Pat. 7,563,584

Docket IPR2017-00013, Patent Trial and Appeal Board (Oct. 4, 2016)

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13 Termination Decision Document: Termination Decision Document

Document IPR2017-00013, No. 13 Termination Decision Document - Termination Decision Document (P.T.A.B. Jun. 21, 2017)
On June 8, 2017, in each of the above-captioned cases, with authorization of the Board, the parties filed a joint motion to terminate the proceeding pursuant to 37 C.F.R. §§ 42.5(a), 42.71, and 42.72.
With that filing, the parties also filed a Renewed Joint Motion to Terminate the Proceeding and a Joint Request to Treat (the original and supplemental) Exhibit 1016 as Business Confidential Information.
Further, we agree with the parties that termination of the proceedings is appropriate because they have reached an agreement settling their dispute with respect to the involved patents.
Additionally, the parties’ request for the settlement agreement to be treated as business confidential information and kept separate from the file of the involved Citations to paper and exhibit numbers in this Order refer to filings in IPR2017-00013.
Accordingly, it is hereby ORDERED that the joint motions to terminate the proceedings are granted; FURTHER ORDERED that the joint requests that the settlement agreement be treated as business confidential information and kept separate from the file of the involved patent under the provisions of 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) are granted; FURTHER ORDERED that the proceeding in each of the above- captioned cases is terminated.
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10 Order Conduct of Proceeding: Order Conduct of Proceeding

Document IPR2017-00013, No. 10 Order Conduct of Proceeding - Order Conduct of Proceeding (P.T.A.B. Jun. 12, 2017)
On June 8, 2017, in each of the above-captioned cases, with authorization of the Board, the parties filed a joint motion to terminate the proceeding pursuant to 37 C.F.R. §§ 42.5(a), 42.71, and 42.72.
The settlement agreement filed by the parties in each proceeding states that “in exchange for good and valuable consideration, receipt and sufficiency of which are hereby acknowledged, the Parties have hereby agreed to settle the disputes arising in IPR2014-00013 and IPR2017-00014 and request that the Patent Trial and Appeal Board terminate both proceedings.” Ex. 1016, 1.
Thus, the parties’ requests to terminate the proceedings are Citations to paper and exhibit numbers in this Order refer to filings in IPR2017-00013.
If the parties have questions regarding this Order, they are instructed to contact the Board and request a conference.
Accordingly, it is hereby ORDERED that any agreement(s) between the parties made in connection with the termination of the proceedings must be in writing and a true copy must be filed with the Board, as set forth in 37 C.F.R. § 42.74(b); and FURTHER ORDERED that authorization for the parties to satisfy the requirements for requesting termination of the proceedings based upon settlement agreements is extended to June 19, 2017.
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5 Institution Decision: Trial Instituted Document

Document IPR2017-00013, No. 5 Institution Decision - Trial Instituted Document (P.T.A.B. Mar. 15, 2017)
Further, Petitioner asserts that the following statement in Fleisher suggests other activatable proteins for evaluation: “This technique should find applications in the study of multiple phosphorylation- dependent pathways such as those involving other Jak-STAT combinations, IkB, and MAP kinases.” Id. (quoting Ex. 1004, 429).
Thus, based on the information presented at this stage of the proceeding, we are satisfied Petitioner has shown sufficiently that there is a reasonable likelihood that it would prevail in showing the unpatentability of claims 3, 7–9, and 22 as obvious over the combined teachings of Fleisher and Belloc.
Thus, based on the information presented at this stage of the proceeding, we are satisfied Petitioner has shown sufficiently that there is a reasonable likelihood that it would prevail in showing the unpatentability of independent claim 1 as obvious over the combined teachings of Darzynkiewicz and Yen.
On the current record, we discern no deficiency in Petitioner’s characterization of the knowledge in the art at the time of the invention, the teachings of Darzynkiewicz, Yen, and Belloc, or in Petitioner’s assertions as to the reasonable inferences an ordinary artisan would make from those combined
Thus, based on the information presented at this stage of the proceeding, we are satisfied Petitioner has shown sufficiently that there is a reasonable likelihood that it would prevail in showing the unpatentability of claims 3, 7–9, and 22 as obvious over the combined teachings of Darzynkiewicz, Yen, and Belloc.
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6 Order: Scheduling Order

Document IPR2017-00013, No. 6 Order - Scheduling Order (P.T.A.B. Mar. 15, 2017)

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3 Notice of Filing Date Accorded to Petition: Notice of Accord Filing Date

Document IPR2017-00013, No. 3 Notice of Filing Date Accorded to Petition - Notice of Accord Filing Date (P.T.A.B. Oct. 18, 2016)
For more information, please consult the Office Patent Trial Practice Guide, 77 Fed. Reg. 48756 (Aug. 14, 2012), which is available on the Board Web site at http://www.uspto.gov/PTAB.
Patent Owner is advised of the requirement to submit mandatory notice information under 37 C.F.R. § 42.8(a)(2) within 21 days of service of the petition.
The parties are advised that under 37 C.F.R. § 42.10(c), recognition of counsel pro hac vice requires a showing of good cause.
Many non-profit organizations, both inside and outside the intellectual property field, offer alternative dispute resolution services.
If the parties actually engage in alternative dispute resolution, the PTAB would be interested to learn what mechanism (e.g., arbitration, mediation, etc.) was used and the general result.
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12 Other: IPR2017 00013 Joint Motion to Treat Settlement as Confidential

Document IPR2017-00013, No. 12 Other - IPR2017 00013 Joint Motion to Treat Settlement as Confidential (P.T.A.B. Jun. 14, 2017)
Mail Stop “Patent Board” Patent Trial and Appeal Board U.S. Patent and Trademark Office P.O.
IPR2017-00013 (Patent 7,563,584 B2) Petitioner Fluidigm, Corp. and Patent Owner Board of Trustees of the Leland Stanford Junior University hereby jointly request that Exhibit 1016, the full Settlement Agreement between the Petitioner and Patent Owner, be designated as “Board Only” and treated as business confidential information to be kept separate from the files of the involved patent pursuant to 37 C.F.R. § 42.74(c).
This joint request is made with prior authorization of the Board.
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11 Other: IPR2017 00013 Renewed Joint Motion to Terminate

Document IPR2017-00013, No. 11 Other - IPR2017 00013 Renewed Joint Motion to Terminate (P.T.A.B. Jun. 14, 2017)
IPR2017-00013 (Patent 7,563,584 B2) With the Board’s authorization, Petitioner Fluidigm, Corp. and Patent Owner Board of Trustees of the Leland Stanford Junior University hereby jointly renew the parties’ request for termination of the instant proceeding pursuant to 37 C.F.R. §§ 42.5(a), 42.71(a), and 42.72.
Although the instant inter partes review has been instituted, the Board has not yet entered a final written decision on the merits.
Therefore, the parties respectfully request the Board exercise its authority under 37 C.F.R. §§ 42.5(a), 42.71(a), and 42.72 to terminate this proceeding.
In addition to requiring an explanation as to why termination is proper, the IPR2017-00013 (Patent 7,563,584 B2) Board has, in some instances, required the parties to identify all parties in any related litigation involving the patent at issue, identify any related proceeding currently before the Office, and discuss the status of each such related litigation or proceeding.
For these reasons, the parties jointly renew their request for termination of this proceeding in its entirety as to both Petitioner and Patent Owner.
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