`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`______________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`______________________
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`ENDOLOGIX, INC.
`Petitioner
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`v.
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`LIFEPORT SCIENCES LLC
`Patent Owner
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`______________________
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`CASE IPR2015-01722
`U.S. PATENT NO. 8,192,482 B2
`______________________
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`JOINT MOTION TO TERMINATE
`UNDER 35 U.S.C. § 317 AND 37 CFR §§ 42.72 AND 42.74
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`I.
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`STATEMENT OF RELIEF REQUESTED
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`Pursuant to 35 U.S.C. § 317 and 37 C.F.R. §§ 42.72 and 42.74, Petitioner
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`and Patent Owner jointly request termination of inter partes review IPR2015-
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`01722 of U.S. Patent No. 8,192,482 B2 (the “‘482 Patent”) with respect to both
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`parties. The Board authorized this joint motion on March 31, 2016, by email to the
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`parties. A joint request to treat the two agreements discussed below as business
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`confidential information and to keep them separate from the files of the ‘482 Patent
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`is being filed concurrently.
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`II.
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`STATEMENT OF FACTS
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`On August 12, 2015, Petitioner filed the petition in this inter partes review.
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`On either September 27, 2014, or on September 1, 2015, the ‘482 Patent
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`expired. See Paper No. 9 at 7.
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`On February 18, 2016, the Board instituted trial. See Paper No. 9. No
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`discovery has been exchanged, no depositions have been noticed, and the Patent
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`Owner has not responded substantively to the Petition.
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`On March 17, 2016, Petitioner and Patent Owner agreed to resolve their
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`dispute and executed two written agreements in connection therewith.
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`On March 28, 2016, the Patent Owner and the Petitioner dismissed their
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`respective claims and counterclaims with prejudice in the related litigation
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`captioned, LifePort Sciences, LLC v. Endologix, Inc., D. Del. No. 12-cv-1791.
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`IPR2015-01722
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`There are no other pending litigations or any other proceedings between the
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`Petitioner and Patent Owner.
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`Both parties advise the Board that no litigation or proceeding involving U.S.
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`Patent No. 8,192,482 B2 is contemplated in the foreseeable future.
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`III. THE BOARD SHOULD TERMINATE IPR2015-01722
`A. Termination of IPR2015-01722 Is Appropriate
`The Board should terminate IPR2015-01722 because the review is still in its
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`early stages, because the Board has not yet finally decided any of the merits,
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`because no motions are outstanding, because the Petitioner and Patent Owner have
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`ended the related district court litigation, because termination of the present inter
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`partes review would resolve all presently pending disputes between the parties
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`pertaining to the ‘482 Patent, because no litigation or other proceedings involving
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`the ‘482 Patent are contemplated by either party, and because both Petitioner and
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`Patent Owner agree that this inter partes review should be terminated.
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`The parties understand that if the Board terminates this inter partes review
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`with respect to Petitioner under 35 U.S.C. § 317(a), no estoppel under section
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`315(e) will attach to Petitioner on the basis of the Petitioner’s institution of this
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`inter partes review. The parties also understand that if the Board terminates this
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`inter partes review with respect to Petitioner before a final written decision on
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`patentability, no estoppel will attach to Petitioner under 37 C.F.R. § 42.73(d)(1).
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`2
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`IPR2015-01722
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`The parties understand that if the Board terminates this inter partes review before a
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`final written decision on patentability, no preclusion will attach to Patent Owner
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`under 37 C.F.R. § 42.73(d)(3).
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`True Copies of the Written Agreements Are Being Filed Herewith
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`B.
`As required under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b), true copies
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`of the two written agreements made in connection with, or in contemplation of, the
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`termination of this inter partes review are being contemporaneously filed herewith
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`as Exhibits 1023 and 1024, respectively. There are no other collateral agreements
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`or understandings made in connection with, or in contemplation of, the termination
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`of this inter partes review. A joint request to treat these agreements as business
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`confidential information and to keep them separate from the files of the ‘482 Patent
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`is being filed concurrently.
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`IV. SUMMARY
`For the foregoing reasons, Petitioner and Patent Owner respectfully request
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`termination of inter partes review no. IPR2015-01722 involving U.S. Patent No.
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`8,192,482 B2.
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`The Patent and Trial Appeal Board is hereby authorized to charge any fees
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`associated with the filing to Deposit Account 02-1818.
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`3
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`Date: April 4, 2016
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`Respectfully submitted,
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`IPR2015-01722
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`By:
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`/Katherine L. Hoffee/
`Katherine L. Hoffee
`Reg. No. 72,691
`K&L GATES LLP
`e-mail: katy.hoffee@klgates.com
`70 W. Madison Street, Suite 3100
`Chicago, IL 60602
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`Backup Counsel for Petitioner
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`/Robert W. Ashbrook Jr./
`Reg. No. 52,572
`Robert W. Ashbrook Jr.
`Dechert LLP
`robert.ashbrook@dechert.com
`Cira Centre, 2929 Arch Street
`Philadelphia, PA 19104
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`Lead Counsel for Patent Owner
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`By:
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`4
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`Certification of Service Under 37 C.F.R. § 42.6(e)(4)
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`The undersigned hereby certifies that the foregoing Joint Motion to
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`Terminate was electronically served via e-mail on April 4, 2016 in its entirety on:
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`Robert W. Ashbrook Jr.
`robert.ashbrook@dechert.com
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`Kevin M. Flannery
`kevin.flannery@dechert.com
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`Lead and Back-up Counsel for Patent Owner
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`By:
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`/Katherine L. Hoffee/
`Katherine L. Hoffee
`Reg. No. 72,691
`K&L GATES LLP
`e-mail: katy.hoffee@klgates.com
`70 W. Madison Street, Suite 3100
`Chicago, IL 60602
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`Backup Counsel for Petitioner