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Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`______________________
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________________
`
`
`
`ENDOLOGIX, INC.
`Petitioner
`
`v.
`
`LIFEPORT SCIENCES LLC
`Patent Owner
`
`______________________
`
`CASE IPR2015-01722
`U.S. PATENT NO. 8,192,482 B2
`______________________
`
`JOINT MOTION TO TERMINATE
`UNDER 35 U.S.C. § 317 AND 37 CFR §§ 42.72 AND 42.74
`
`

`
`
`
`I.
`
`STATEMENT OF RELIEF REQUESTED
`
`Pursuant to 35 U.S.C. § 317 and 37 C.F.R. §§ 42.72 and 42.74, Petitioner
`
`and Patent Owner jointly request termination of inter partes review IPR2015-
`
`01722 of U.S. Patent No. 8,192,482 B2 (the “‘482 Patent”) with respect to both
`
`parties. The Board authorized this joint motion on March 31, 2016, by email to the
`
`parties. A joint request to treat the two agreements discussed below as business
`
`confidential information and to keep them separate from the files of the ‘482 Patent
`
`is being filed concurrently.
`
`II.
`
`STATEMENT OF FACTS
`
`On August 12, 2015, Petitioner filed the petition in this inter partes review.
`
`On either September 27, 2014, or on September 1, 2015, the ‘482 Patent
`
`expired. See Paper No. 9 at 7.
`
`On February 18, 2016, the Board instituted trial. See Paper No. 9. No
`
`discovery has been exchanged, no depositions have been noticed, and the Patent
`
`Owner has not responded substantively to the Petition.
`
`On March 17, 2016, Petitioner and Patent Owner agreed to resolve their
`
`dispute and executed two written agreements in connection therewith.
`
`On March 28, 2016, the Patent Owner and the Petitioner dismissed their
`
`respective claims and counterclaims with prejudice in the related litigation
`
`captioned, LifePort Sciences, LLC v. Endologix, Inc., D. Del. No. 12-cv-1791.
`
`
`
`

`
`IPR2015-01722
`
`There are no other pending litigations or any other proceedings between the
`
`Petitioner and Patent Owner.
`
`Both parties advise the Board that no litigation or proceeding involving U.S.
`
`Patent No. 8,192,482 B2 is contemplated in the foreseeable future.
`
`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
`
`early stages, because the Board has not yet finally decided any of the merits,
`
`because no motions are outstanding, because the Petitioner and Patent Owner have
`
`ended the related district court litigation, because termination of the present inter
`
`partes review would resolve all presently pending disputes between the parties
`
`pertaining to the ‘482 Patent, because no litigation or other proceedings involving
`
`the ‘482 Patent are contemplated by either party, and because both Petitioner and
`
`Patent Owner agree that this inter partes review should be terminated.
`
`The parties understand that if the Board terminates this inter partes review
`
`with respect to Petitioner under 35 U.S.C. § 317(a), no estoppel under section
`
`315(e) will attach to Petitioner on the basis of the Petitioner’s institution of this
`
`inter partes review. The parties also understand that if the Board terminates this
`
`inter partes review with respect to Petitioner before a final written decision on
`
`patentability, no estoppel will attach to Petitioner under 37 C.F.R. § 42.73(d)(1).
`
`2
`
`

`
`IPR2015-01722
`
`The parties understand that if the Board terminates this 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).
`
`True Copies of the Written Agreements Are Being Filed Herewith
`
`B.
`As required under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b), true copies
`
`of the two written agreements made in connection with, or in contemplation of, the
`
`termination of this inter partes review are being contemporaneously filed herewith
`
`as Exhibits 1023 and 1024, respectively. There are no other collateral agreements
`
`or understandings made in connection with, or in contemplation of, the termination
`
`of this inter partes review. A joint request to treat these agreements as business
`
`confidential information and to keep them separate from the files of the ‘482 Patent
`
`is being filed concurrently.
`
`IV. SUMMARY
`For the foregoing reasons, Petitioner and Patent Owner respectfully request
`
`termination of inter partes review no. IPR2015-01722 involving U.S. Patent No.
`
`8,192,482 B2.
`
`The Patent and Trial Appeal Board is hereby authorized to charge any fees
`
`associated with the filing to Deposit Account 02-1818.
`
`3
`
`
`
`

`
`Date: April 4, 2016
`
`Respectfully submitted,
`
`IPR2015-01722
`
`By:
`
`
`
`/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
`
`Backup Counsel for Petitioner
`
`/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
`
`Lead Counsel for Patent Owner
`
`
`
`
`
`
`
`
`
`
`By:
`
`4
`
`

`
`Certification of Service Under 37 C.F.R. § 42.6(e)(4)
`
`The undersigned hereby certifies that the foregoing Joint Motion to
`
`
`
`
`
`Terminate was electronically served via e-mail on April 4, 2016 in its entirety on:
`
`Robert W. Ashbrook Jr.
`robert.ashbrook@dechert.com
`
`Kevin M. Flannery
`kevin.flannery@dechert.com
`
`Lead and Back-up Counsel for Patent Owner
`
`By:
`
`
`
`
`
`/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
`
`Backup Counsel for Petitioner

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