`
`______________________
`
`
`
`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 REQUEST TO KEEP AGREEMENTS CONFIDENTIAL AND
`SEPARATE UNDER 35 U.S.C. § 317 AND 37 C.F.R. § 42.74(c)
`
`
`
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
`
`I.
`
`STATEMENT OF RELIEF REQUESTED
`
`Pursuant to 35 U.S.C. § 317 and 37 C.F.R. § 42.74(c), Petitioner and Patent
`
`Owner jointly request that the two agreements discussed below and being filed
`
`herewith as Exhibits 1023 and 1024, (and being filed concurrently with the joint
`
`motion to terminate inter partes review IPR2015-01722 of U.S. Patent No.
`
`8,192,482 B2) be: (a) treated as business confidential information, (b) kept
`
`separate from the files of the involved patent, and (c) made available only as
`
`permitted pursuant to the provisions of 35 C.F.R. § 317(b) and 37 C.F.R. §
`
`42.74(c). The Board authorized this joint request on March 31, 2016, by email to
`
`the parties.
`
`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, U.S. Patent No.
`
`8,192,482 B2 expired. See Paper No. 9 at 7.
`
`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
`
`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. These two
`
`confidential agreements are included with the joint motion to terminate inter partes
`
`
`
`
`
`IPR2015-01722
`
`review IPR2015-01722 of U.S. Patent No. 8,192,482 B2. See Exs. 1023 and 1024.
`
`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.
`
`III. THE BOARD SHOULD TREAT THE PARTIES’ AGREEMENTS AS
`CONFIDENTIAL AND KEEP THEM SEPARATE
`
`Petitioner and Patent Owner jointly request that their two agreements being
`
`filed herewith as Exhibits 1023 and 1024 (concurrently with the joint motion to
`
`terminate inter partes review IPR2015-01722 of U.S. Patent No. 8,192,482 B2) be:
`
`(a) treated as business confidential information, (b) kept separate from the files of
`
`the involved patent, and (c) not be made available except as permitted by the
`
`provisions of 35 C.F.R. § 317(b) and 37 C.F.R. § 42.74(c). These agreements have
`
`not been publicly disclosed, nor will they be in connection with the related
`
`litigation.
`
`The public disclosure of the two agreements may provide competitors and/or
`
`licensees or licensors of one or both parties with an unfair advantage in future
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`competition or license negotiations, by revealing non-public information about one
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`or both of the parties’ strategies or tactics for negotiation, litigation, and/or
`
`conducting business.
`
`IV. SUMMARY
`For the foregoing reasons, Petitioner and Patent Owner respectfully request
`
`2
`
`
`
`IPR2015-01722
`
`that the parties’ agreements filed as Exhibits 1023 and 1024 be treated as business
`
`confidential information and be kept separate from the files of 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.
`
`
`
`Date: April 4, 2016
`
`Respectfully submitted,
`
`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:
`
`3
`
`
`
`Certification of Service Under 37 C.F.R. § 42.6(e)(4)
`
`The undersigned hereby certifies that the foregoing Joint Request to Keep
`
`
`
`
`
`Agreements Confidential and Separate 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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