`Date: August 3, 2016
`
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`
`
`
`
`
`Trials@uspto.gov
`571-272-7822
`
`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
`Patent 8,192,482 B2
`____________
`
`Before JOSIAH C. COCKS, JAMES B. ARPIN, and
`MICHAEL L. WOODS, Administrative Patent Judges.
`
`COCKS, Administrative Patent Judge.
`
`
`ORDER
`Joint Motion to Terminate the Inter Partes Review
`35 U.S.C. § 317 and 37 C.F.R. § 42.72
`
`
`
`
`
`
`
`IPR2015-01722
`Patent 8,192,482 B2
`
`
`
`I. Introduction
`On April 4, 2016, Petitioner, Endologix, Inc. (“Endologix”) and
`Patent Owner, Lifeport Sciences LLC (“Lifeport Sciences”) (collectively
`referred to as “the parties”), filed a “Joint Motion to Terminate” this inter
`partes review proceeding. Paper 12 (“Joint Motion to Terminate”).1 Along
`with the Joint Motion to Terminate, the parties filed true copies of two
`written settlement agreements (Exs. 1023 and 1024), as well as a joint
`request to have their settlement agreements treated as business confidential
`information under 35 U.S.C. § 317 and 37 C.F.R. § 42.74(c) (Paper 13).
`
`II. Discussion
`The parties are reminded that the Board is not a party to the
`
`settlement, and may identify independently any question of patentability.
`37 C.F.R. § 42.74(a). Generally, however, the Board expects that a
`proceeding will terminate after the filing of a settlement agreement. See,
`e.g., Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug.
`14, 2012).
`Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under
`this chapter shall be terminated with respect to any petitioner upon the joint
`request of the petitioner and the patent owner, unless the Office has decided
`the merits of the proceeding before the request for termination is filed.” The
`requirement for terminating review with respect to Endologix is met.
`
`Furthermore, under 35 U.S.C. § 317(a), “[i]f no petitioner remains in
`the inter partes review, the Office may terminate the review or proceed to a
`
`
`1 Filing of the Motion to Terminate was authorized in e-mail correspondence
`from Board personnel on March 31, 2016. Paper 12, 1.
`2
`
`
`
`
`IPR2015-01722
`Patent 8,192,482 B2
`
`
`
`final written decision under section 318(a).” Endologix is the sole petitioner
`in this inter partes review, such that termination with respect to Endologix
`means that no petitioner remains in the proceeding. We, thus, have
`discretion to terminate this review with respect to Lifeport Sciences. We
`entered a Decision to institute trial on February 18, 2016 (Paper 9). Lifeport
`Sciences has filed no Patent Owner Response. In the Joint Motion to
`Terminate, the parties represent the following:
`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.
`
`Joint Motion to Terminate 2.
`
`Upon consideration of the circumstances of this case, we have
`determined to terminate this inter partes review as to both Endologix and
`Lifeport Sciences without rendering a final written decision.
`
`III. Orders
`
`It is
`
`ORDERED that the Joint Motion to Terminate IPR2015-01722 (Paper
`
`12) is granted, and this proceeding is hereby terminated; and
`
`FURTHER ORDERED that, as was requested timely by the parties
`(Paper 13), the settlement agreements (Exs. 1023 and 1024) will be treated
`
`3
`
`
`
`
`IPR2015-01722
`Patent 8,192,482 B2
`
`
`
`as business confidential information under 35 U.S.C. § 317(b) and 37 C.F.R.
`§ 42.74(c).
`
`For PETITIONER:
`
`Sanjay K. Murthy
`Katherine L. Hoffee
`K&L GATES LLP
`sanjay.murthy@klgates.com
`katy.hoffee@klgates.com
`
`For PATENT OWNER:
`
`Robert W. Ashbrook, Jr.
`Kevin M. Flannery
`DECHERT LLP
`robert.ashbrook@dechert.com
`kevin.flannery@dechert.com
`
`
`
`
`
`4
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