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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`EDWARDS LIFESCIENCES CORPORATION,
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`Petitioner,
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`v.
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`ENDOHEART AG,
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`Patent Owner.
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`____________
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`Case IPR2016-00300
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`U.S. Patent No. 8,182,530
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`____________
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`JOINT MOTION OF PETITIONER AND PATENT OWNER
`TO TERMINATE PROCEEDING
`PURSUANT TO 35 U.S.C. § 317 AND 37 C.F.R. § 42.74
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`
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`____________
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`EDWARDS LIFESCIENCES CORPORATION,
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`
`
`Petitioner,
`
`v.
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`ENDOHEART AG,
`
`Patent Owner.
`
`____________
`
`Case IPR2016-00300
`
`U.S. Patent No. 8,182,530
`
`____________
`
`JOINT MOTION OF PETITIONER AND PATENT OWNER
`TO TERMINATE PROCEEDING
`PURSUANT TO 35 U.S.C. § 317 AND 37 C.F.R. § 42.74
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`
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`
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`Joint Motion to Terminate Proceeding
`Case IPR2016-00300
`U.S. Patent No. 8,182,530
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`STATEMENT OF PRECISE RELIEF REQUESTED
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`Pursuant to 35 U.S.C. § 317, 37 C.F.R. § 42.74, and the Board’s
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`authorization provided on June 9, 2016, Petitioner EDWARDS LIFESCIENCES
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`CORPORATION (“Petitioner” or “Edwards”) and Patent Owner ENDOHEART
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`AG (“Patent Owner” or “Endoheart”) (collectively the “Parties”) jointly request
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`termination of Inter Partes Review No. IPR2016-00300, which is directed to U.S.
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`Patent No. 8,182,530 (the “‘530 Patent”), pursuant to settlement. As there are no
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`other petitioners in this proceeding and the proceeding is still pre-trial, the Parties
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`respectfully submit that termination of this proceeding is appropriate.
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`STATEMENT OF FACTS
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`Petitioner filed their petition in this proceeding for Inter Partes Review of
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`the ‘530 Patent on December 9, 2015. In turn, Patent Owner filed a Preliminary
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`Response on March 15, 2016. Petitioner also filed another petition for Inter Partes
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`review of the ‘530 Patent in IPR2016-00299 on December 9, 2015. No other
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`petitions related to the ‘530 Patent are pending.
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`The deadline for entering a decision regarding institution by the Board is
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`June 15, 2016. Petitioner and Patent Owner have reached a Settlement Agreement
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`to end their disputes in this proceeding and the related litigation. Pursuant to 35
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`U.S.C. § 317(b) and 37 CFR § 42.74(b), the agreement between the Parties is in
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`2
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`writing, constitutes the entire understanding and agreement between the Parties,
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`Joint Motion to Terminate Proceeding
`Case IPR2016-00300
`U.S. Patent No. 8,182,530
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`and a copy of the Settlement Agreement is submitted herewith as Exhibit 1048.
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`The Parties jointly request that the Settlement Agreement be treated as business
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`confidential information and kept separate from the underlying patent file, as
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`provided in 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), to maintain
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`confidentiality of the Settlement Agreement. A separate joint request to that effect
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`is being filed concurrently herewith.
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`ARGUMENT
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`A joint motion to terminate generally “must (1) include a brief explanation
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`as to why termination is appropriate; (2) identify all parties in any related litigation
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`involving the patents at issue; (3) identify any related proceedings currently before
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`the Office, and (4) discuss specifically the current status of each such related
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`litigation or proceeding with respect to each party to the litigation or proceeding.”
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`Heartland Tanning, Inc. v. Sunless, Inc., IPR2014-00018, Paper 26 at 2 (PTAB Jul.
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`28, 2014).
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`The Board should terminate this case as the Parties jointly request, for the
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`following reasons.
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`3
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`Joint Motion to Terminate Proceeding
`Case IPR2016-00300
`U.S. Patent No. 8,182,530
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`1. Brief Explanation As To Why Termination is Appropriate
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`The Parties have met the statutory requirement that they file a “joint request”
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`to terminate before the Office “has decided the merits of the proceeding.” 35
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`U.S.C. § 317(a). The proceeding is still at an early stage (pre-trial). No decision
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`regarding institution has been entered by the Board. Further, no prior motions are
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`pending in this proceeding.
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`The Parties have reached a settlement as to the ‘530 Patent to end this
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`dispute. A copy of the confidential Settlement Agreement pertaining to
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`this case is filed concurrently herewith. See Ex. 1048. The Parties jointly certify
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`that there is no other agreement or understanding between them, including any
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`collateral agreement, made in connection with, or in contemplation of, the
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`termination of the instant proceeding as set forth in 35 U.S.C. § 317(b).
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`The Parties respectfully submit that termination of this proceeding is
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`appropriate because
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`(a) this proceeding is at an early stage (pre-trial) and no motions are
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`outstanding;
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`(b) the Parties have reached agreement to end their dispute concerning
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`the ‘530 Patent;
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`(c) the Parties have agreed to dismiss the related district court
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`4
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`Joint Motion to Terminate Proceeding
`Case IPR2016-00300
`U.S. Patent No. 8,182,530
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`litigation with respect to the ‘530 Patent;
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`(d) the Parties agree that this Inter Partes Review should be
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`terminated; and
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`(e) termination of this proceeding will preserve the Board’s resources
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`and obviate the need for any more Board involvement in this matter.
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`2. Identity and Status of Parties in Related Litigation Involving the Patent
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`The ‘530 Patent is in dispute in Endoheart AG v. Edwards Lifesciences
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`Corporation, Case No. 1:14-cv-01473 (D. Del.). The Parties have agreed to
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`dismiss this litigation.
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`3. Identity and Status of Any Related Proceedings Before the Office
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`Petitioner filed another petition for Inter Partes Review of the ‘530 Patent in
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`IPR2016-00299 on December 9, 2015. In turn, Patent Owner filed a Preliminary
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`Response on March 15, 2016. No decision regarding institution has been entered
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`by the Board. Petitioner is concurrently filing a Joint Motion to Terminate the
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`Proceeding in IPR2016-00299.
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`No other proceedings related to the ‘530 Patent are pending.
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`5
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`Joint Motion to Terminate Proceeding
`Case IPR2016-00300
`U.S. Patent No. 8,182,530
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`CONCLUSION
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`For at least the foregoing reasons, Petitioner and Patent Owner respectfully
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`request termination of this Inter Partes Review.
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`Dated: June 10, 2016
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`Respectfully submitted,
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`/W. Todd Baker/
`W. Todd Baker
`Reg. No. 45,265
`OBLON
`1940 Duke Street
`Alexandria, VA 22314
`Attorney for Petitioner
`Edwards Lifesciences Corporation
`
`/Edward M. Arons/
`Edward M. Arons
`Reg. No. 44,511
`Weiss & Arons, LLP
`1540 Route 202
`Pomona, New York 10977
`Attorney for Patent Owner
`Endoheart AG
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`6
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies service of the
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`JOINT MOTION TO TERMINATE PROCEEDING along with EXHIBIT 1048
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`on the counsel of record for the Patent Owner by filing this document through the
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`Patent Review Processing System as well as delivering a copy via electronic mail
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`to the following addresses:
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`Edward M. Arons
`earons@weissarons.com
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`Joel Weiss
`jweiss@weissarons.com
`Endoheart-IPR@weissarons.com
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`Dated: June 10, 2016
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`/W. Todd Baker/
`W. Todd Baker
`Reg. No. 45,265
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