`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`CHARLES RIVER LABORATORIES, INC. and CHARLES RIVER
`LABORATORIES INTERNATIONAL, INC.,
`Petitioners
`
`v.
`
`IDEXX LABORATORIES, INC., and IDEXX DISTRIBUTION, INC.
`Patent Owner
`
`Case No.: IPR2016-01508 (8,945,945)
`Case No.: IPR2016-01511 (8,927,298)
`Case No.: IPR2016-01513 (9,040,308)1
`
`For: Sample Collection and Analysis
`
`JOINT MOTION TO TERMINATE PROCEEDINGS UNDER
`
`37 C.F.R. § 317(a)
`
`Pursuant to 35 U.S.C. § 317(a), 37 C.F.R. §§42.72 and 42.74, Petitioners
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`Charles River Laboratories, Inc. and Charles River Laboratories International, Inc.
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`(collectively, “CRL”), and Patent Owners, IDEXX Laboratories Inc. and IDEXX
`
`
`1 A word-for-word identical Motion is being filed in each proceeding.
`
`
`
`
`
`
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`Distribution Inc. (collectively, “IDEXX”), jointly request termination of IPR2016-
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`01508, IPR2016-01511, and IPR2016-01513.2
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`The Board authorized this Motion by Email on February 8, 2017.
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`CRL and IDEXX have reached a settlement agreement that resolves all
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`pending disputes between CRL and IDEXX as to the subject patents, including the
`
`subject IPRs. Pursuant to 37 C.F.R. § 42.74(b), the parties’ settlement agreements
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`are in writing, and a true and correct copy is filed concurrently with this Motion.
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`Pursuant to 37 C.F.R. § 42.74(c), the parties request that the settlement agreements
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`be treated as business confidential information and be kept separate from the files
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`of an involved patent or application.
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`The parties believe that termination of these proceedings is proper under 35
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`U.S.C. §317(a) because the Board has not yet decided the merits of the
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`proceedings as to IPR2016-01508, IPR2016-01511, and IPR2016-01513. Pursuant
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`to 35 U.S.C. § 317(a), an inter partes review proceeding “shall be terminated” with
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`respect to any settling petitioner upon the joint request of the petitioner and the
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`patent owner, “unless the Office has decided the merits of the proceeding before
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`the request for termination is filed.” Additionally, “[t]here are strong public policy
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`reasons to favor settlement between the parties to a proceeding,” and the Board
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`expects that a post grant proceeding “will terminate after the filing of a settlement
`
`
`2 The Board has yet to issue a decision in these IPRs.
`
`
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`2
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`
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`
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`agreement.” See, Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768
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`(Aug. 14, 2012). Termination of these proceedings avoids both the Board and the
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`parties from spending unnecessary resources.
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`Status of Pending Patent Office Proceedings
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`The parties are unaware of any other issued patent proceedings pending
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`before the United States Patent and Trademark Office that would be affected by the
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`outcome of this proceeding. Specifically, the parties are unaware of any additional
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`pending, related inter partes review proceedings.
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`Status of Pending District Court Actions
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`The settlement agreement entered into between the parties requires that the
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`related district court action involving the subject parties and subject patents,
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`IDEXX Labs. et al. v. Charles River Labs. et al, No. 15-668 (D. Del.), be dismissed
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`no later than February 9, 2017, and the parties are in the process of implementing
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`that action. Accordingly, the parties respectfully request termination of these
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`proceedings.
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`
`
`3
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`
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`
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`Dated: February 9, 2017
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`Respectfully submitted,
`
`/s/ Brian Drummond
`(Reg. No. 68,414)
`
`Douglas J. Kline
`Srikanth K. Reddy
`Brian T. Drummond
`GOODWIN PROCTER LLP
`100 Northern Avenue
`Boston, MA 02210
`(617) 570-1000
`dkline@goodwinlaw.com
`sreddy@goodwinlaw.com
`bdrummond@goodwinlaw.com
`
`Krupa K. Parikh
`GOODWIN PROCTER LLP
`901 New York Avenue, N.W.
`Washington, DC 20001
`(202) 346-4000
`kparikh@goodwinlaw.com
`
`Attorneys for Petitioner
`
`/Daniel A. Boehnen/
`Daniel A. Boehnen, Reg. No
`28,399
`Email: boehnen@mbhb.com
`Grantland G. Drutchas, Reg. No.
`32,565
`Email: drutchase@mbhb.com
`Patrick G. Gattari, Reg. No.
`39,582
`Email: gattari@mbhb.com
`McDonnell Boehnen Hulbert &
`Berghoff LLP
`300 S. Wacker Drive
`Chicago, IL 60606
`Ph: 312-913-0001
`
`Attorneys for Patent Owner
`
`
`
`
`4
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`
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`
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`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of the foregoing Joint Motion
`to Terminate Proceedings Under 35 U.S.C. §317(a) was served electronically via
`email as follows:
`
`Daniel Boehnen (boehnen@mbhb.com)
`Grantland Drutchas (drutchas@mbhb.com)
`Patrick G. Gattari (gattari@mbhb.com)
`
`
`By:
`
`/s/ Brian Drummond
`
`
`
`
`
`Dated: February 9, 2017
`
`
`
`5
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`
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