`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`MEDTRONIC XOMED, INC.
`Petitioner,
`
`v.
`
`NEUROVISION MEDICAL PRODUCTS, INC.
`Patent Owner.
`
`JOINT MOTION TO TERMINATE INTER PARTES REVIEW
`
`
`
`
`
`
`
`
`Case IPR2016-01405
`Case IPR2016-01406
`Case IPR2016-01847
`Case IPR2017-00456
`
`Patent 8,634,894
`Patent 8,634,894
`Patent 8,467,844
`Patent 8,634,894
`
`
`
`
`
`Cases IPR2016-01405, -01406, -01847,
`IPR2017-00456
`
`Patent Owner Neurovision Medical Products, Inc. and Petitioner Medtronic
`
`Xomed, Inc. have reached a settlement. Pursuant to 35 U.S.C. § 317(a) and 37
`
`C.F.R. §§ 42.72 and 42.74, the parties jointly request termination of the inter
`
`partes reviews of U.S. Patent Nos. 8,634,894 (“’894 Patent”) and 8,467,844 (“’844
`
`Patent”), Case Nos. IPR2016-01405, -01406, -01847, and IPR2017-00456. The
`
`parties were authorized to file this Joint Motion by the Board (via email) on May 8,
`
`2017.
`
`As required under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.72(b), a true copy
`
`of the settlement agreement that resolves the disputes in the above-captioned inter
`
`partes reviews and all disputes between Neurovision and Medtronic (and all other
`
`defendants in the related district court litigation) relating to the ’894 and ’844
`
`Patents is filed herewith as an exhibit.1
`
`Pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), the parties are also
`
`concurrently filing a Joint Request to Keep Separate, which asks the Board to treat
`
`the settlement agreement exhibit as business confidential information, and to keep
`
`it separate from the files of these proceedings and the files of the ’894 Patent and
`
`’844 Patents.
`
`
`
`
`1 Exhibit 2058 in IPR2016-01405; Exhibit 2058 in IPR2016-01406; Exhibit 2026
`in IPR2016-01847; Exhibit 2030 in IPR2017-00456.
`
`
`
`2
`
`
`
`Cases IPR2016-01405, -01406, -01847,
`IPR2017-00456
`
`
`Statement of Precise Relief Requested
`
`I.
`
`The parties jointly request that the Board terminate the inter partes reviews
`
`of the ’894 and ’844 Patents, Case Nos. IPR2016-01405, -01406, -01847, and
`
`IPR2017-00456, with respect to both parties.
`
`II. Reasons Why Termination Is Appropriate
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`Termination of these proceedings with respect to both parties is proper.
`
`These inter partes reviews are in their early stages. The institution dates (if any)
`
`and oral-argument dates for these proceedings are as follows:
`
`Case No.
`IPR2016-01405
`IPR2016-01406
`IPR2016-01847
`IPR2017-00456
`
`Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under this
`
`Institution Date
`December 29, 2016
`December 29, 2016
`March 23, 2017
`Institution Denied on May 5, 2017
`
`Oral-Argument Date
`September 21, 2017
`September 21, 2017
`December 6, 2017
`N/A
`
`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.” Because both parties
`
`request termination, and the Board has not yet decided the merits of the
`
`proceeding, the Board must terminate the proceedings with respect to Medtronic.
`
`When there are no petitioners remaining in the inter partes review, the
`
`Board may terminate the proceeding. 35 U.S.C. § 317(a); 37 C.F.R. § 42.72.
`
`
`
`3
`
`
`
`Cases IPR2016-01405, -01406, -01847,
`IPR2017-00456
`
`Medtronic is the only petitioner in these inter partes reviews. Both parties support
`
`termination of these proceedings.
`
` With no petitioners remaining in the
`
`proceedings and no final written decision on the merits, termination with respect to
`
`both parties is appropriate.
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`III. No Future Participation by Petitioner Medtronic
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`Medtronic will not be participating further in these proceedings.
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`IV. Conclusion
`
`The parties have settled all disputes relating to the ’894 and ’844 Patents,
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`these inter partes reviews are in their early stages, and the Board has not entered a
`
`final written decision on the merits in these proceedings. Accordingly, the parties
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`respectfully request the Board to terminate these proceedings in their entirety.
`
`Respectfully submitted,
`
` /Kent N. Shum/
`
`
`
`
`
`Kent N. Shum (Reg. No. 61,117)
`Russ August & Kabat
`12424 Wilshire Blvd., 12th Fl.
`Los Angeles, CA 90025
`Phone: (310) 826-7474
`
`
` /Justin J. Oliver/
`
`
`
`
`
`4
`
`
`
`Date: May 8, 2017
`
`
`
`
`
`
`
`Cases IPR2016-01405, -01406, -01847,
`IPR2017-00456
`
`
`Justin J. Oliver (Reg. No. 44,986)
`Fitzpatrick, Cella, Harper & Scinto
`975 F St. NW, 4th Fl.
`Washington, DC 20004
`Phone: (202) 530-1010
`
`
`
`
`5
`
`
`
`
`
`
`
`
`
`Cases IPR2016-01405, -01406, -01847,
`IPR2017-00456
`
`
`CERTIFICATE OF SERVICE (37 C.F.R. § 42.6(e)(1))
`
`
`The undersigned hereby certifies that the above document was served on
`
`May 8, 2017, by filing this document through the Patent Trial and Appeal Board
`
`End to End system as well as delivering a copy via electronic mail upon the
`
`following attorneys of record for the Petitioner:
`
`Justin J. Oliver, Reg. No. 44,986
`Jason M. Dorsky, Reg. No. 64,710
`Fitzpatrick, Cella, Harper & Scinto
`Medtronic894IPR@fchs.com
`
` /Kent N. Shum/
`
`
`
`
`
`Kent N. Shum (Reg. No. 61,117)
`Russ August & Kabat
`12424 Wilshire Blvd., 12th Fl.
`Los Angeles, CA 90025
`Phone: (310) 826-7474
`Fax: (310) 826-6991
`
`6
`
`
`
`Date: May 8, 2017
`
`
`
`
`
`
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