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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`––––––––––
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`––––––––––
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`ELEKTA INC.
`Petitioner
`v.
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`VARIAN MEDICAL SYSTEMS, INC.
`Patent Owner
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`––––––––––
`
`Case IPR2016-01902
`Patent No. 6,888,919
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`––––––––––
`
`ELEKTA INC.’S AND VARIAN MEDICAL
`SYSTEMS, INC.’S JOINT MOTION 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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`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box. 1450
`Alexandria, Virginia 22313-1450
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`
`
`
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`Case IPR2016-01902
`U.S. Patent No. 6,888,919
`Pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. § 42.74(a), and the Board’s
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`Order Authorizing Motion to Terminate, Paper No. 11 (April 7th, 2017), Patent
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`Owner Varian Medical Systems, Inc. (“Patent Owner”) and Petitioner Elekta Inc.
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`(“Petitioner”) jointly move to terminate the present inter partes review proceeding,
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`in light of Patent Owner’s and Petitioner's (hereinafter Patent Owner and Petitioner
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`are referenced as “the parties”) resolution of their dispute relating to U.S. Patent No.
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`6,888,919 (the “’919 Patent”).
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`Termination is appropriate in the instant proceeding because the dispute
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`between the parties has been resolved and because full termination would encourage
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`settlement of Patent Office proceedings, consistent with federal judicial preference
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`and the management of limited judicial and Patent Office resources.
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`As required by 35 U.S.C. § 317(b), the parties are filing, concurrently
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`herewith, a true copy of their Settlement Agreement (executed on April 3rd, 2017) as
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`Exhibit 2007.1 Pursuant to Paragraph 6.2 of the Settlement Agreement, Patent Owner
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`and Petitioner jointly agreed to terminate this proceeding. Accordingly, the parties
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`jointly request that this proceeding be terminated under 35 U.S.C. § 317(a) and 37
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`C.F.R. § 42.74. See Fandango, LLC et al. v. Ameranth, Inc., CBM2014-00013, Paper
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`22, pp. 5-6 (PTAB March 24, 2014). There are no additional collateral agreements or
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`1 The Settlement Agreement has been filed electronically via E2E for “Parties and
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`Board Only” to preserve confidentiality.
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`Case IPR2016-01902
`U.S. Patent No. 6,888,919
`understandings made in connection with, or in contemplation of, termination of the
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`inter partes review. The parties have stipulated to dismiss the related litigation
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`involving the ’919 Patent in Varian Medical Systems v. Elekta AB et al., No. 15-871-
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`LPS, in the United States District Court for the District of Delaware. The parties are
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`also submitting a joint motion to terminate proceedings in another inter partes
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`review involving the ’919 Patent, Elekta Inc. v. Varian Medical Systems, Inc., Case
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`No. 2016-01904. No litigation or proceeding between the parties involving the ’919
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`Patent is contemplated in the foreseeable future.
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`Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under this
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`chapter shall be terminated with respect to any petitioner upon the joint request of the
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`petitioner and the patent owner, unless the Office has decided the merits of the
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`proceeding before the request for termination is filed.” This proceeding has been
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`instituted; however, no Patent Owner Response has been filed and the Board has not
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`decided on the merits of the proceeding.
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`Strong public policy considerations favor settlement between the parties to an
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`inter partes review proceeding. See Office Trial Practice Guide, Fed. Reg., Vol. 77,
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`No. 157 at 48768 (Aug. 14, 2012). No public interest or other factors weigh against
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`termination of this proceeding.
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`Further, both Congress and federal courts have expressed a strong interest in
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`encouraging settlement in litigation. See, e.g., Delta Air Lines, Inc. v. August, 450
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`U.S. 346, 352 (1981) (“The purpose of [Fed. R. Civ. P.] 68 is to encourage the
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`Case IPR2016-01902
`U.S. Patent No. 6,888,919
`settlement of litigation.”); Bergh v. Dept. of Transp., 794 F.2d 1575, 1577 (Fed. Cir.
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`1986) (“The law favors settlement of cases.”), cert. denied, 479 U.S. 950 (1986). The
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`Federal Circuit places a particularly strong emphasis on settlement. For example, it
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`endorses the ability of parties to agree to never challenge validity as part of a
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`settlement. See Flex-Foot, Inc. v. CRP, Inc., 238 F.3d 1362, 1370 (Fed. Cir. 2001);
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`see also Cheyenne River Sioux Tribe v. U.S., 806 F.2d 1046, 1050 (Fed. Cir. 1986)
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`(noting that the law favors settlement to reduce antagonism and hostility between
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`parties).
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`Maintaining this review after the parties reach a settlement would discourage
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`future settlements by removing a primary motivation for settlement: eliminating
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`litigation risk by resolving the parties’ disputes and ending the pending proceedings
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`between them. For patent owners, litigation risks include the potential for their
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`patents to be invalidated. If a patent owner knows that an inter partes review is likely
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`to continue regardless of settlement, it can create a strong disincentive for the patent
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`owner to settle.
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`Further, one of the primary reasons courts endorse settlement is preservation
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`of judicial resources. Maintaining this review after the parties have settled their
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`disputes would waste, rather than conserve, judicial resources. For example, in the
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`event the Board finds some of the subject claims unpatentable, Patent Owner would
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`be entitled to an appeal to the Federal Circuit. As the only party remaining in the
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`Case IPR2016-01902
`U.S. Patent No. 6,888,919
`case, the Office would have to defend the Board’s decision, which would further
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`waste valuable judicial and administrative resources.
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`The parties further request, pursuant to 37 C.F.R. § 42.74(c), that the
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`agreement (Ex. 2007) be treated as confidential business information and kept
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`separate from the files of the involved patent. The parties are filing, concurrently
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`herewith, a Joint Request to File the Settlement Agreement as Business Confidential
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`Information pursuant to 35 U.S.C. § 317 and 37 C.F.R. § 42.74(c). For the foregoing
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`reasons, the parties jointly and respectfully request that the instant proceeding be
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`terminated.
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`Respectfully submitted this 12th day of April, 2017.
`
`
`
`/Eliot D. Williams/
`Eliot D. Williams
`Reg. No. 50,822
`Baker Botts L.L.P.
`1001 Page Mill Road
`Building One, Suite 200
`Palo Alto, California 94304
`Phone: (650) 739-7511
`E-mail: eliot.williams@bakerbotts.com
`Lead Counsel for Patent Owner
`
`/Timothy J. May/
`Timothy J. May
`Reg. No. 41,538
`Finnegan, Henderson, Farabow, Garrett &
`Dunner, LLP
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`Case IPR2016-01902
`U.S. Patent No. 6,888,919
`901 New York Avenue, NW
`Washington, DC 20001
`Phone: (202) 408-4000
`E-mail: tim.may@finnegan.com
`Lead Counsel for Petitioner
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`6
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`Case IPR2016-01902
`U.S. Patent No. 6,888,919
`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. §§ 42.6(e), I hereby certify that on April 12, 2017
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`the foregoing document is being served electronically by agreement of the
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`parties, by e-mail to the following counsel of record:
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`
`
` tim.may@finnegan.com
`Timothy J. May
`James R. Barney james.barney@finnegan.com
`Lauren J. Dreyer lauren.dreyer@finnegan.com
`Joshua L. Goldberg joshua.goldberg@finnegan.com
`
`Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
`901 New York Avenue, NW
`Washington, DC 20001
`(202) 408-4000
`
`
`/Eliot D. Williams/
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