`571-272-7822
`
` Paper 10
` Entered: June 12, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FLUIDIGM, CORP.,
`Petitioner,
`
`v.
`
`THE BOARD OF TRUSTEES OF
`THE LELAND STANFORD JUNIOR UNIV.,
`Patent Owner.
`____________
`
`Case IPR2017-00013 (Patent 7,563,584 B2)
`Case IPR2017-00014 (Patent 7,695,926 B2) 1
`____________
`
`Before ERICA A. FRANKLIN, GEORGIANNA W. BRADEN, and
`ZHENYU YANG, Administrative Patent Judges.
`
`FRANKLIN, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
` 1
`
`
`
` This Order addresses issues common to each captioned cases. Thus, we
`enter the same Order in each case.
`
`
`
`IPR2017-00013 (Patent 7,563,584 B2)
`IPR2017-00014 (Patent 7,695,926 B2)
`
`
`On June 8, 2017, in each of the above-captioned cases, with
`authorization of the Board, the parties filed a joint motion to terminate the
`proceeding pursuant to 37 C.F.R. §§ 42.5(a), 42.71, and 42.72. Paper 8, 2.2
`The parties also filed an exhibit in each proceeding, Ex. 2016, referred to as
`“the Settlement agreement between the Petitioner and Patent Owner.” Paper
`9, 2. Additionally, citing to 37 C.F.R. § 42.74 (c), the parties filed a joint
`request in each proceeding that the settlement agreement be treated as
`business confidential information and “kept separate from the files of these
`proceedings and the involved patents.” Id.
`With our authorization to file the joint motions to terminate the
`proceedings, we explained that any agreement(s) between the parties made
`in connection with the termination of the proceedings must be in writing and
`a true copy must be filed with the Board. 37 C.F.R. § 42.74(b). The
`settlement agreement filed by the parties in each proceeding states that “in
`exchange for good and valuable consideration, receipt and sufficiency of
`which are hereby acknowledged, the Parties have hereby agreed to settle the
`disputes arising in IPR2014-00013 and IPR2017-00014 and request that the
`Patent Trial and Appeal Board terminate both proceedings.” Ex. 1016, 1.
`That agreement, however, does not describe such “consideration,” or the
`precise terms of the settlement. Instead, it appears that Exhibit 1016
`represents only a notice that a settlement agreement has been reached. Such
`notice does not comply with the requirement set forth in 37 C.F.R. §
`42.74(b). Thus, the parties’ requests to terminate the proceedings are
`
`
`
` 2
`
` Citations to paper and exhibit numbers in this Order refer to filings in
`IPR2017-00013. Similar documents were filed in each captioned case.
`2
`
`
`
`
`
`IPR2017-00013 (Patent 7,563,584 B2)
`IPR2017-00014 (Patent 7,695,926 B2)
`
`incomplete.
`The Joint Motions to Terminate IPR2017-00013 and IPR2017-00014
`will be considered after the parties satisfy 37 C.F.R. § 42.74(b). The time to
`fulfill that requirement is extended to June 19, 2017. If the parties have
`questions regarding this Order, they are instructed to contact the Board and
`request a conference. Such a request shall include alternate dates and times
`that the parties are available for a conference.
`Accordingly, it is hereby
`ORDERED that any agreement(s) between the parties made in
`connection with the termination of the proceedings must be in writing and a
`true copy must be filed with the Board, as set forth in 37 C.F.R. § 42.74(b);
`and
`
`FURTHER ORDERED that authorization for the parties to satisfy the
`requirements for requesting termination of the proceedings based upon
`settlement agreements is extended to June 19, 2017.
`
`
`
`3
`
`
`
`
`
`
`
`IPR2017-00013 (Patent 7,563,584 B2)
`IPR2017-00014 (Patent 7,695,926 B2)
`
`
`
`
`PETITIONER:
`
`James Murphy
`Margaux Savee
`POLSINELLI PC
`jpmurphy@polsinelli.com
`msavee@polsinelli.com
`
`
`
`PATENT OWNER:
`
`Bret Field
`Carol L. Francis
`BOZICEVIC, FIELD & FRANCIS LLP
`field@bozpat.com
`francis@bozpat.com
`
`4
`
`
`
`
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