`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`FLUIDIGM, CORP.,
`Petitioner,
`v.
`
`THE BOARD OF TRUSTEES OF
`THE LELAND STANFORD JUNIOR UNIV.,
`Patent Owner.
`
`Case IPR2017-00014 (Patent 7,695,926 B2)
`
`RENEWED JOINT MOTION TO TERMINATE PROCEEDINGS
`
`Mail Stop “Patent Board”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`IPR2017-00014 (Patent 7,695,926 B2)
`
`With the Board’s authorization, Petitioner Fluidigm, Corp. and Patent Owner
`
`Board of Trustees of the Leland Stanford Junior University hereby jointly renew the
`
`parties’ request for termination of the instant proceeding pursuant to 37 C.F.R.
`
`§§ 42.5(a), 42.71(a), and 42.72. See IPR2017-00013, Paper 10 (June 12, 2017).
`
`Termination of this proceeding is proper. As the Office Patent Trial Practice
`
`Guide recognizes, “[t]he Board expects that a proceeding will terminate after the
`
`filing of a settlement agreement, unless the Board has already decided the merits of
`
`the proceeding.” 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). Here, the parties
`
`have settled their disputes relating to U.S. Patent No. 7,695,926 B2—the patent at
`
`issue in this proceeding. Pursuant to 37 C.F.R. § 42.74(b), the parties’ Settlement
`
`Agreement is in writing, and a true copy of the full Settlement Agreement with all
`
`terms is submitted as Exhibit 1019 as business confidential information pursuant to
`
`37 C.F.R. § 42.74(c). Although the instant inter partes review has been instituted,
`
`the Board has not yet entered a final written decision on the merits. See Cox
`
`Commc’ns, Inc. v. AT&T Intellectual Prop. II, LP, IPR2015-01536, Paper 65 at 3
`
`(Dec. 8, 2016). As such, termination of the proceeding at this early stage will
`
`conserve the Board’s resources. Id. Therefore, the parties respectfully request the
`
`Board exercise its authority under 37 C.F.R. §§ 42.5(a), 42.71(a), and 42.72 to
`
`terminate this proceeding.
`
`In addition to requiring an explanation as to why termination is proper, the
`
`2
`
`
`
`IPR2017-00014 (Patent 7,695,926 B2)
`
`Board has, in some instances, required the parties to identify all parties in any related
`
`litigation involving the patent at issue, identify any related proceeding currently
`
`before the Office, and discuss the status of each such related litigation or proceeding.
`
`See, e.g., Heartland Tanning, Inc. v. Sunless, Inc., IPR2014-00018, Paper 26 at 2
`
`(July 28, 2014). Here, the parties are not aware of any judicial proceeding involving
`
`the ’926 patent.
`
`For these reasons, the parties jointly renew their request for termination of this
`
`proceeding in its entirety as to both Petitioner and Patent Owner.
`
`Dated: June 14, 2017
`
`Respectfully Submitted,
`
`By: /James P. Murphy/
`James P. Murphy (Reg. No. 55,474)
`Polsinelli PC
`1000 Louisiana Street
`Fifty-Third Floor
`Houston, TX 77002
`Tele: (713) 375-1631
`ipmurphy@polsinelli.com
`
`Margaux A. Savee (Reg. No. 62,940)
`Polsinelli LLP
`Three Embarcadero Center
`Suite 2400
`San Francisco, CA 94111
`Tele: (415) 248-2100
`msavee@polsinelli.com
`
`Attorneys for Petitioner
`Fluidigm Corp.
`
`3
`
`
`
`IPR2017-00014 (Patent 7,695,926 B2)
`
`CERTIFICATE OF SERVICE
`The undersigned certifies that a true and correct copy of RENEWED
`JOINT MOTION TO TERMINATE PROCEEDINGS was served
`
`electronically via e-mail on June 14, 2017, in its entirety, on the following:
`
`Bret E. Fields
`Bozicevic, Field & Francis LLP
`field@bozpat.com
`
`Carol L. Francis
`Bozicevic, Field & Francis LLP
`fracis@bozpat.com
`
`Dated: June 14, 2017
`
`By: /James P. Murphy/
`James P. Murphy (Reg. No. 55,474)
`Polsinelli PC
`1000 Louisiana Street
`Fifty-Third Floor
`Houston, TX 77002
`Tele: (713) 375-1631
`ipmurphy@polsinelli.com
`
`Margaux A. Savee (Reg. No. 62,940)
`Polsinelli LLP
`Three Embarcadero Center
`Suite 2400
`San Francisco, CA 94111
`Tele: (415) 248-2100
`msavee@polsinelli.com
`
`Attorneys for Petitioner
`Fluidigm Corp.
`
`4
`
`
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