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`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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`_______________
`
`
`INOGEN, INC.,
`Petitioner
`
`v.
`
`SEPARATION DESIGN GROUP IP HOLDINGS, LLC,
`Patent Owner
`
`__________
`
`
`Case IPR2017-00300
`Patent 8,894,751
`_______________
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`
`
`JOINT REQUEST TO TERMINATE INTER PARTES REVIEW
`PROCEEDING
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`Pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. § 42.74, Petitioner Inogen,
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`Inc. and Patent Owner Separation Design Group IP Holdings, LLC jointly request
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`termination of inter partes review IPR2017-00300 relating to U.S. Patent
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`No. 8,894,751 (“the ‘751 Patent”), filed by Petitioner on November 18, 2016. The
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`filing of this Joint Motion was authorized by the Board via an email response to the
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`Parties dated November 6, 2017.
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`On October 31, 2017, Petitioner and Patent Owner signed a Settlement
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`Agreement and Mutual Release (the “Settlement Agreement”) resolving the
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`dispute in the above-captioned inter partes review. The Settlement Agreement
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`also resolves the pending district court litigation, Separation Design Group IP
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`Holdings LLC v. Inogen, Inc., Case No. 2:15-cv-08323-JAK-JPR, U.S. District
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`Court for the Central District of California (the “Litigation”), between Patent
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`Owner and Petitioner. Patent Owner filed a notice of settlement for the Litigation
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`on October 18, 2017 (Dkt. 286), and the district court dismissed the case without
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`prejudice on October 19, 2017 (Dkt. 293). The parties then filed a stipulation of
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`dismissal with prejudice for the Litigation on November 1, 2017, which does not
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`require approval of the district court pursuant to Fed. R. Civ. P. 41 (Dkt. 294). The
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`Litigation is the only other related matter involving the ‘751 Patent.
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`There are no other pending proceedings before the Board involving the ‘751
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`Patent. There is one pending related inter partes review proceeding before the
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`2
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`Board, IPR2017-00453, involving U.S. Patent No. 9,199,055 (“the ‘055 Patent”),
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`which is related to the ‘751 Patent. A request to terminate the related inter partes
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`review proceeding is also being submitted as a result of this settlement. No other
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`petitioners remain in this inter partes review for the ‘751 Patent or the related inter
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`partes review for the ‘055 Patent.
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`Termination is appropriate at this time for the following reasons. The inter
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`partes review has been instituted by the Board and Patent Owner has filed its
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`response to the petition, but Petitioner has not yet filed its reply and the Board has
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`not reached a final decision on the merits. The parties have since settled all
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`disputes regarding the ‘751 Patent and the related ‘055 Patent, the Litigation has
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`been dismissed, and the Parties have reached agreement to terminate this inter
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`partes review for the ‘751 Patent and the related inter partes review for the ‘055
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`Patent. Accordingly, Petitioner and Patent Owner jointly request that the inter
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`partes review be terminated under 35 U.S.C. § 317(a) and 37 C.F.R. § 42.74(a).
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`Pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b), Petitioner and
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`Patent Owner filed separately herewith a true copy of the written Settlement
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`Agreement resolving the dispute in this inter partes review. The parties request
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`that the Settlement Agreement be treated as business confidential information, be
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`kept separate from the files of this proceeding, and be made available only to
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`3
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`Federal Government agencies on written request or to other persons on written
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`request and a showing of good cause, in accordance with 37 C.F.R. § 42.74(c).
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`
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`Dated: November 6, 2017
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`Respectfully Submitted,
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`/s/ Brett M. Pinkus
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`
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`/s/ Nicholas M. Zovko
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`Brett M. Pinkus (Reg. No. 59,980)
`Richard Wojcio (Reg. No. 71,640)
`Michael T. Cooke (pro hac vice)
`FRIEDMAN, SUDER & COOKE
`604 E. Fourth Street, Suite 200
`Fort Worth, TX 76102
`Phone: (817) 334-0400
`Fax: (817) 334-0401
`pinkus@fsclaw.com
`wojcio@fsclaw.com
`mtc@fsclaw.com
`
`COUNSEL FOR PATENT OWNER
`SEPARATION DESIGN GROUP IP
`HOLDINGS, LLC
`
`
`
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`
`
`John B. Sganga, Jr. (Reg. No. 31,302)
`Nicholas M. Zovko (Reg. No. 61,557)
`Linda H. Liu (Reg. No. 51,240)
`KNOBBE, MARTENS, OLSON &
`BEAR, LLP
`2040 Main Street, 14th Floor
`Irvine, CA 92614
`Tel.: (949) 760-0404
`Fax: (949) 760-9502
`2jbs@knobbe.com
`2nmz@knobbe.com
`2lhl@knobbe.com
`
`COUNSEL FOR PETITIONER
`INOGEN, INC.
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`4
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`CERTIFICATE OF SERVICE
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`I hereby certify that on November 6, 2017, a true and correct copy of the
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`foregoing JOINT REQUEST TO TERMINATE INTER PARTES REVIEW
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`PROCEEDING was served via electronic mail upon counsel of record for
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`Petitioners at the following addresses:
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`John B. Sganga, Jr.
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`2jbs@knobbe.com
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`Nicholas M. Zovko
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`2nmz@knobbe.com
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`Linda H. Liu
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`
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`2lhl@knobbe.com
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`Dated: November 6, 2017
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`
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`By: / Brett M. Pinkus/
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`Brett M. Pinkus
`Registration No. 59,980
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`3
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