Paper No. __
`Filed: August 16, 2017
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`
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
`
`Myriad Genetics, Inc., Myriad Genetic Laboratories, Inc., Bio-Rad Laboratories,
`Inc., and RainDance Technologies, Inc.,
`Petitioners,
`
`v.
`
`The Johns Hopkins University,
`Patent Owner.
`________________
`
`Case IPR2017-01106
`Patent 7,824,889
`________________
`
`
`
`
`
`JOINT MOTION TO TERMINATE UNDER 35 U.S.C. § 317(a)
`
`
`
`
`Filed: August 16, 2017
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
`
`Myriad Genetics, Inc., Myriad Genetic Laboratories, Inc., Bio-Rad Laboratories,
`Inc., and RainDance Technologies, Inc.,
`Petitioners,
`
`v.
`
`The Johns Hopkins University,
`Patent Owner.
`________________
`
`Case IPR2017-01106
`Patent 7,824,889
`________________
`
`
`
`
`
`JOINT MOTION TO TERMINATE UNDER 35 U.S.C. § 317(a)
`
`
`
`
`
`Case IPR2017-01106
`Patent 7,824,889
`Joint Motion To Terminate Under 35 U.S.C. § 317(a)
`
`As authorized by the Patent Trial and Appeal Board's ("the Board's") August
`
`14, 2017 e-mail (Exhibit 1048), Petitioners and Patent Owner jointly and
`
`respectfully move that the inter partes review ("IPR") of U.S. Patent No. 7,824,889
`
`("'889 patent") be terminated under 35 U.S.C. § 317(a) and 37 C.F.R. § 42.72. As
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`required by the Board's August 14, 2017 email (id.), the parties provide the
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`following information in support of their joint motion.
`
`1.
`
`
`Brief Explanation As To Why Termination
`Under 35 U.S.C. § 317(a) Is Appropriate
`
`
`
`
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`
`
`
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`Petitioners filed their petition for IPR on March 17, 2017. (Paper 1.) On
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`April 5, 2017, the Board accorded the petition a filing date of March 17, 2017 and
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`gave the Patent Owner until July 5, 2017 to file a Preliminary Response. (Paper 4.)
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`The Patent Owner did not file a Preliminary Response. The parties subsequently
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`settled their dispute and executed a confidential settlement agreement to terminate,
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`without prejudice, both this proceeding and the parties' related district court
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`litigation: Esoterix Genetic Laboratories, LLC and The Johns Hopkins University
`
`v. Myriad Genetics, Inc. and Myriad Genetic Laboratories, Inc., 16-cv-1112
`
`(M.D.N.C.). The Stipulation and Order of Dismissal agreed to by the parties in the
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`related district court litigation is being filed concurrently herewith as Exhibit 1049.
`
`
`
`Pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b), the parties'
`
`confidential settlement agreement is in writing, and a true copy of that confidential
`
`
`
`
`
`Case IPR2017-01106
`Patent 7,824,889
` Joint Motion To Terminate Under 35 U.S.C. § 317(a)
`
`
`
`settlement agreement – including any collateral agreements and without any
`
`redactions - is being filed concurrently herewith as Exhibit 1050.1 The parties are
`
`also filing concurrently herewith a joint request to treat the confidential settlement
`
`agreement as business confidential information and to keep it separate from the
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`files of the IPR and the involved patent under 35 U.S.C. § 317(b) and 37 C.F.R. §
`
`42.74(c).
`
`Termination of this proceeding under 35 U.S.C. § 317(a) is proper because
`
`the Board has not yet decided whether to institute an inter partes review and has
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`not yet decided the merits of this proceeding. Upon the requested termination
`
`under 35 U.S.C. § 317(a), no estoppel or prejudice provided by 35 U.S.C. § 315(e)
`
`should attach to this proceeding.
`
`Further supporting the requested termination of this proceeding under 35
`
`U.S.C. § 317(a), the parties have agreed to terminate, without prejudice, the IPRs
`
`for the three patents that are related to the '889 patent - IPR2017-01102 (U.S.
`
`6,440,706) ("'706 patent"), IPR2017-01107 (U.S. 7,915,015) ("'015 patent"), and
`
`IPR2017-01105 (U.S. 8,859,206) ("'206 patent") and all district court litigation
`
`between them regarding those patents.
`
`
`1 The settlement agreement is being filed electronically via the Patent Review
`
`Processing System with access to the "Parties and Board Only."
`
`
`
`2
`
`
`
`Case IPR2017-01106
`Patent 7,824,889
` Joint Motion To Terminate Under 35 U.S.C. § 317(a)
`
`
`
`
`Outside of their motions to terminate under 35 U.S.C. § 317(a), the parties
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`are not aware of any other matter before the USPTO that would be affected by the
`
`outcome of this proceeding. Accordingly, the parties respectfully request that the
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`Board terminate this proceeding under 35 U.S.C. § 317(a).
`
`2.
`
`
`
`
`All Parties To Any Related District Court
`Litigation Involving The Patent In Dispute And
`The Current Status Of Each Such Related Litigation
`
`
`
`
`
`
`
`
`
`
`To date, there have been three related district court litigations involving the
`
`patent in dispute in this proceeding. Esoterix Genetic Laboratories, LLC and The
`
`Johns Hopkins University have been the plaintiffs in each of those litigations. The
`
`case captions and defendants for each of those litigations are provided in the chart
`
`below.
`
`Case
`Esoterix Genetic Laboratories, LLC
`and The Johns Hopkins University v.
`Life Technologies Corp, et al.,
`1:12-cv-01173-CCE-JEP (M.D.N.C.)
`Esoterix Genetic Laboratories, LLC
`and The Johns Hopkins University v.
`Myriad Genetics, Inc. and Myriad
`Genetic Laboratories, Inc.,
`16-cv-1112 (M.D.N.C.)
`Esoterix Genetic Laboratories, LLC
`and The Johns Hopkins University v.
`Ambry Genetics Corporation,
`16-cv-1111 (M.D. N.C.)
`
`
`Defendants
`Life Technologies Corporation
`Applied Biosystems, LLC
`Ion Torrent Systems, Inc.
`
`Myriad Genetics, Inc.
`Myriad Genetic Laboratories, Inc.
`
`Ambry Genetics Corporation
`
`
`
`3
`
`
`
`Case IPR2017-01106
`Patent 7,824,889
` Joint Motion To Terminate Under 35 U.S.C. § 317(a)
`
`
`
`
`The related district court litigation filed against Life Technologies
`
`Corporation, Applied Biosystems, LLC, and Ion Torrent Systems, Inc. was
`
`dismissed, with prejudice, on September 21, 2015.
`
`The related district court litigation filed against Myriad Genetics, Inc. and
`
`Myriad Genetic Laboratories, Inc. has been settled and the parties will jointly file
`
`an agreed Stipulation and Order of Dismissal – a copy of which has been filed
`
`concurrently herewith as Exhibit 1049 – in that litigation upon termination of this
`
`proceeding under 35 U.S.C. § 317(a).
`
`The related district court litigation against Ambry Genetics Corporation
`
`("Ambry") remains pending. That litigation involves the '889 patent in dispute in
`
`this proceeding, as well as the '706 patent, '015 patent, and '206 patent. The
`
`Ambry litigation is currently in fact discovery and a trial date has not been set.
`
`Ambry was not, and is not, a party to Petitioners' March 2017 request for IPR of
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`the '889 patent, and was not, and is not, a party to Petitioners' March 2017 request
`
`for IPRs of the '706 patent, '015 patent, or '206 patent. To date, and to the best of
`
`Petitioners' and Patent Owner's knowledge, Ambry has not filed a petition seeking
`
`IPR of the '706 patent, '889 patent, '015 patent, or '206 patent.
`
`
`
`
`
`
`
`4
`
`
`
`Case IPR2017-01106
`Patent 7,824,889
` Joint Motion To Terminate Under 35 U.S.C. § 317(a)
`
`
`
`
`3.
`
`Case Numbers Of Any Pending, Related IPR Proceedings
`
`There are three pending IPR proceedings related to this proceeding:
`
`IPR2017-01102 (U.S. 6,440,706), IPR2017-01107 (U.S. 7,915,015), and IPR2017-
`
`01105 (U.S. 8,859,206). Concurrently with the submission of the joint motion to
`
`terminate this proceeding under 35 U.S.C. § 317(a), the parties are submitting joint
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`motions to terminate under 35 U.S.C. § 317(a) in each of the three pending, related
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`IPR proceedings identified above. Other than the three pending, related IPR
`
`proceedings identified above, Petitioners and Patent Owner are not aware of any
`
`other pending, related IPR proceeding.
`
`4.
`
`Conclusion
`
` For all the foregoing reasons, Petitioners and Patent Owner jointly and
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`respectfully request termination of this proceeding under 35 U.S.C. § 317(a).
`
`
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`
`5
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`
`
`Case IPR2017-01106
`Patent 7,824,889
` Joint Motion To Terminate Under 35 U.S.C. § 317(a)
`
`Date: August 16, 2017
`
`
`
`
`Respectfully submitted,
`
`
`
`
`
`
`
`
`/Tina W. McKeon (Reg. No. 43,791/
`TINA W. MCKEON (REG. NO. 43,791)
`
`KILPATRICK TOWNSEND & STOCKTON
`LLP
`1100 PEACHTREE ST, N.E., SUITE 2800
`ATLANTA, GA 30309-4528
`TEL: 404-815-6103
`TMCKEON@KILPATRICKTOWNSEND.COM
`
`JOHN C. ALEMANNI (REG. NO. 47,384)
`KILPATRICK TOWNSEND & STOCKTON
`LLP
`4208 SIX FORKS ROAD, SUITE 1400
`RALEIGH, NC 27609
`TEL: 919-420-1724
`JALEMANNI@KILPATRICKTOWNSEND.CO
`M
`
`BENJAMIN C. HSING (REG. NO. 34,528)
`BAKER & HOSTETLER, LLP
`45 ROCKEFELLER PLAZA
`NEW YORK, NY 10111-0100
`TELEPHONE: 212-589-4260
`BHSING@BAKERLAW.COM
`
`ATTORNEYS FOR PATENT OWNER
`
`/Peter J. Armenio (Reg. No. 41,588/
`PETER J. ARMENIO (REG. NO. 41,588)
`ANNE S. TOKER (REG. NO. 50,170)
`
`QUINN EMANUEL
`URQUHART & SULLIVAN, LLP
`51 MADISON AVENUE
`NEW YORK, NY 10010
`TEL: (212) 849-7000
`FAX: (212) 849-7100
`PETERARMENIO@QUINNEMANUEL.COM
`ANNETOKER@QUINNEMANUEL.COM
`
`ATTORNEYS FOR PETITIONERS
`
`
`
`
`
`6
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`
`
`Case IPR2017-01106
`Patent 7,824,889
`Joint Motion To Terminate Under 35 U.S.C. § 317(a)
`
`
`APPENDIX – LIST OF EXHIBITS
`
`EXHIBIT NO.
`
`DESCRIPTION
`
`August 14, 2017 Email from Board re: settlement
`
`Stipulation and Order of Dismissal Without Prejudice
`
`True Copy of Confidential Settlement Agreement, including any
`collateral agreements and without any redactions
`
`1048
`
`1049
`
`1050
`
`
`
`
`
`
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