IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`AMBRY GENETICS CORPORATION
`Petitioner
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`v.
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`THE JOHNS HOPKINS UNIVERSITY
`Patent Owner
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`Case No. IPR2017-02093
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`U.S. Patent No. 7,824,889
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`JOINT MOTION TO TERMINATE UNDER 35 U.S.C. § 317(a)
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`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`AMBRY GENETICS CORPORATION
`Petitioner
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`v.
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`THE JOHNS HOPKINS UNIVERSITY
`Patent Owner
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`Case No. IPR2017-02093
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`U.S. Patent No. 7,824,889
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`JOINT MOTION TO TERMINATE UNDER 35 U.S.C. § 317(a)
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`As authorized by the Patent Trial and Appeal Board’s (“the Board’s”) March
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`23, 2018 email (Exhibit 1032), Petitioner and Patent Owner jointly and respectfully
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`move that the inter partes review (“IPR”) of U.S. Patent No. 7,824,889 (“’889
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`patent”) be terminated under 35 U.S.C. § 317(a) and 37 C.F.R. § 42.72. Pursuant to
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`the Board’s March 23, 2018 email, the parties provide the following information in
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`support of their joint motion.
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`1.
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`Brief Explanation As To Why Termination Under 35 U.S.C. §
`317(a) Is Appropriate
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`Petitioner filed its petition for IPR on September 11, 2017. (Paper No. 2.)
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`On September 26, 2017, the Board accorded the petition a filing date of September
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`11, 2017, and gave the Patent Owner until December 26, 2017, to file a
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`Preliminary Response. (Paper No. 3.) The Patent Owner filed a Preliminary
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`Response on December 26, 2017. (Paper No. 6.) On March 19, 2018, the Board
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`issued a decision instituting inter partes review of the ’889 Patent (Paper No. 8).
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`The parties subsequently settled their dispute and executed a confidential
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`settlement agreement to terminate both this proceeding and the parties’ related
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`district court litigation: Esoterix Genetic Laboratories, LLC and The Johns
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`Hopkins University v. Ambry Genetics Corporation, 16-CV-1111 (M.D.N.C.). The
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`Stipulation and Order of Dismissal agreed to by the parties in the related district
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`court litigation is being filed concurrently herewith as Exhibit 1033.
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`\- 1 -
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`Pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b), the parties’
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`confidential settlement agreement is in writing, and a true copy of that confidential
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`settlement agreement – including any collateral agreements and without any
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`redactions – is being filed concurrently herewith as Exhibit 1034.1 The parties are
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`also filing concurrently herewith a joint request to treat the confidential settlement
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`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. §
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`42.74(c).
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`Termination of this proceeding under 35 U.S.C. § 317(a) is proper because
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`the Board has not yet decided the merits of this proceeding, and Petitioner has
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`agreed to no longer participate in this proceeding. Upon the requested termination
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`under 35 U.S.C. § 317(a), no estoppel or prejudice provided by 35 U.S.C. § 315(e)
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`should attach to this proceeding.
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`Further supporting the requested termination of this proceeding under 35
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`U.S.C. § 317(a), Petitioner has agreed to withdraw and no longer participate in the
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`IPRs for the three patents that are related to the ’889 patent – IPR2017-02086 (U.S.
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`6,440,706) (“’706 patent), IPR2017-02096 (U.S. 8,859,206) (“’206 patent”), and
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`IPR2017-02095 (U.S. 7,915,015) (“’015 patent”) – and the parties have agreed to
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`1 The settlement agreement is being filed electronically via the patent Review
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`Processing System with access to the “Parties and Board Only.”
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`- 2 -
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`dismiss with prejudice the district court litigation between them regarding those
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`patents.
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`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
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`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).
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`2.
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`All Parties To Any Related District Court Litigation Involving
`The Patent In Dispute and the Current Status of Each Such
`Related Litigation
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`To date, there have been three related district court litigations involving the
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`patent in dispute in this proceeding. Esoterix Genetic Laboratories, LLC and The
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`Johns Hopkins University have been the plaintiffs in each of those litigations. The
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`case captions and defendants for each of those litigations are provided in the chart
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`below.
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`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.)
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`Defendants
`Life Technologies Corporation
`Applied Biosystems, LLC
`Ion Torrent Systems, Inc.
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`Myriad Genetics, Inc.
`Myriad Genetic Laboratories, Inc.
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`- 3 -
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`Esoterix Genetic Laboratories, LLC and
`The Johns Hopkins University v. Ambry
`Genetics Corporation,
`16-cv-1111 (M.D.N.C.)
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`Ambry Genetics Corporation
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`The related district court litigations filed against Life Technologies
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`Corporation, Applied Biosystems, LLC, and Ion Torrent Systems, Inc., and against
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`Myriad Genetics, Inc. and Myriad Genetic Laboratories, Inc. were dismissed, with
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`prejudice, on September 21, 2015 and August 24, 2017, respectively.
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`The related district court litigation filed against Ambry Genetics Corporation
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`has been settled and the parties will jointly file an agreed Stipulation and Order of
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`Dismissal – a copy of which has been filed concurrently herewith as Exhibit 1033
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`– in that litigation in accordance with its terms.
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`Case Numbers of Any Pending, Related IPR Proceedings
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`3.
`There are three pending IPR proceedings related to this proceeding:
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`IPR2017-02086, IPR2017-02096, and IPR2017-02095. The Board issued a
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`decision to institute IPR2017-02086 (’706 patent) (Paper No. 7) and to not institute
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`IPR2017-02095 (’015 patent) (Paper No. 7) and IPR2017-02096 (’206 patent)
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`(Paper No. 7). Concurrently with the submission of the joint motion to terminate
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`this proceeding under 35 U.S.C. § 317(a), the parties are submitting a joint motion
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`to terminate under 35 U.S.C. § 317(a) in the other related, instituted IPR, IPR2017-
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`02086. The parties have also agreed not to take any further action, including
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`requests for rehearing, on the non-instituted IPRs (IPR2017-02095 and IPR2017-
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`02096). Other than the three pending, related IPR proceedings identified above,
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`Petitioner and Patent Owner are not aware of any other pending, related IPR
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`proceeding.
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`Conclusion
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`4.
`For all the foregoing reasons, Petitioner 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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`/Tina W. McKeon/
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`Tina W. McKeon (Reg. No. 43,791)
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`Kilpatrick Townsend & Stockton LLP
`1100 Peachtree St., N.E., Suite 2800
`Atlanta, GA 30309-4528
`Tel: 404-815-6103
`tmckeon@kilpatricktownsend.com
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`Attorneys for Patent Owner
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`Dated: March 29, 2018
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`/Bhanu Sadasivan /
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`Bhanu Sadasivan (Reg. No. 61,561)
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`McDermott Will & Emery LLP
`275 Middlefield Rd., Suite 100
`Menlo Park, CA 94025
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`T: 650-815-7537
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`bsadasivan@mwe.com
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`Attorneys for Petitioner
`Ambry Genetics Corporation
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`APPENDIX – LIST OF EXHIBITS
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`Exhibit Description
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`Exhibit
`Number
`1032 March 23, 3018 Board Email re settlement
`1033 M.D. N.C. Civil Action No. 17-CV-1111 Draft Stipulation and
`Order of Dismissal
`1034
`Confidential Settlement Agreement
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`CERTIFICATION OF SERVICE (37 C.F.R. §§ 42.6(E))
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`The undersigned herby certifies that a copy of this Joint Motion To
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`Terminate Under 35 U.S.C. § 317(a) and Ambry Exhibits 1032, 1033 and 1034
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`were served via email on the date below, upon the following:
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` /Amy Alwine/
`Amy Alwine
`McDermott Will & Emery LLP
`275 Middlefield Road, Suite 100
`Menlo Park, CA 94025
`phone: 650-815-7637
`email: aalwine@mwe.com
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`tmckeon@kilpatricktownsend.com
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`jalemanni@kilpatricktownsend.com
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`bhsing@bakerlaw.com
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`Date: March 29, 2018
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