`
`
`
`
`
`
`
`
`
`Case No. IPR 2018-01466
`U.S. Patent No. 7,059,324
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`MONAGHAN MEDICAL CORP.,
`
`Petitioner,
`v.
`SMITHS MEDICAL ASD, INC.,
`
`Patent Owner.
`
`
`Case No. IPR 2018-01466
`U.S. Patent No. 7,059,324
`
`
`
`MONAGHAN MEDICAL CORP. AND SMITHS MEDICAL ASD, INC.’S
`JOINT MOTION TO TERMINATE PROCEEDING PURUSANT TO
`35 U.S.C. § 317 AND 37 C.F.R. § 42.74
`__________________________________________________________________
`
`
`
`
`
`
`
`Pursuant to 35 U.S.C. § 317, 37 C.F.R. § 42.74, and the Patent Trial and
`
`Case No. IPR 2018-01466
`U.S. Patent No. 7,059,324
`
`
`
`
`Appeal Board email of October 23, 2018, authorizing the filing of the present
`
`motion, Petitioner Monaghan Medical Corp. and Patent Owner Smiths Medical
`
`ASD, Inc. (the “Parties”) jointly request termination of the inter partes review of
`
`U.S. Patent No. 7,059,324, Case No. IPR 2018-01466, without prejudice to either
`
`Party.
`
`
`
`I.
`
`Termination as to the Patent Owner and Petitioner Is Appropriate
`
`The inter partes review has not been instituted. Petitioner filed its petition
`
`on August 1, 2018, and Patent Owner’s Preliminary Response is not due until
`
`November 8, 2018. (See Papers 2-3.)
`
`The Parties have settled their dispute and have agreed to request termination
`
`of this inter partes review proceeding. More specifically, the Parties have agreed
`
`to settle and dismiss their related district court litigation (Monaghan Medical Corp.
`
`v. Smiths Medical ASD, Inc., No. 1:17-cv-00712 (D. Del.)), and have also agreed to
`
`jointly request termination of this proceeding and the related inter partes review
`
`proceeding for U.S. Patent No. 6,581,598, Case No. IPR 2018-01481.
`
`
`
`
`
`
`
`
`II. Treatment of Settlement Agreement As Business Confidential
`Information
`
`Case No. IPR 2018-01466
`U.S. Patent No. 7,059,324
`
`
`
`Pursuant to 37 C.F.R. § 42.74(c), the Parties’ settlement agreement has been
`
`made in writing and a true and correct copy of the settlement agreement is being
`
`filed concurrently with the present motion as Exhibit 1019.
`
`The Parties hereby jointly request that the settlement agreement be treated as
`
`business confidential information and be kept separate from the files of the above
`
`captioned IPR pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).
`
`
`
`III. Conclusion
`
`For the foregoing reasons, the Parties jointly and respectfully request
`
`termination of the present proceeding, Case No. IPR 2018-01466, without
`
`prejudice to either Party.
`
`
`
`Dated: October 24, 2018
`
`
`
`
`
`Respectfully Submitted,
`
`By: /David P. Lindner/
`David P. Lindner
`Reg. No. 53,222
`Brinks Gilson & Lione
`NBC Tower, Suite 3600
`455 N. Cityfront Plaza Dr.
`Chicago, IL 60611-5599
`dlindner@brinksgilson.com
`Counsel for Petitioner
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Case No. IPR 2018-01466
`U.S. Patent No. 7,059,324
`
`By: /Jeremy D. Peterson/
`Jeremy D. Peterson
`Reg. No. 52,115
`Morgan, Lewis & Bockius LLP
`1111 Pennsylvania Avenue, NW
`Washington, DC 20004-2541
`jeremy.peterson@morganlewis.com
`Counsel for Patent Owner
`
`
`
`Case No. IPR 2018-01466
`U.S. Patent No. 7,059,324
`
`EXHIBIT LIST
`
`
`Description
`Confidential Settlement Agreement
`[Available to Parties and Board Only]
`
`
`
`
`
`Exhibit
`1019
`
`
`
`Case No. IPR 2018-01466
`U.S. Patent No. 7,059,324
`
`CERTIFICATE OF SERVICE
`The undersigned certifies, in accordance with 37 C.F.R. § 42.6(e), that
`
`
`
`
`
`service was made on the Patent Owner as follows:
`
`Date of Service:
`
`
`
`October 24, 2018
`
`Manner of Service:
`
`
`
`Documents Served:
`
`Persons Served:
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`1) Electronic submission through the USPTO Patent Trial
`and Appeal Board End-to-End System
`2) Electronic Mail
`
`Joint Motion to Terminate Proceeding; Exhibit 1019
`
`Jeremy D. Peterson
`John D. Zele
`J. Kevin Fee
`Morgan, Lewis & Bockius LLP
`1111 Pennsylvania Avenue, NW
`Washington, DC 20004-2541
`jeremy.peterson@morganlewis.com
`john.zele@morganlewis.com
`kevin.fee@morganlewis.com
`
`
`
`By: /David P. Lindner/
`David P. Lindner
`
`
`
`