`Tel: 571-272-7822
`
`
`
`
`Paper 8
`Entered: January 24, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`OXFORD NANOPORE TECHNOLOGIES, INC.,
`Petitioner
`v.
`PACIFIC BIOSCIENCES OF CALIFORNIA, INC.,
`Patent Owner
`_______________
`
`Case IPR2018-01785
`Patent US 9,783,929 B2
`_______________
`
`
`Before ULRIKE W. JENKS, ZHENYU YANG, and JAMES A. WORTH,
`Administrative Patent Judges.
`
`JENKS, Administrative Patent Judge.
`
`
`
`TERMINATION
`Dismissing the Proceeding
`35 U.S.C. § 317(a); 37 C.F.R. § 42.5(a)
`
`
`
`
`
`
`
`
`
`
`
`IPR2019-01785
`Patent US 9,783,929 B2
`
`The parties have requested that the above-captioned proceeding be
`terminated. The Board authorized Petitioner to file a motion to terminate the
`above-captioned proceeding on January 2, 2019. On January 11, 2019, the
`Petitioner filed a “motion to withdraw petition for inter parties review” in the
`above-captioned proceeding. Paper 7, 1. Patent Owner does not oppose the
`motion. Id. at 2.
`Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under this
`chapter shall be terminated with respect to any petitioner upon the joint request of
`the petitioner and patent owner, unless the Office has decided the merits of the
`proceeding before the request for termination is filed.” This case has not been
`decided on the merits and is still in the preliminary proceeding stage. A
`preliminary proceeding begins with the filing of a petition for instituting a trial and
`ends with a written decision as to whether trial will be instituted. See 37 C.F.R.
`§ 42.2. Petitioner filed its Petition on September 24, 2018. Patent Owner has not
`filed Preliminary Response. A decision on institution, which has not yet been
`made, is due on or before April 11, 2019.
`The motion states that Petitioner, without opposition from Patent Owner,
`“requests the Board withdraw this petition for inter partes review and thereby
`terminate IPR2018-01785.” Paper 7, 2. The motion represents that Patent Owner
`does not oppose termination, and on this basis we construe this motion as a joint
`request for this purpose. Id.
`The parties represent that the related matters involving US 9,783,929 B2 (the
`’929 patent”), namely, Pacific Biosciences of California, Inc., v. Oxford Nanopore
`Technologies, Inc., which was consolidated into actions 1:17-cv-00275-LPS, 1:17-
`cv-01353-LPS (D. Del.), in which Petitioner is a defendant; and IPR2018-01792
`filed on September 25, 2018 are both ongoing. Paper 7, 2.
`
` 2
`
`
`
`
`
`
`
`IPR2019-01785
`Patent US 9,783,929 B2
`
`Under 37 C.F.R. § 42.74(b), “[a]ny agreement or understanding between the
`parties made in connection with, or in contemplation of, the termination of a
`proceeding shall be in writing and a true copy shall be filed with the Board before
`the termination of the trial.” Based on e-mails to the Board seeking authorization
`to file this motion, we understand that the sole agreement among the parties is that
`Patent Owner does not oppose Petitioner’s request to withdraw its Petition.
`Based on the facts of the case, and in view of the parties’ joint request for
`termination of this proceeding (see Paper 7, 2 (Petitioner filed an unopposed
`motion requesting termination of IPR2018-01785)), we determine that it is
`appropriate to dismiss the petition as to both Petitioner and Patent Owner without
`rendering either a decision to institute or a final written decision. See 37 C.F.R.
`§ 42.5(a).
`Therefore, the joint motion to terminate is granted. This paper does not
`constitute a final written decision pursuant to 35 U.S.C. § 318(a).
`Accordingly, it is
`ORDERED that the motion to terminate the proceeding is granted; and
`FURTHER ORDERED that the Petition for Inter Partes Review of the
`above-referenced patent is dismissed.
`
`
`
`
`
`
`
` 3
`
`
`
`
`
`
`
`IPR2019-01785
`Patent US 9,783,929 B2
`
`PETITIONER:
`Steven Lendaris
`Carolyn Pirraglia
`BAKER BOTTS LLP
`steven.lendaris@bakerbotts.com
`carolyn.pirraglia@bakerbotts.com
`Oxford929IPR@bakerbotts.com
`
`PATENT OWNER:
`Derek Walter
`Adrian Percer
`WEIL, GOTSHAL & MANGES, LLP
`derek.walter@weil.com
`adrian.percer@weil.com
`PacBio.Oxford.Delaware@weil.com
`
`
` 4
`
`
`
`
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
