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`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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`____________
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`OXFORD NANOPORE TECHNOLOGIES, INC.
`Petitioner,
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`v.
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`PACIFIC BIOSCIENCES OF CALIFORNIA, INC.
`Patent Owner.
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`____________
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`Case IPR2018-01795
`Patent 9,678,056
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`____________
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`MOTION TO WITHDRAW PETITION FOR INTER PARTES REVIEW
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`- 1 -
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`I.
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`INTRODUCTION
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`The Board authorized Petitioner Oxford Nanopore Technologies, Inc.
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`(“Oxford” or “Petitioner”) to file a motion to withdraw its petition for inter partes
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`review and thereby terminate IPR2018-01795 directed to U.S. Patent No. 9,678,056
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`(“the ’056 Patent”) on March 15, 2019. Oxford now so moves. IPR2018-01795 is
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`in its preliminary phase and Patent Owner Pacific Biosciences of California, Inc.
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`(“Patent Owner”) does not oppose this motion. To preserve the Board’s and parties’
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`resources and to achieve a just, speedy, and inexpensive resolution to this dispute,
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`Oxford requests the Board withdraw this petition for inter partes review and thereby
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`terminate IPR2018-01795.
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`II. RELATED PROCEEDINGS
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`The ’056 Patent is subject to a pending lawsuit entitled Pacific Biosciences of
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`California, Inc., v. Oxford Nanopore Technologies, Inc., which was consolidated
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`into actions 1:17-cv-00275-LPS, 1:17-cv-01353-LPS (D. Del.), in which Petitioner
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`is a defendant.
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`III. ARGUMENT
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`Good cause exists to withdraw Oxford’s petition for inter partes review and
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`thereby terminate IPR2018-01795 pursuant to 37 C.F.R. § 42.71(a) and § 42.72.
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`IPR2018-01795 is in its preliminary stage as the Board has not yet reached the merits
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`or issued a decision on institution. Accordingly, withdrawal at this time would
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`preserve both the Board’s and the parties’ resources in accordance with the intent of
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`37 C.F.R. § 42.1(b) “to secure the just, speedy, and inexpensive resolution every
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`proceeding.”
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`Withdrawal of Oxford’s petition for inter partes review is also a just
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`resolution as Patent Owner will not be prejudiced by such withdrawal and
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`subsequent termination of IPR2018-01795. The lack of any such prejudice is
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`evidenced by Patent Owner’s agreement that it does not object to the filing of this
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`motion.
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`IV. CONCLUSION
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`Petitioner respectfully requests withdrawal of the instant Petition for inter
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`partes review and that the thereby Board terminate IPR2018-01795.
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`Date: March 25, 2019
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`Respectfully submitted,
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`/Steven P. Lendaris/____________
`Steven P. Lendaris (Reg. No. 53,202)
`Carolyn M. Pirraglia (Reg. No. 75,365)
`30 Rockefeller Plaza, 45th Floor
`New York, NY 10112-4498
`Phone: 212-408-2500
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`Attorneys for Petitioner,
`Oxford Nanopore Technologies, Inc.
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`CERTIFICATE OF SERVICE
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`In accordance with 37 C.F.R. §§ 42.6(e) and 42.105, the undersigned certifies
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`that on March 25, 2019, a complete and entire copy of the foregoing was provided
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`by electronic service to counsel retained by Patent Owner in the Related Matters
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`identified herein:
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`Date: March 25, 2019
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`PacBio.Oxford.Delaware@weil.com
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`Respectfully submitted,
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`BAKER BOTTS L.L.P.
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`Respectfully submitted,
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`/Steven P. Lendaris/____________
`Steven P. Lendaris (Reg. No. 53,202)
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