`571-272-7822
`
`Paper 24
`Date: June 8, 2020
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`MEDTRONIC, INC.,
`Petitioner,
`v.
`BOARD OF REGENTS, THE UNIVERSITY OF TEXAS SYSTEM and
`TISSUEGEN, INC.,
`Patent Owner.
`
`IPR2019-00037 (Patent 6,596,296 B1)
`IPR2019-00038 (Patent 7,033,603 B2)1
`
`
`
`
`
`
`
`
`
`Before SUSAN L. C. MITCHELL, AVELYN M. ROSS,
`KRISTI L. R. SAWERT, Administrative Patent Judges.
`ROSS, Administrative Patent Judge.
`
`
`
`DECISION
`Settlement Prior to Institution of Trial
`Granting Request to Treat Settlement Agreement as
`Business Confidential Information
`37 C.F.R. §§ 42.74, 42.72(c)
`
`
`1 We exercise our discretion to issue one order to be entered in both cases.
`The parties are not authorized to use this style heading for subsequent papers
`without Board approval.
`
`
`
`IPR2019-00037 (Patent 6,596,296 B1)
`IPR2019-00038 (Patent 7,033,603 B2)
`
`
`On June 4, 2020, with our prior authorization, Medtronic, Inc.
`(“Petitioner”)2 and The Board of Regents, The University of Texas System
`and TissueGen, Inc. (“Patent Owner”) (collectively, “the parties”) filed a
`Joint Motion to Terminate. IPR2019-00037, Paper 19; IPR2019-00038,
`Paper 21 (collectively “Motion”). Together with the Motion, the parties
`filed a copy of their written Confidential Release and Settlement Agreement
`(IPR2019-00037, Ex. 1057; IPR2019-00038, Ex. 1044, collectively
`“Agreement”) and a Joint Request to Treat Settlement Agreement as
`Business Confidential Information and to Keep Separate. IPR2019-00037,
`Paper 20; IPR2019-00038, Paper 22 (collectively “Joint Request”).
`The Board generally expects that a case “will terminate after the filing
`of a settlement agreement, unless the Board has already decided the merits.”
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14,
`2012); see 35 U.S.C. §317(a) and 37 C.F.R. § 42.72. Though a decision on
`institution has not yet issued, that decision is set to issue no later than
`June 12, 2020. The parties, however, indicate that the Agreement resolves
`the dispute regarding U.S. Patent Nos. 6,596,296 and 7,033,603 and related
`patents. Motion 1; Agreement 2–4. The parties state that “[n]o dispute
`remains between the Parties involving the challenged patent[s]” and “[t]here
`are no currently pending district court litigations involving the challenged
`patent[s], and all currently pending IPR proceedings between the Parties
`involving the challenged patent[s] will be dismissed with prejudice”
`according to the terms of the Agreement. Motion 1.
`
`2 Medtronic, Inc remains as the sole Petitioner in this matter. “Tyrx, Inc. no
`longer exists as a separate entity,” having merged into Medtronic, Inc.
`IPR2019-00037, Paper 21, IPR2019-00038, Paper 23.
`
`2
`
`
`
`IPR2019-00037 (Patent 6,596,296 B1)
`IPR2019-00038 (Patent 7,033,603 B2)
`
`
`Under these circumstances, we determine that it is appropriate to
`terminate this preliminary proceeding with respect to both Petitioner and
`Patent Owner. Accordingly, we grant the parties’ joint motion to terminate.
`See 35 U.S.C. § 317(a); 37 C.F.R. §§ 42.5(a), 42.74. After reviewing the
`Agreement, we find that it contains confidential business information
`regarding the terms of the settlement and that good cause exists to treat the
`Agreement as business confidential information to be kept separate from the
`patent file. See 35 U.S.C. § 317(b); 37 C.F.R. § 42.74.
`
`
`ORDER
`In view of the foregoing, it is
`ORDERED that the Joint Request to Treat Settlement Agreement as
`Business Confidential (IPR2019-00037, Paper 20; IPR2019-00038, Paper
`22) is granted;
`FURTHER ORDERED that the Settlement Agreement (IPR2019-
`00037, Ex. 1057; IPR2019-00038, Ex. 1044) shall be treated as business
`confidential information and shall be kept separate from the patent file; and
`FURTHER ORDERED that the Parties’ Joint Motion to Terminate
`(IPR2019-00037, Paper 19; IPR2019-00038, Paper 21) is granted and this
`proceeding is hereby terminated.
`
`
`
`
`
`3
`
`
`
`IPR2019-00037 (Patent 6,596,296 B1)
`IPR2019-00038 (Patent 7,033,603 B2)
`
`FOR PETITIONER:
`
`Jovial Wong
`WINSTON & STRAWN LLP
`jwong@winston.com
`
`
`FOR PATENT OWNER:
`
`Gerald B. Hrycyszyn
`Richard F. Giunta
`WOLF, GREENFIELD & SACKS, P.C.
`GHrycyszyn-PTAB@wolfgreenfield.com
`RGiunta-PTAB@wolfgreenfield.com
`
`Stephen Finch
`Ross Krutsinger
`FINCH & MALONEY, PLLC
`sfinch@finchmaloney.com
`rkrutsinger@finchmaloney.com
`
`4
`
`
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