`UNITED STATES PATENT AND TRADEMARK OFFICE
`________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________________
`
`VERASONICS, INC.,
`
`Petitioner
`
`v.
`
`SUPERSONIC IMAGINE, S.A.
`
`Patent Owner.
`
`________________________
`
`Inter Partes Review No. IPR2019-00799
`
`U.S. Patent No. 7,252,004
`________________________
`
`
`JOINT MOTION TO TERMINATE UNDER 37 C.F.R. § 42.71
`
`
`
`
`
`
`
`
`
`IPR2019-00799 Paper No. 7
`Patent No. 7,252,004
`
`
`As authorized by the Board in an email sent on May 21, 2019, pursuant to 37
`
`
`
`
`
`C.F.R. §§ 42.71 and 42.74, Petitioner and Patent Owner jointly request termination
`
`of the proceeding related to the petition for inter partes review of U.S. Pat. No.
`
`7,252,004.
`
`
`
`The parties have settled their dispute and executed a settlement agreement to
`
`terminate this proceeding and the parties’ related district court litigation:
`
`Verasonics, Inc. v. Supersonic Imagine, S.A., Case No. 2:17-cv-01764 pending in
`
`the U.S. District Court for the Western District of Washington.
`
`
`
`The parties’ settlement agreement is in writing, and a true and correct copy
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`is being filed under 37 C.F.R. § 42.74(b). The parties hereby represent that there
`
`are no other agreements, oral or written, between the parties made in connection
`
`with, or in contemplation of, the termination of this proceeding. The parties are
`
`also concurrently filing a joint request to treat the settlement agreement as business
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`confidential information and keep it separate from the files of this proceeding and
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`the involved patent under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).
`
`
`
`Dismissal of this proceeding under 37 C.F.R. § 42.71(a) is proper because
`
`the Board has yet to issue an institution decision, and these proceedings are still at
`
`an early stage. See Samsung Elecs. Co. v. Fundamental Innovation Sys. Int’l, Ltd.,
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`IPR2018-00605 (PTAB July 16, 2018) (Paper No. 10). Further, all current
`
`disputes between the parties regarding U.S. Patent No. 7,252,004 have been
`
`
`
`
`
`
`resolved. Accordingly, the parties respectfully request termination of this
`
`IPR2019-00799 Paper No. 7
`Patent No. 7,252,004
`
`proceeding.
`
`
`
`
`
`Dated this 29th day of May, 2019.
`
`
`
`Respectfully submitted,
`
`
` /Dion M. Bregman/
`Dion M. Bregman, Reg. No. 45,645
`MORGAN, LEWIS & BOCKIUS
`1400 Page Mill Road
`Palo Alto, CA 94304
`
`Attorney for Patent Owner
`SuperSonic Imagine, S.A.
`
`
`
`
` /E. Russell Tarleton/
`E. Russell Tarleton, Reg. No. 31,800
`SEED IP LAW GROUP LLP
`701 Fifth Avenue, Suite 5400
`Seattle, WA 98104
`
`Attorney for Petitioner
`Verasonics, Inc.
`
`
`
`
`
`IPR2019-00799 Paper No. 7
`Patent No. 7,252,004
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. §42.6(e), the undersigned hereby certifies that on May
`
`
`
`
`
`29, 2019, a complete and entire copy of the foregoing JOINT MOTION TO
`
`TERMINATE was electronically served in its entirety on the Patent Owner’s
`
`below-listed counsel of record:
`
`Dion M. Bregman (Reg. No. 45,645)
`Alexander B. Stein (Reg. No. 71,397)
`MORGAN, LEWIS & BOCKIUS LLP
`1400 Page Mill Road
`Palo Alto, CA 94304
`Tel.: +1.650.843.7519
`Fax: +1.650.843.4001
`dion.bregman@morganlewis.com
`alexander.stein@morganlewis.com
`Supersonic-IPR@morganlewis.com
`
` /E. Russell Tarleton/____________
`E. Russell Tarleton, Reg. No. 31,800
`SEED IP LAW GROUP LLP
`701 Fifth Avenue, Suite 5400
`Seattle, WA 98104
`
`Attorney for Petitioner Verasonics, Inc.
`
`
`Dated: May 29, 2019
`
`
`
`
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