`571-272-7822
`
`Paper 13
`Date: July 1, 2021
`
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`VIEWRAY, INC. and VIEWRAY TECHNOLOGIES, INC.,
`Petitioner,
`
`v.
`
`VARIAN MEDICAL SYSTEMS, INC.,
`Patent Owner.
`
`
`IPR2020-01251 (Patent 9,082,520 B2)
`IPR2020-01403 (Patent 9,082,520 B2)
`IPR2020-01465 (Patent 8,637,841 B2)
`
`
`
`
`Before BRIAN J. McNAMARA, PATRICK M. BOUCHER, and
`GARTH D. BAER Administrative Patent Judges.
`
`BAER, Administrative Patent Judge.
`
`
`
`
`DECISION
`Settlement Prior to Institution of Trial
`37 C.F.R. § 42.74
`
`
`
`
`
`
`IPR2020-01251 (Patent 9,082,520 B2)
`IPR2020-01403 (Patent 9,082,520 B2)
`IPR2020-01465 (Patent 8,637,841 B2)
`
`
`I. INTRODUCTION
`
`With the Board’s authorization, Petitioner and Patent Owner
`(collectively “the Parties”) filed a Joint Motion to Terminate/Joint Motion to
`Dismiss in each of the above-identified proceedings. Paper 111 (“Joint
`Motions”). In support of each Joint Motion, the Parties filed a copy of a
`Settlement Agreement (Ex. 1022), as well as a Joint Request to Keep
`Separate (Paper 12 (“Joint Request”)).
`
`II. DISCUSSION
`
`In each of the Joint Motions, the Parties represent that they “have
`settled with respect to the challenged patent and have reached agreement to
`terminate this IPR” and that they “are also moving to dismiss related case
`Varian Medical Systems, Inc. v. ViewRay, Inc. et al., 3:19-cv-05697-SI
`(N.D. Cal.) and do not contemplate any litigation or proceedings involving
`the challenged patent in the foreseeable future.” Joint Motion 1. The parties
`further represent that “there are no collateral agreements or understandings
`made in connection with, or in contemplation of, the termination of this
`IPR.” Id. at 3.
`The above-referenced proceedings are each at an early stage, and we
`have not yet decided whether to institute trials. In view of the early stage of
`the proceedings and the settlement between the Parties, we determine that
`good cause exists to dismiss the petitions and terminate the proceedings with
`respect to the Parties.
`
`
`1 For expediency, we cite to papers and exhibits in IPR2020-01251. Similar
`papers were filed in IPR2020-01403 and IPR2020-01465.
`
`2
`
`
`
`IPR2020-01251 (Patent 9,082,520 B2)
`IPR2020-01403 (Patent 9,082,520 B2)
`IPR2020-01465 (Patent 8,637,841 B2)
`
`
`In the Joint Requests, the Parties request that the Settlement
`Agreement be treated as business confidential information and be kept
`separate from the files of the patents involved in these proceedings. Joint
`Request 1. After reviewing the Settlement Agreement between Petitioner
`and Patent Owner, we find that the Settlement Agreement contains
`confidential business information regarding the terms of settlement. We
`determine that good cause exists to treat the Settlement Agreement between
`Petitioner and Patent Owner as business confidential information pursuant to
`37 C.F.R. § 42.74(c).
`This Order does not constitute a final written decision pursuant to 35
`U.S.C. § 318(a).
`
`III. ORDER
`
`Accordingly, for the reasons discussed above, it is:
`
`ORDERED that the Joint Motions are granted, and the petitions in
`IPR2020-01251, IPR2020-01403, and IPR2020-01465 are dismissed and
`these proceedings are terminated; and
`
`FURTHER ORDERED that the Joint Requests are granted, and the
`Settlement Agreement shall be kept separate from the files of
`Patents 9,082,520 B2 and 8,637,841 B2 and be made available only to
`Federal Government agencies on written request, or to any person on a
`showing of good cause, pursuant to 37 C.F.R. § 42.74(c).
`
`
`
`3
`
`
`
`IPR2020-01251 (Patent 9,082,520 B2)
`IPR2020-01403 (Patent 9,082,520 B2)
`IPR2020-01465 (Patent 8,637,841 B2)
`
`FOR PETITIONER:
`
`Howard Wisnia
`WISNIA PC
`howard@wisnialaw.com
`
`James Conley
`PILLSBURY WINTHROP SHAW PITTMAN LLP
`james.conley@pillsburylaw.com
`
`FOR PATENT OWNER:
`
`Harper Batts
`Chris Ponder
`Jeffrey Liang
`RICHTER & HAMPTON LLP
`hbatts@sheppardmullin.com
`cponder@sheppardmullin.com
`jliang@sheppardmullin.com
`
`
`4
`
`
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