`571.272.7822
`
`Paper 32
`Entered: July 23, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ILLUMINA, INC.,
`Petitioner,
`
`v.
`
`TRUSTEES OF COLUMBIA UNIVERSITY
`IN THE CITY OF NEW YORK,
`
`Patent Owner.
`____________
`
`IPR2020-00988 (Patent 10,407,458 B2)
`IPR2020-01065 (Patent 10,407,459 B2)
`IPR2020-01125 (Patent 10,457,984 B2)
`IPR2020-01177 (Patent 10,435,742 B2)
` IPR2020-01323 (Patent 10,428,380 B2)1
`____________
`
`Before SUSAN L. C. MITCHELL, ZHENYU YANG, JAMES A. WORTH,
`ROBERT A. POLLOCK, MICHELLE N. ANKENBRAND, and
`DEVON ZASTROW NEWMAN, Administrative Patent Judges.2
`
`PER CURIAM
`
`1 This Order applies to each of the above-listed proceedings. We exercise
`our discretion to issue one Order to be filed in each proceeding. Unless
`otherwise authorized, the parties shall not use this heading style in any
`subsequent papers.
`2 This is not a decision by an expanded panel.
`
`
`
`IPR2020-00988 (Patent 10,407,458 B2)
`IPR2020-01065 (Patent 10,407,459 B2)
`IPR2020-01125 (Patent 10,457,984 B2)
`IPR2020-01177 (Patent 10,435,742 B2)
`IPR2020-01323 (Patent 10,428,380 B2)
`
`
`
`DECISION
`Denying Without Prejudice Joint Motion to Terminate Proceedings
`Denying Without Prejudice Joint Request to File Settlement Agreement as
`Business Confidential
`35 U.S.C. § 317; 37 C.F.R. §§ 42.72, 42.74
`
`
`I. INTRODUCTION
`In each of the above-identified proceedings, the parties have filed a
`
`Joint Motion to Terminate the proceeding on the basis that the parties have
`reached a settlement. See 35 U.S.C. § 317; Paper 32 (“Motion”).3 Along
`with the Joint Motion to Terminate, the parties also filed a copy of their
`written settlement agreement (“Settlement Agreement”) (Ex. 1169), as well
`as a Joint Request to File the Settlement Agreement as Business Confidential
`Information pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) (“Joint
`Request”) (Paper 33).
`
`II. DISCUSSION
`
`
`
`Under the statute:
`Any agreement or understanding between the patent owner and
`a petitioner, including any collateral agreements referred to in
`such agreement or understanding, made in connection with, or
`in contemplation of, the termination of an inter partes review
`under this section shall be in writing and a true copy of such
`agreement or understanding shall be filed in the Office before
`
`
`3 Unless otherwise noted, Paper and Exhibit numbers herein refer to
`IPR2020-00988. The parties have filed similar papers and exhibits in
`IPR2020-01065, IPR2020-01125, IPR2020-01177, and IPR2020-01323.
`
`2
`
`
`
`IPR2020-00988 (Patent 10,407,458 B2)
`IPR2020-01065 (Patent 10,407,459 B2)
`IPR2020-01125 (Patent 10,457,984 B2)
`IPR2020-01177 (Patent 10,435,742 B2)
`IPR2020-01323 (Patent 10,428,380 B2)
`
`
`the termination of the inter partes review as between the
`parties.
`35 U.S.C. § 317(b) (emphasis added).
`
`Similarly, 37 C.F.R. § 42.74(b) requires that “[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”
`(emphasis added).
`The Settlement Agreement the parties filed (Ex. 1169) does not
`appear to include all collateral agreements referred to, made in connection
`with, or in contemplation of, the termination of this proceeding. In
`particular, the Settlement Agreement states that “nothing in this Agreement
`shall be construed as replacing or superseding any of the terms of that
`certain Settlement Agreement, dated as of July 2017 . . . ” Ex. 1169 ¶ 6.11.
`The parties, however, have not filed the referenced July 2017 settlement
`agreement with the Board.
`Accordingly, we deny without prejudice the parties’ Joint Motion to
`Terminate each proceeding. See DTN, LLC v. Farms Technology, LLC,
`IPR2018-01412, Paper 21 (PTAB June 14, 2019) (precedential) (explaining
`that collateral agreements referenced in a settlement agreement must be filed
`before the proceeding may be terminated via settlement under 35 U.S.C.
`§ 317). For the same reasons, we also deny without prejudice the parties’
`Joint Request to File the Settlement Agreement as Business Confidential
`Information.
`
`3
`
`
`
`IPR2020-00988 (Patent 10,407,458 B2)
`IPR2020-01065 (Patent 10,407,459 B2)
`IPR2020-01125 (Patent 10,457,984 B2)
`IPR2020-01177 (Patent 10,435,742 B2)
`IPR2020-01323 (Patent 10,428,380 B2)
`
`
`The parties are authorized to file a renewed motion to terminate,
`together with a renewed joint request to treat the Settlement Agreement and
`the 2017 settlement agreement as business confidential.
`
`
`III. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that the Joint Motion to Terminate in each proceeding is
`denied without prejudice;
`FURTHER ORDERED that the Joint Request to File the Settlement
`Agreement as Business Confidential in each proceeding is denied without
`prejudice;
`FURTHER ORDERED that the parties are authorized to file a
`renewed joint motion to terminate the proceeding along with an updated
`settlement agreement, including the 2017 settlement agreement, within five
`business days of this ORDER; and
`FURTHER ORDERED that the parties may request that the exhibit(s)
`that constitute the settlement agreement to be treated as business confidential
`information to be kept separate from the patent file, as specified in 37 C.F.R.
`§ 42.74(c).
`
`
`
`
`
`
`4
`
`
`
`IPR2020-00988 (Patent 10,407,458 B2)
`IPR2020-01065 (Patent 10,407,459 B2)
`IPR2020-01125 (Patent 10,457,984 B2)
`IPR2020-01177 (Patent 10,435,742 B2)
`IPR2020-01323 (Patent 10,428,380 B2)
`
`FOR PETITIONER:
`
`Kerry Taylor
`Nathanael R. Luman
`Michael L. Fuller
`William R. Zimmerman
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2kst@knobbe.com
`2nrl@knobbe.com
`2mlf@knobbe.com
`2wrz@knobbe.com
`
`FOR PATENT OWNER:
`
`John P. White
`Gary J. Gershik
`COOPER & DUNHAM LLP
`jwhite@cooperdunham.com
`ggershik@cooperdunham.com
`
`John D. Murnane
`Justin J. Oliver
`VENABLE LLP
`jdmurnane@venable.com
`joliver@venable.com
`
`
`
`5
`
`