From:
`To:
`Cc:
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`Subject:
`
`Date:
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`Chow, Keyna
`Trials
`McKeown, Scott; Rich Coller; Lestin Kenton; Jon Wright; Richard M. Bemben; Christian A. Camarce; PTAB
`Account; PTAB Account
`IPR2021-01278, IPR2021-01279, IPR2021-01284, IPR2021-01285, IPR2021-01402, IIPR2021-01403, IPR2021-
`01404, IPR2021-01405, IPR2022-00126, and IPR2022-00127
`Friday, March 18, 2022 5:42:35 PM
`
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`
`Honorable Board:
`
`Petitioner Lumenis Be Ltd. requests authorization from the Board to file a Motion to Withdraw
`Petitions IPR2021-01278 (’894), IPR2021-01279 (’895), IPR2021-01284 (’895), IPR2021-01285 (’894),
` IPR2021-01402 (’295), IPR2021-01403 (’295), IPR2021-01404 (’187), IPR2021-01405 (’187),
` IPR2022-00126 (’576), and IPR2022-00127 (’576). Good cause exists to withdraw the petitions and
`terminate the proceedings pursuant to 37 C.F.R. § 42.71(a) because inter partes review has not been
`instituted, and there are no underlying district court ligations between the parties. The withdrawals
`will free the resources of the parties and the Board since these cases re-present issues decided in
`earlier denied proceedings. Patent Owner BTL Healthcare Technologies A.S. has indicated that it
`opposes withdrawal of the petitions and termination of the proceedings and their comments are
`included below.
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`To the extent a conference is necessary, Petitioner will accommodate the Board’s schedule.
`
`Respectfully submitted,
`
`Scott A. McKeown
`Counsel for Petitioner Lumenis Be Ltd.
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`Patent Owner’s Comments:
`
`Patent Owner BTL Healthcare Technologies A.S. opposes Petitioner’s request for authorization to file
`motions to terminate the ten above-reference IPR proceedings. And if such motions are authorized,
`Patent Owner requests authorization to file oppositions in response.
`
`Patent Owner disagrees that good cause exists to terminate these proceedings because: (1) all pre-
`trial issues have been fully briefed, (2) institution decisions are due soon (between March 23 and
`April 21), (3) the Board has already invested significant resources in evaluating the art and
`arguments that overlap with those of the prior, related IPRs where institution was recently denied,
`(4) the parties have not reached any settlement agreement, and (5) Petitioner has not provided any
`assurance that it will not challenge these patents again at the PTAB.
`
`Patent Owner requests a call with the Board to discuss these issues and can be available:
`st
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`

`

`Monday March 21 from 10:00 am – 5:00 pm Eastern; or
`Tuesday March 22nd from 10:30 am – 5:00 pm Eastern.
`
`
`Respectfully submitted,
`Richard D. Coller III
`Counsel for Patent Owner BTL
`
`
`Keyna Chow
`ROPES & GRAY LLP
`T +1 650 617 4750 | M +1 408 832 9162
`1900 University Avenue, 6th Floor
`East Palo Alto, CA 94303
`Keyna.Chow@ropesgray.com
`www.ropesgray.com
`
`___________________________________
`2021 Law360
`Technology Group of the Year
`
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