`UNITED STATES PATENT AND TRADEMARK OFFICE
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`
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`ILOODA CO., LTD. and JEISYS MEDICAL INC.,
`Petitioners
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`v.
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`SERENDIA, LLC,
`Patent Owner
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`
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`U.S. PATENT NO. 9,775,774
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`Case No. IPR2024-00383
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`
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`JOINT MOTION TO TERMINATE ILOODA’S
`PARTICIPATION IN THE PROCEEDING
`AND
`JOINT REQUEST TO KEEP THE SETTLEMENT AGREEMENT
`SEPARATE AND CONFIDENTIAL AND ACCESSIBLE
`ONLY TO THE BOARD, ILOODA, AND SERENDIA
`
`
`
`
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`IPR2024-00383
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`Pursuant to 35 U.S.C. § 317, 37 C.F.R. §§ 42.72 and 42.74, and the Board’s
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`authorization by email dated April 3, 2024, Petitioner Ilooda Co., Ltd. (“Ilooda”)
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`and Patent Owner Serendia, LLC (“Serendia”) jointly move to terminate the present
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`inter partes review proceeding with respect to Ilooda in light of the settlement of their
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`dispute regarding U.S. Patent No. 9,775,774 (“the ’774 patent”); and jointly request
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`to keep the copy of the settlement agreement filed along with this paper (Confidential
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`Exhibit 1026) separate and confidential and accessible only to the Board, Ilooda, and
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`Serendia.
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`The parties have filed a true and complete copy of the settlement agreement
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`along with this paper, as required by 35 U.S.C. § 317(b). See Confidential Exhibit
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`1026. The moving parties certify that there are no other agreements or
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`understandings between them, including any collateral agreements, made in
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`connection with, or in contemplation of, the termination of this proceeding with
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`respect to Ilooda.
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`I.
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`PROCEDURAL BACKGROUND
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`The Petition in this proceeding was filed on January 9, 2024 by Petitioners
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`Ilooda and Jeisys. The Patent Owner’s preliminary response is due on April 23, 2024.
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`See Paper No. 4. The Board has not yet issued a decision on institution.
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`On February 28, 2024, Ilooda and Serendia entered into a settlement
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`agreement that resolves the dispute between Petitioner Ilooda and non-party Cutera,
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`1
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`IPR2024-00383
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`Inc. (“Cutera”) and Patent Owner Serendia regarding the ’774 patent. See
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`Confidential Exhibit 1026. On April 1, 2024, Ilooda, Cutera, and Serendia filed a
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`joint motion to terminate the ITC investigation (Certain Dermatological Treatment
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`Devices and Components Thereof, Inv. No. 337-TA-1356) as to Respondents Ilooda
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`and Cutera based on settlement and requested the Administrative Law Judge limit
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`service of the settlement agreement to Serendia, Ilooda, and the Commission
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`Investigative Staff. The motion has not been granted yet.
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`The parties contacted the Board on April 3, 2024 by email, to request
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`authorization to file a joint motion to terminate and joint request to keep the copy of
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`the settlement agreement filed as Confidential Exhibit 1026 separate and
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`confidential and accessible only to the Board, Ilooda, and Serendia. The Board
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`authorized these filings in a responsive email on April 3, 2024.
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`The parties note that Petitioner Jeisys is not a party to the settlement
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`agreement. Therefore, the parties are not requesting termination of the proceeding
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`as to Jeisys. Additionally, the settlement agreement is being filed as “Only to Board”
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`so that Jeisys does not have access to it.
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`II. GOOD CAUSE EXISTS TO TERMINATE THE ABOVE-CAPTIONED
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`IPR AS TO PETITIONER ILOODA
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`First, Petitioner Ilooda and Patent Owner Serendia jointly request that this
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`inter partes review be terminated with respect to Ilooda, in light of the settlement of
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`2
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`IPR2024-00383
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`their dispute regarding the ’774 patent.
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`Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under this chapter
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`shall be terminated with respect to any petitioner upon the joint request of the
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`petitioner and the patent owner, unless the Office has decided the merits of the
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`proceeding before the request for termination is filed.” Additionally, as the Board
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`has explained:
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`There are strong public policy reasons to favor settlement between the
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`parties to a proceeding. . . . The Board expects that a proceeding will
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`terminate after the filing of a settlement agreement, unless the Board
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`has already decided the merits of the proceeding. 35 U.S.C. §§ 317(a),
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`327.
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`Consolidated Trial Practice Guide (November 2019), page 86 § II.N.
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`Termination of the present inter partes review with respect to Ilooda is
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`appropriate because the moving parties have settled their entire dispute regarding
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`the ’774 patent and the Office has not yet decided the merits of the proceeding. Other
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`factors weigh in favor of terminating this IPR proceeding as to Ilooda. First, the above-
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`captioned petition is in its early phase, and the Board has not yet made a decision
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`regarding institution of the petition, and no decisions on the merits of the proceeding
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`have been made. Dismissal of the proceedings at this early stage promotes the
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`Congressional goal to establish a more efficient and streamlined patent system that
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`limits unnecessary and counterproductive litigation costs. See 37 C.F.R. § 42.1(b).
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`3
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`IPR2024-00383
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`The Board regularly grants motions to terminate under similar circumstances. See, e.g.
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`RPC Formatec GMBH v. Trudell Medical Int’l, Case Nos. IPR2014-01040, IPR2014-
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`01127, Paper 10 (Oct. 24, 2014) (granting joint motion to terminate); Samsung
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`Electronics Co., Ltd. v. Telefonaktiebolaget LM Ericsson, IPR2021-00446, Paper 7
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`(PTAB, Aug. 3, 2021) (same); Huawei Technologies Co., Ltd. v. Verizon Patent and
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`Licensing Inc., IPR2021-00616, -00617, Paper 9 (PTAB, Sept. 9, 2021) (same).
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`Further, termination of the proceeding as to Ilooda is a just and fair resolution.
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`Ilooda and Serendia agree that neither Ilooda and Serendia will be prejudiced by the
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`termination. Moreover, the remaining Petitioner, Jeisys, has confirmed that it does not
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`object to the termination of this proceeding as to Ilooda. Finally, Ilooda and Serendia
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`will benefit from preserving resources that would otherwise be expended if this
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`motion is denied.
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`Therefore, Petitioner Ilooda and Patent Owner Serendia respectfully submit
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`this inter partes review should be terminated with respect to Ilooda.
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`III. JOINT REQUEST TO TREAT SETTLEMENT AGREEMENT AS
`
`BUSINESS CONFIDENTIAL INFORMATION
`
`Petitioner Ilooda and Patent Owner Serendia jointly request that the
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`settlement agreement filed as Confidential Exhibit 1026 (a) be treated as business
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`confidential information; (b) be kept separate from the file of the involved patent;
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`(c) be accessible only to the Board, Ilooda, and Serendia, and not accessible to
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`4
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`IPR2024-00383
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`Petitioner Jeisys; and (d) be made available only as permitted pursuant to the
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`provisions of 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).
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`35 U.S.C. § 317(b) provides that:
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`At the request of a party to the proceeding, the agreement or
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`understanding shall be treated as business confidential information,
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`shall be kept separate from the file of the involved patents, and shall be
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`made available only to Federal Government agencies on written request,
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`or to any person on a showing of good cause
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`Likewise, 37 C.F.R. § 42.74(c) provides that:
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`A party to a settlement may request that the settlement be treated as
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`business confidential information and be kept separate from the files of
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`an involved patent or application. The request must be filed with the
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`settlement. If a timely request is filed, the settlement shall only be
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`available:
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`(1) To a Government agency on written request to the Board; or
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`(2) To any other person upon written request to the Board to make the
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`settlement agreement available, along with the fee specified in §
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`42.15(d) and on a showing of good cause.
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`The present request, which is being filed along with the Settlement
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`Agreement, is timely and in accordance with the foregoing authority. Petitioner
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`Jeisys does not oppose this request.
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`Therefore, Petitioner Ilooda and Patent Owner Serendia respectfully submit
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`that this request for confidential treatment should be granted.
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`5
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`Date: April 9, 2024
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`Respectfully submitted,
`
`IPR2024-00383
`
`
`
`
`
`
`/Scott Weidenfeller/
`Scott Weidenfeller (Reg. No. 54,531)
`Wonseon Kiersten Choi (Reg. No. 73,012)
`COVINGTON & BURLING LLP
`One CityCenter,
`850 Tenth Street, NW
`Washington, DC 20001-4956
`Telephone: (202)662-5923
`sweidenfeller@cov.com
`Ilooda-IPR@cov.com
`wchoi@cov.com
`
`Anupam Sharma (Reg. No. 55,609)
`Peter P. Chen (Reg. No. 39,631)
`COVINGTON & BURLING LLP
`3000 El Camino Real,
`5 Palo Alto Square,
`Palo Alto, CA 94306
`Telephone: (650) 632-4720
`asharma@cov.com
`pchen@cov.com
`
`Counsel for Petitioner Ilooda Co., Ltd.
`
`/Charles H. Sanders/
`Charles H. Sanders (Reg. No. 47,053)
`charles.sanders@lw.com
`Latham & Watkins LLP
`200 Clarendon Street
`Boston, MA 02116
`Telephone: (617) 948-6000
`Fax: (617) 948-6001
`
`Counsel for Patent Owner Serendia, LLC
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`6
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`
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6, I hereby certify that the foregoing Joint Motion
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`to Terminate Ilooda’s Participation in the Proceeding and Joint Request to Treat
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`Settlement Agreement as Business Confidential Information was served, together
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`with Confidential Exhibit 1026, by electronic mail on the following counsel of
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`record for Patent Owner:
`
`Charles H. Sanders
`Charles.sanders@lw.com
`Latham & Watkins LLP
`200 Clarendon Street
`Boston, MA 02116
`Telephone: (617) 948-6000
`Fax: (617) 948-6001
`
`Additionally, the foregoing Joint Motion was served (without the
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`confidential exhibit), by electronic mail on the following counsel of record for
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`Petitioner Jeisys Medical Inc.:
`
`Wesley O. Mueller
`Leonard Z. Hua
`Paul J. Filbin
`Brent A. Chatham
`wmueller@leydig.com
`lhua@leydig.com
`pfilbin@leydig.com
`bchatham@leydig.com
`Jeisys-IPR@leydig.com
`LEYDIG, VOIT & MAYER, LTD.
`Two Prudential Plaza, Suite 4900
`180 North Stetson Avenue
`Chicago, Illinois 60601-6731
`Tel: (312) 616-5600
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`
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`
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`Fax: (312) 616-5700
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`Date: April 9, 2024
`
`
`/Scott Weidenfeller/
`Scott Weidenfeller (Reg. No. 54,531)
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