IPR2020-00551 (P.T.A.B. Feb. 17, 2021)

Cytonome/ST, LLC

Patent Trials and Appeals BoardFeb 17, 2021

IPR2020-00551 (P.T.A.B. Feb. 17, 2021)

Trials@uspto.gov Paper 32 Tel: 571-272-7822 Entered: February 17, 2021 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD NANOCELLECT BIOMEDICAL, INC., Petitioner, v. CYTONOME/ST, LLC, Patent Owner. IPR2020-00551 Patent 10,065,188 B2 Before LYNNE H. BROWNE, JO-ANNE M. KOKOSKI, and JAMES A. WORTH, Administrative Patent Judges. WORTH, Administrative Patent Judge. TERMINATION Due to Settlement After Institution of Trial 35 U.S.C. § 317; 37 C.F.R. § 42.74 IPR2020-00551 Patent 10,065,188 B2 Pursuant to our authorization, the parties filed a Joint Motion to Terminate and Joint Notice of Agreement Pursuant to 35 U.S.C. § 317 and 37 C.F.R. § 42.74 (Paper 30, “Joint Motion to Terminate”) and a Joint Motion to File Settlement Agreement and Attachments 1–4 as Business Confidential Information Under 35 U.S.C. § 317(b) (Paper 31, “Joint Motion to File Settlement Agreement as Business Confidential”). The parties represent that NanoCellect Biomedical, Inc. (“NanoCellect” or “Petitioner”) and Cytonome/ST, LLC (“Cytonome” or “Patent Owner”) have reached a settlement agreement regarding their disputes relating to U.S. Patent 10,065,188. Paper 30, 1. The parties have submitted with their motions a true copy of the settlement agreement between Petitioner and Patent Owner and attachments. Id. at 2 (citing Ex. 1069–1073). The parties state that there are no collateral agreements. Id. The parties request that the Board treat this agreement as business confidential information and maintain the agreement separate from the file of the involved patent because the agreement comprises business confidential information. Id.; Paper 31, 1. “An inter partes review instituted under this chapter shall be terminated with respect to any petitioner upon the joint request of the petitioner and the patent owner, unless the Office has decided the merits of the proceeding before the request for termination is filed.” 35 U.S.C. § 317(a). The Office has not yet decided the merits of the proceeding, which remains at an early stage. We determine that good cause exists to terminate the proceeding with respect to all parties without rendering a final written decision. IPR2020-00551 Patent 10,065,188 B2 At the request of a party to the proceeding, the agreement or understanding shall be treated as business confidential information, shall be kept separate from the file of the involved patents, and shall be made available only to Federal Government agencies on written request, or to any person on a showing of good cause. 35 U.S.C. § 317(b). After reviewing the parties’ settlement agreement, we find that the settlement agreement contains confidential business information regarding the terms of the settlement. We determine that good cause exists to treat the settlement agreement as business confidential information pursuant to 35 U.S.C. § 317(b). It is ORDERED that the Joint Motion to Terminate is granted; FURTHER ORDERED that this proceeding is hereby terminated as to both Petitioner and Patent Owner; FURTHER ORDERED that the Joint Motion to File Settlement Agreement as Business Confidential is granted; and FURTHER ORDERED that the filed settlement agreement and attachments (Ex. 1069–1073) be treated as business confidential information pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) and also remain designated as “Parties and Board Only” in the Board’s electronic filing system. IPR2020-00551 Patent 10,065,188 B2 PETITIONER: Michael T. Rosato Lora Green Douglas Carsten Jad A. Mills WILSON SONSINI GOODRICH & ROSATI mrosato@wsgr.com lgreen@wsgr.com jmills@wsgr.com dcarsten@wsgr.com PATENT OWNER: Kirt S. O’Neill Daniel L. Moffett Andy Rosbrook Dorian Ojemen AKIN GUMP STRAUSS HAUER & FELD LLP koneill@akingump.com dmoffett@akingump.com arosbrook@akingump.com dojemen@akingump.comPETITIONER: