IPR2020-00480 (P.T.A.B. May. 13, 2020)

Edwards Lifesciences Corporation

Patent Trials and Appeals BoardMay 13, 2020

IPR2020-00480 (P.T.A.B. May. 13, 2020)

Trials@uspto.gov Paper 7 571.272.7822 Entered: May 13, 2020 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ ABBOTT LABORATORIES, ABBOT CARDIOVASCULAR SYSTEMS, INC., EVALVE, INC. AND ABBOTT LABORATORIES INC., Petitioners, v. EDWARDS LIFESCIENCES CORPORATION, Patent Owner. ____________ Case IPR2020-00480 Patent 6,719,767 B2 ____________ Before SHERIDAN SNEDDEN, JAMES WORTH, and RICHARD J. SMITH, Administrative Patent Judges. SNEDDEN, Administrative Patent Judge. TERMINATION Dismissing the Proceeding 37 C.F.R. § 42.5(a), 37 C.F.R. § 42.71(a) IPR2020-00480 Patent 6,719,767 B2 2 On April 30, 2020, the parties filed a joint motion to terminate the above-referenced proceeding pursuant to 35 U.S.C. § 317 and 37 C.F.R. § 42.74. Paper 5. The parties also filed Patent Owner’s covenant not to sue for patent infringement of challenged claims 1–3, 5, and 14 of Patent 6,719,767 (“the ’767 patent”) (Ex. 1055), and Abbott’s Notice of Withdrawal of Motion to Stay Pending Inter Partes Review (Ex. 1056). The parties represent that “Patent Owner withdrew with prejudice its infringement allegations with respect to [the challenged claims], and provided Petitioner with a covenant not to sue on those claims—resolving all disputes between the parties regarding the challenged claims of the ’767 patent.” Paper 5, 2. Generally, the Board expects that a proceeding will terminate after the filing of a settlement agreement. Patent Trial and Appeal Board Consolidated Trial Practice Guide,1 86. This case is in the preliminary proceeding stage, which begins with the filing of a petition and ends with a written decision as to whether trial will be instituted. See 37 C.F.R. § 42.2. Based on the facts of this case, we determine that it is appropriate to dismiss this case without rendering a decision as to whether a trial will be instituted. Therefore, the joint motion to terminate is GRANTED. Accordingly, in consideration of the foregoing, it is hereby: ORDERED that the joint motion to terminate the above-referenced case is GRANTED; and FURTHER ORDERED that the Petition for inter partes review in IPR2020-00480 is DISMISSED. 1 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated. IPR2020-00480 Patent 6,719,767 B2 3 PETITIONER: Michael Morin michael.morin@lw.com Giri Pathmanaban giri.pathmanaban@lw.com Jon Strang jonathan.strang@lw.com PATENT OWNER: John Sganga 2jbs@knobbe.com Craig Summers 2css@knobbe.com Christy Lea 2cgl@knobbe.com Joshua Stowell 2jys@knobbe.com