Natera, Inc.

Patent Trials and Appeals Board

Aug 17, 2021

IPR2021-00279 (P.T.A.B. Aug. 17, 2021)

Trials@uspto.gov Paper 19
571.272.7822 Date: August 17, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

PROGENITY, INC.,
Petitioner,

v.

NATERA, INC.,
Patent Owner.
____________

IPR2021-00279
Patent 10,227,652 B2
____________

Before GRACE KARAFFA OBERMANN, ZHENYU YANG, and
RYAN H. FLAX, Administrative Patent Judges.

OBERMANN, Administrative Patent Judge.

TERMINATION
Due to Settlement After Institution of Trial
Granting Joint Motion to Treat Settlement Agreement
Documents as Confidential Information
35 U.S.C. § 317(a); 37 C.F.R. § 42.72; 37 C.F.R. § 42.74(c)

IPR2021-00279
Patent 10,227,652 B2

2
Progenity, Inc. is the Petitioner in this inter partes review concerning
claims 1–10 of U.S. Patent 10,227,652 B2 (“the ’652 patent,” Ex. 1002).
Natera, Inc. is the Patent Owner of the ’652 patent. The Board instituted
trial in this proceeding on June 11, 2021. Paper 12. No final decision has
been rendered by the Board in this proceeding.
The parties have now filed a Joint Motion to Terminate the
proceeding (Paper 17, “Mot. Term.”) on the basis of a settlement reached by
the parties. See 35 U.S.C. § 317(a). 35 U.S.C. § 317(b) states:
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
the termination of the inter partes review as between the parties.
Id. Pursuant to that statute, and in connection with the Joint Motion to
Terminate, the parties filed a copy of their written settlement agreement
resolving this inter partes review and the related district court litigation.
Exhibit 1068 (“Settlement Agreement”). The parties state “that there are no
collateral agreements or understandings made in connection with, or in
contemplation of, the requested termination.” Mot. Term. 2; see also
Ex. 1068, 8–9 (Section 9.13) (filed under seal).
The parties also move that the Settlement Agreement be treated as
confidential information. Paper 18. This request is granted.
Generally, the Board expects that a proceeding will terminate after the
filing of a settlement agreement, unless the Board has already decided the
merits of the proceeding. See 35 U.S.C. § 317(a) (“An inter partes review
instituted under this chapter shall be terminated with respect to any
IPR2021-00279
Patent 10,227,652 B2

3
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.”); 37 C.F.R. § 42.72 (“The Board may terminate a
trial without rendering a final written decision, where appropriate, including
. . . pursuant to a joint request under 35 U.S.C. 317(a)”). As noted above,
the Board has not yet rendered a final decision here. Thus, we grant the
Joint Motion to Terminate the proceeding.
This Decision does not constitute a final written decision pursuant to
35 U.S.C. § 318(a).

In consideration of the foregoing, it is hereby:
ORDERED the Joint Motion to Treat the Settlement Agreement
(Ex. 1068) as confidential information is granted, and this agreement shall
be kept separate from the public files of the ’652 patent, and made available
only to Federal Government agencies on written request, or to any person on
a showing of good cause, under 35 U.S.C. § 317(b) and 37 C.F.R.
§ 42.74(c); and
FURTHER ORDERED that the Joint Motion to Terminate this
proceeding is granted, and this proceeding is hereby terminated under
35 U.S.C. § 317(a) and 37 C.F.R. § 42.72.

IPR2021-00279
Patent 10,227,652 B2

4

For PETITIONER:

Michael T. Rosato
Loreli P. Westin
Jad A. Mills
Nathaniel T. Lechman
WILSON SONSINI GOODRICH & ROSATI
mtosato@wsgr.com
lwestin@wsgr.com
jmills@wsgr.com
nleachman@wsgr.com

For PATENT OWNER:

H. Annita Zhong
IRELL & MANELLA LLP
hzhong@irell.com
NateraIPR@irell.com