Nevro Corporation

Patent Trials and Appeals Board

Nov 24, 2021

IPR2021-01023 (P.T.A.B. Nov. 24, 2021)

Trials@uspto.gov Paper 14
571-272-7822 Date: November 24, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

NALU MEDICAL, INC.,
Petitioner,
v.
NEVRO CORP.,
Patent Owner.

IPR2021-01023
Patent 9,333,357 B2

Before JOHN G. NEW, BARRY L. GROSSMAN, and
ROBERT A. POLLOCK, Administrative Patent Judges.
GROSSMAN, Administrative Patent Judge.

DECISION
Settlement Prior to Institution of Trial
37 C.F.R. § 42.74

IPR2021-01023
Patent 9,333,357 B2
2
On November 22, 2021, the parties filed a Joint Motion to Terminate
this proceeding. Paper 13 (“Mot.”). Along with the Joint Motion, the
parties filed a copy of a document they describe as “a true copy” (id. at 1) of
a “Settlement Term Sheet” (Ex. 1031) covering various matters, including
those involving the patent at issue in this proceeding. The parties also filed a
Joint Request to Treat the Settlement Term Sheet as Business Confidential
Information under 37 C.F.R. § 42.74(c). Paper 12.
This proceeding is still in its preliminary stages. Petitioner filed a
Petition requesting an inter partes review of claims 1–36 (all claims) of U.S.
Patent No. 9,333,357 B2 (Ex. 1001, “the ’357 patent”). Paper 1. Patent
Owner filed a Preliminary Response. Paper 11. We have not entered a
decision on whether to institute an inter partes review, which is due on or
before December 16, 2021.
In their Joint Motion, the parties represent that they “have reached a
settlement as to all the disputes in this proceeding.” Mot. 1; see also id. at 2
(“Nalu and Nevro have reached a settlement as to all the disputes in this
proceeding”). The Settlement Term Sheet states that Patent Owner also
shall promptly dismiss with prejudice the ’357 patent from related district
court litigation following a decision by the Board to dismiss the IPR
proceeding before us. Based on the Settlement Term Sheet, these
obligations are binding on the parties.
The parties also state that, other than the Settlement Term Sheet
agreement filed as Exhibit 1031, “[n]o other such agreements, written or
oral, exist between or among the Parties relating to this proceeding.” Mot. 2.
The parties acknowledge, however, that a future settlement agreement,
covering terms other than the binding obligations in the Settlement Term
Sheet related to this IPR proceeding and the related district court litigation,
IPR2021-01023
Patent 9,333,357 B2
3
is contemplated. The fact that a more definitive agreement is contemplated
does not preclude a binding term sheet from serving as a basis for granting a
motion to terminate. See Allergan Inc. v. BTL Healthcare Technologies A.S,
PGR2021-00022, Paper 18 (PTAB Jul. 6, 2021) (granting a motion to
terminate based on a binding term sheet that contemplated a more definitive
Settlement and License Agreement that will include additional terms).
This IPR proceeding is at an early stage, and we have not yet decided
whether to institute a trial. In view of the early stage of the proceedings, the
Joint Motion, and the binding obligations between the parties in the
Settlement Term Sheet, we determine that good cause exists to terminate this
proceeding. See 35 U.S.C. § 317(a) (“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.”);
37 C.F.R. § 42.71(a).
We also have reviewed the Settlement Term Sheet (Ex. 1031), and we
determine that the Settlement Term Sheet contains business confidential
information regarding the terms of the settlement and that good cause exists
to treat the Settlement Term Sheet as business confidential information
under 37 C.F.R. § 42.74(c).
IPR2021-01023
Patent 9,333,357 B2
4
ORDER
In consideration of the foregoing, it is hereby:
ORDERED that the Joint Motion to Terminate (Paper 13) is granted,
and this proceeding is terminated due to settlement prior to institution of
trial; and
FURTHER ORDERED that the parties’ Joint Request (Paper 12) to
treat the Settlement Term Sheet (Exhibit 1031) as business confidential
information under 37 C.F.R. § 42.74(c) is granted.
This Order does not constitute a final written decision pursuant to
35 U.S.C. § 318(a).
IPR2021-01023
Patent 9,333,357 B2
5

FOR PETITIONER:

James Isbester
Edward Mayle
KILPATRICK TOWNSEND & STOCKTON LLP
jisbester@kilpatricktownsend.com
tmayle@kilpatricktownsend.com

FOR PATENT OWNER:

Alex S. Yap
Mehran Arjomand
MORRISON & FOERSTER LLP
ayap@mofo.com
marjomand@mofo.com