President and Fellows of Harvard College

Patent Trials and Appeals Board

Oct 27, 2021

IPR2021-00828 (P.T.A.B. Oct. 27, 2021)

Trials@uspto.gov Paper 14
571-272-7822 Date: Oct. 27, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

DROPWORKS, INC.,
Petitioner,
v.
PRESIDENT AND FELLOWS OF HARVARD COLLEGE,
Patent Owner.

IPR2021-00828
Patent US 9,056,289 B2

Before JOHN G. NEW, ROBERT A. POLLOCK, and
TIMOTHY G. MAJORS, Administrative Patent Judges.
NEW, Administrative Patent Judge.

ORDER
Granting Petitioner’s Unopposed Motions to Dismiss the Petition and
Terminate the Proceeding Before Institution
37 C.F.R. §§ 42.5(a), 42.71(a)

IPR2021-00828
Patent US 9,056,289 B2

2
On October 20, 2021, with authorization of the Board, Petitioner
Dropworks, Inc. (“Petitioner”) filed a motion to dismiss the petition and to
terminate the proceeding. Paper 13. Patent Owner President and Fellows of
Harvard College (“Patent Owner”) does not oppose the motion. Id. at 2.
In the motion, Petitioner explains that dismissal of the petition and
termination of the proceedings are appropriate because the motion has been
filed prior to institution. Paper 13 at 2. Specifically, Petitioner states that
the basis for this termination request is that the Petitioner in this proceeding
has been acquired by Bio-Rad Laboratories, Inc. (“Bio-Rad”), which is the
exclusive licensee of the ’289 patent. Id. Petitioner affirms that the
acquisition of Dropworks is memorialized in a written Merger Agreement.1
Id. Petitioner asserts that termination will achieve a just, speedy, and
inexpensive resolution to the dispute. Id. at 3.
As Petitioner correctly asserts, this case is in the preliminary
proceeding stage, and a decision whether to institute trial has not been
entered. Under the circumstances, we conclude that it is appropriate to grant
Petitioner’s unopposed motion to dismiss the petition and to terminate the
proceeding.

1 In response to the Board’s inquiry, Petitioner indicates its willingness to
file, and requests authorization from the Board to file, the Merger
Agreement subject to the agreement being kept confidential. Paper 13 at
n.1. We find that good cause for this request exists under 37 C.F.R. §
42.14.
IPR2021-00828
Patent US 9,056,289 B2

3
ORDER
Accordingly, it is hereby:
ORDERED that Petitioner’s unopposed motions are granted;
FURTHER ORDERED that the petition in IPR2021-00828 is
dismissed; and
FURTHER ORDERED that a copy of the Merger Agreement between
Petitioner and Patent Owner shall be filed, along with a motion to seal, no
later than November 3, 2021; and
FURTHER ORDERED that the proceeding in IPR2021-00828 is
terminated.

IPR2021-00828
Patent US 9,056,289 B2

4
FOR PETITIONER:

Anthony Demarco
demarco@youngbasile.com

Adam Brausa
abrausa@durietangri.com

Joyce Li
jli@durietangri.com

Moon Hee Lee
mlee@durietangri.com

Daralyn Durie
ddurie@durietangri.com

FOR PATENT OWNER:

Derek C. Walter
Robert Magee
Sutton Ansley
Weil, Gotshal & Manges LLP
derek.walter@weil.com
robert.magee@weil.com
sutton.ansley@weil.com