UNM Rainforest Innovations

Patent Trials and Appeals Board

Jan 27, 2021

IPR2020-01595 (P.T.A.B. Jan. 27, 2021)

Trials@uspto.gov Paper No. 12
571-272-7822 Entered: January 27, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

QUEST DIAGNOSTICS INCORPORATED,
Petitioner,

v.

UNM RAINFOREST INNOVATIONS,
Patent Owner.
____________

IPR2020-01544 (Patent 7,572,639 B2)
IPR2020-01595 (Patent 7,666,683 B2)1
____________

Before CHRISTOPHER L. CRUMBLEY, JON B. TORNQUIST, and
JULIA HEANEY, Administrative Patent Judges.

HEANEY, Administrative Patent Judge.
DECISION
Settlement Prior to Institution of Trial
37 C.F.R. § 42.74

1 The parties are not authorized to use a multi-case caption.
IPR2020-01544 (Patent 7,572,639 B2)
IPR2020-01595 (Patent 7,666,683 B2)

I. INTRODUCTION
On January 21, 2021, in response to an Order mailed January 7, 2021,
the parties filed a Corrected Joint Motion to terminate this proceeding.
Paper 102 (“Mot.”). Along with the Joint Motion, the parties filed a copy of
a “Settlement and License Agreement” they describe as a “true and correct
copy of the written Settlement and License Agreement” (Ex. 1027), covering
various matters involving the patent at issue in this proceeding, as well as a
copy of a Licensing Agreement between the parties executed in 2006. Mot.
3–4. The parties also filed a Corrected Joint Request to treat their agreement
as business confidential information, and to maintain said agreement
separate from the public file under 37 C.F.R. § 42.74(c). Paper 11.
II. DISCUSSION
Petitioner filed a Petition requesting an inter partes review of claims
1–11 of U.S. Patent No. 7,572,639 (Ex. 1001, “the ’639 patent”). Paper 2,
33. The proceedings are still in their preliminary stages. We have not
entered a decision on whether to institute an inter partes review for either
proceeding.
In the Corrected Joint Motion, the Parties represent the “basis for this
Joint Motion is the settlement of all disputes between the parties relating to
the ’639, ’683, and ‘760 patents.” Mot. 2; see also Ex. 1027, § 2.
In view of the early stage of this proceeding and the settlement
between the parties, we determine that good cause exists to terminate these

2 We refer to the papers and exhibit filed in IPR2020-01544. Corresponding
papers and exhibit also were filed in IPR2020-01595.
3 The Petition in IPR2020-01595 challenges claims 1–40 of US Patent No.
7,666,683.
IPR2020-01544 (Patent 7,572,639 B2)
IPR2020-01595 (Patent 7,666,683 B2)

proceedings with respect to the parties. We also have reviewed the
settlement agreement, and we determine that the settlement agreement
contains business confidential information regarding the terms of the
settlement and that good cause exists to treat the settlement agreement as
business confidential information under 37 C.F.R. § 42.74(c).
This Order does not constitute a final written decision pursuant to 35
U.S.C. § 318(a).
III. ORDER
In consideration of the foregoing, it is hereby:
ORDERED that the parties’ Joint Request (Paper 11) to treat the
settlement agreement and license (Exhibits 1027 and 1028) as business
confidential information under 37 C.F.R. § 42.74(c) is granted, and the
Settlement Agreement and License Agreement shall be kept separate from
the files of Patents 7,572,639 and 7,666,683, and made available only to
Federal Government agencies on written request, or to any person on a
showing of good cause, pursuant to 35 U.S.C. § 317(b) and 37 C.F.R.
§ 42.74(c); and
FURTHER ORDERED that the parties’ Joint Motion to Terminate
(Paper 10) is granted, and the proceeding is terminated with respect to
Petitioner and Patent Owner.

IPR2020-01544 (Patent 7,572,639 B2)
IPR2020-01595 (Patent 7,666,683 B2)

PETITIONER:

Jennifer Bush
RJ Shea
Jbush-ptab@fenwick.com
rshea@fenwick.com

PATENT OWNER:
Jay Kesan
Alfonso Chan
Ari Rafilson
jay@jaykesan.com
achan@shorechan.com
arafilson@shorechan.com