Board of Regents, The University of Texas System

Patent Trials and Appeals Board

Jun 8, 2020

IPR2019-00038 (P.T.A.B. Jun. 8, 2020)

Trials@uspto.gov Paper 24
571-272-7822 Date: June 8, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

MEDTRONIC, INC.,
Petitioner,
v.
BOARD OF REGENTS, THE UNIVERSITY OF TEXAS SYSTEM and
TISSUEGEN, INC.,
Patent Owner.

IPR2019-00037 (Patent 6,596,296 B1)
IPR2019-00038 (Patent 7,033,603 B2)1

Before SUSAN L. C. MITCHELL, AVELYN M. ROSS,
KRISTI L. R. SAWERT, Administrative Patent Judges.
ROSS, Administrative Patent Judge.

DECISION
Settlement Prior to Institution of Trial
Granting Request to Treat Settlement Agreement as
Business Confidential Information
37 C.F.R. §§ 42.74, 42.72(c)

1 We exercise our discretion to issue one order to be entered in both cases.
The parties are not authorized to use this style heading for subsequent papers
without Board approval.
IPR2019-00037 (Patent 6,596,296 B1)
IPR2019-00038 (Patent 7,033,603 B2)

2
On June 4, 2020, with our prior authorization, Medtronic, Inc.
(“Petitioner”)2 and The Board of Regents, The University of Texas System
and TissueGen, Inc. (“Patent Owner”) (collectively, “the parties”) filed a
Joint Motion to Terminate. IPR2019-00037, Paper 19; IPR2019-00038,
Paper 21 (collectively “Motion”). Together with the Motion, the parties
filed a copy of their written Confidential Release and Settlement Agreement
(IPR2019-00037, Ex. 1057; IPR2019-00038, Ex. 1044, collectively
“Agreement”) and a Joint Request to Treat Settlement Agreement as
Business Confidential Information and to Keep Separate. IPR2019-00037,
Paper 20; IPR2019-00038, Paper 22 (collectively “Joint Request”).
The Board generally expects that a case “will terminate after the filing
of a settlement agreement, unless the Board has already decided the merits.”
Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14,
2012); see 35 U.S.C. §317(a) and 37 C.F.R. § 42.72. Though a decision on
institution has not yet issued, that decision is set to issue no later than
June 12, 2020. The parties, however, indicate that the Agreement resolves
the dispute regarding U.S. Patent Nos. 6,596,296 and 7,033,603 and related
patents. Motion 1; Agreement 2–4. The parties state that “[n]o dispute
remains between the Parties involving the challenged patent[s]” and “[t]here
are no currently pending district court litigations involving the challenged
patent[s], and all currently pending IPR proceedings between the Parties
involving the challenged patent[s] will be dismissed with prejudice”
according to the terms of the Agreement. Motion 1.

2 Medtronic, Inc remains as the sole Petitioner in this matter. “Tyrx, Inc. no
longer exists as a separate entity,” having merged into Medtronic, Inc.
IPR2019-00037, Paper 21, IPR2019-00038, Paper 23.
IPR2019-00037 (Patent 6,596,296 B1)
IPR2019-00038 (Patent 7,033,603 B2)

3
Under these circumstances, we determine that it is appropriate to
terminate this preliminary proceeding with respect to both Petitioner and
Patent Owner. Accordingly, we grant the parties’ joint motion to terminate.
See 35 U.S.C. § 317(a); 37 C.F.R. §§ 42.5(a), 42.74. After reviewing the
Agreement, we find that it contains confidential business information
regarding the terms of the settlement and that good cause exists to treat the
Agreement as business confidential information to be kept separate from the
patent file. See 35 U.S.C. § 317(b); 37 C.F.R. § 42.74.

ORDER
In view of the foregoing, it is
ORDERED that the Joint Request to Treat Settlement Agreement as
Business Confidential (IPR2019-00037, Paper 20; IPR2019-00038, Paper
22) is granted;
FURTHER ORDERED that the Settlement Agreement (IPR2019-
00037, Ex. 1057; IPR2019-00038, Ex. 1044) shall be treated as business
confidential information and shall be kept separate from the patent file; and
FURTHER ORDERED that the Parties’ Joint Motion to Terminate
(IPR2019-00037, Paper 19; IPR2019-00038, Paper 21) is granted and this
proceeding is hereby terminated.

IPR2019-00037 (Patent 6,596,296 B1)
IPR2019-00038 (Patent 7,033,603 B2)

4
FOR PETITIONER:

Jovial Wong
WINSTON & STRAWN LLP
jwong@winston.com

FOR PATENT OWNER:

Gerald B. Hrycyszyn
Richard F. Giunta
WOLF, GREENFIELD & SACKS, P.C.
GHrycyszyn-PTAB@wolfgreenfield.com
RGiunta-PTAB@wolfgreenfield.com

Stephen Finch
Ross Krutsinger
FINCH & MALONEY, PLLC
sfinch@finchmaloney.com
rkrutsinger@finchmaloney.com