Boston Scientific Corporationv.Vascular Solutions, Inc.

Patent Trials and Appeals BoardAug 11, 2014

12824734 - (D) (P.T.A.B. Aug. 11, 2014)

Trials@uspto.gov Paper 10 571-272-7822 Entered: August 11, 2014 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ BOSTON SCIENTIFIC CORPORATION and BOSTON SCIENTIFIC SCIMED, INC. Petitioners v. VASCULAR SOLUTIONS, INC. Patent Owner ____________ Case IPR2014-00759 Patent 8,142,413 Cases IPR2014-00760 and IPR2014-00761 Patent 8,048,032 Cases IPR2014-00762 and IPR2014-00763 Patent 8,292,8501 ____________ Before GLENN J. PERRY, BARBARA A. PARVIS and J. JOHN LEE, Administrative Trial Judges PERRY, Administrative Trial Judge 1 This Order addresses scheduling that is identical in the listed cases. We exercise our discretion to issue a single paper to be filed in each case. The parties are not authorized to use this style heading for any subsequent papers. Cases IPR2014-00759, -00760, -00761, -00762 and -00763 Patents 8,142,413; 8,048,032; and 8,292,850 JUDGMENT Termination of Proceeding 37 C.F.R. § 42.73 The parties have requested that these trial proceedings be terminated pursuant to a settlement. On August 6, 2014, the Board authorized2 the parties to file a Joint Motion to Terminate these proceedings along with a true copy of any and all settlement agreements between them related to the patent at issue. The parties filed in each case a Joint Motion to Terminate3 in accordance with 35 U.S.C. § 327(a) and 37 C.F.R. § 42.72. The parties also filed in each case a Joint Motion to Treat the Parties’ Settlement Agreement as Business Confidential4 pursuant to 35 U.S.C. § 317(b) and Rule 42.74. The settlement agreement5 purports to settle matters between the parties with respect to each of the patents at issue in this inter partes review. Each of the captioned inter partes reviews is in its preliminary stage. A decision on the respective Petitions6 has not yet been rendered. The parties have identified the following USPTO proceedings that are pending. 2 IPR2014-00759, Paper 6; IPR2014-00760, Paper 6; IPR2014-00761, Paper 7; IPR2014-00762, Paper 6; IPR2014-00763, Paper 9. 3 IPR2014-00759, Paper 7; IPR2014-00760, Paper 7; IPR2014-00761, Paper 7; IPR2014-00762, Paper 8; IPR2014-00763, Paper 10. 4 IPR2014-00759, Paper 8; IPR2014-00760, Paper 8; IPR2014-00761, Paper 8; IPR2014-00762, Paper 8; IPR2014-00763, Paper 11. 5 IPR2014-00759, Exhibit 1041; IPR2014-00760, Exhibit 1042; IPR2014- 00761, Exhibit 1042; IPR2014-00762, Exhibit 1043; IPR2014-00763, Exhibit 1043. 6 IPR2014-00759, Paper 1; IPR2014-00760, Paper 1; IPR2014-00761, Paper 1; IPR2014-00762, Paper 1; IPR2014-00763, Paper 1. Cases IPR2014-00759, -00760, -00761, -00762 and -00763 Patents 8,142,413; 8,048,032; and 8,292,850 Application Status Reissue Application for U.S. Patent No. 8,292,850: Serial No. 14/070161 Pending Reissue Continuation Application for U.S. Patent No. 8,292,850: Serial No. 14/195385 Pending Reissue Continuation Application for U.S. Patent No. 8,292,850: Serial No. 14/195413 Pending Reissue Continuation Application for U.S. Patent No. 8,292,850: Serial No. 14/195435 Pending The parties indicated that they “shall cooperate” to have the related District Court litigation7 in the U.S. District Court for the District of Minnesota dismissed with prejudice. Under these circumstances, the Board determines that it is appropriate to enter judgment8 and terminate each of the trials without rendering a final written decision under 37 C.F.R. § 42.72. 7 Vascular Solutions, Inc. v. Boston Scientific Corp., No. 0:13-cv-1172-JRT- SER (D. Minn.). 8 A judgment means a final written decision by the Board, or a termination of a proceeding. 37 C.F.R. § 42.2. Cases IPR2014-00759, -00760, -00761, -00762 and -00763 Patents 8,142,413; 8,048,032; and 8,292,850 ORDER It is, therefore, ORDERED that the joint motions to terminate these proceedings are GRANTED and the proceedings are hereby terminated as to all parties including, Petitioners and Patent Owner; and FURTHER ORDERED that the parties’ joint requests that the settlement agreement, as filed in each case, be treated as business confidential information and kept separate from the file of the involved patent under the provisions of to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), are GRANTED. FOR PETITIONERS: David Marsh Kristan Lansbery ARNOLD & PORTER LLP David.marsh@aporter.com Kristan.lansbery@aporter.com FOR PATENT OWNER: Kenneth E. Levitt DORSEY & WHITNEY levitt.kenneth@dorsey.com VSI-BSC-IPR@dorsey.com Brad D. Pedersen PATTERSON, THUENTE, PETERSON, PA pedersen@ptslaw.com PRPS@ptslaw.com

Boston Scientific Corporation v. Vascular Solutions, Inc.