Organovo, Inc.

Patent Trials and Appeals Board

Mar 23, 2022

IPR2021-01543 (P.T.A.B. Mar. 23, 2022)

Trials@uspto.gov Paper 13 571-272-7822 Date: March 23, 2022 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD BICO GROUP AB, Petitioner, v. ORGANOVO, INC., Patent Owner. IPR2021-01543 Patent 9,315,043 B2 Before MICHELLE N. ANKENBRAND, JEFFREY W. ABRAHAM, and ELIZABETH M. ROESEL, Administrative Patent Judges. ABRAHAM, Administrative Patent Judge. DECISION Settlement Prior to Institution of Trial 37 C.F.R. § 42.74 IPR2021-01543 Patent 9,315,043 B2 2 On September 20, 2021, BICO Group AB (“Petitioner”) filed a petition for inter partes review (Paper 2) of U.S. Patent 9,315,043 B2 (Ex. 1001 (“the ’043 Patent”)). Organovo, Inc., (“Patent Owner”) timely filed a Preliminary Response (Paper 6) on January 12, 2022. On March 7, 2022, after receiving authorization from the Board (Ex. 1013), Petitioner filed an Unopposed Motion to Dismiss Petition for Inter Partes Review. Paper 8. We denied that Motion without prejudice because the record suggested that the parties had reached a settlement, but the motion was not accompanied by a copy of the parties’ settlement agreement. Paper 10. On March 18, 2022, with our authorization, Petitioner filed a Renewed Unopposed Motion to Dismiss Petition for Inter Parties Review accompanied by a copy of the parties’ settlement agreement. Paper 11; Ex. 1016. The Board’s decision on institution is due on or before April 12, 2022. The Board has not yet reached a decision regarding institution in this proceeding. In the renewed motion, Petitioner states that good cause exists to dismiss Petitioner’s Petition and terminate this proceeding because an inter partes review has not been instituted. Paper 11, 2. Petitioner states that the settlement agreement between Patent Owner and Petitioner (Ex. 1016) resolves any dispute related to the ’043 patent, and that there are no collateral agreements between the parties. Paper 11, 1-2. In addition, the related district court litigations involving the ’043 patent (Cellink AB v. Organovo, Inc., No. 1:21-cv-00832-MN (D. Del.); Organovo, Inc. v. Cellink AB, No. 1:21-cv-01724-MN (D. Del.)) were each dismissed with prejudice on February 25, 2022, pursuant to a Joint Stipulation of Dismissal filed by IPR2021-01543 Patent 9,315,043 B2 3 the parties. Paper 11, 2; Ex. 1014; Ex. 1015. Petitioner also states that Patent Owner does not oppose the motion. Paper 11, 1. Under 37 C.F.R. § 42.71(a), “[t]he Board may take up petitions or motions for decisions in any order, [and] may grant, deny, or dismiss any petition or motion.” Petitioner has shown good cause for dismissal of the Petition under 37. C.F.R. § 42.71(a). The motion is unopposed, the disputes regarding the challenged patent in district court have been dismissed, the Board has not yet issued a decision on whether to institute the Petition, and the Board has not issued any other substantive decisions. Dismissing the Petition at this stage promotes the Board’s objective of achieving “just, speedy, and inexpensive resolution of every proceeding.” 37 C.F.R. § 42.1(b). Under these circumstances, we are persuaded that it is appropriate to dismiss the Petition and terminate the proceeding to promote efficiency and minimize unnecessary costs. Pursuant to 37 C.F.R. § 42.74, Petitioner also requests that the settlement agreement be treated as business confidential information and kept separate from the file of the involved patent. Paper 11, 1. We are persuaded that it is appropriate to treat the agreement as business confidential and to keep the requested document separate from the file of the ’043 patent. This paper does not constitute a final written decision pursuant to 35 U.S.C. § 318(a). Accordingly, it is ORDERED that Petitioner’s Motion to Dismiss IPR2021-01543 is granted; IPR2021-01543 Patent 9,315,043 B2 4 FURTHER ORDERED that Petitioner’s request for the settlement agreement (Ex. 1016) to be treated as business confidential information and kept separate from the file of the involved patent under the provisions of 37 C.F.R. § 42.74(c) is granted; and FURTHER ORDERED that the Petition in IPR2021-01543 is dismissed and IPR2021-01543 is terminated. IPR2021-01543 Patent 9,315,043 B2 5 FOR PETITIONER: Scott McKewon James L. Davis, Jr. Christopher Bonny ROPES & GRAY LLP scott.mckeown@ropesgray.com james.l.davis@ropesgray.com christopher.bonny@ropesgray.com FOR PATENT OWNER: Naveen Modi Joseph Palys Elizabeth Brann PAUL HASTINGS, LLP naveenmodi@paulhastings.com josephpalys@paulhastings.com elizabethbrann@paulhastings.com