Sydnexis, Inc.

Patent Trials and Appeals BoardApr 27, 2021

IPR2021-00440 (P.T.A.B. Apr. 27, 2021)

Trials@uspto.gov Paper 11 571.272.7822 Entered: April 27, 2021 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ NEVAKAR, INC., Petitioner, v. SYDNEXIS, INC., Patent Owner. ____________ IPR2021-00439 (Patent 9,421,199 B2) IPR2021-00440 (Patent 9,770,447 B2) IPR2021-00441 (Patent 10,076,515 B2) IPR2021-00442 (Patent 10,201,534 B2)1 ____________ Before ERICA A. FRANKLIN, SUSAN L. C. MITCHELL, and JAMIE T. WISZ, Administrative Patent Judges. FRANKLIN, Administrative Patent Judge. ORDER Granting Joint Motion to Terminate the Proceedings Before Institution 37 C.F.R. Â§Â§ 42.71; 42.74 1 This order addresses issues common to each of the captioned cases. Thus, we issue a single order for entry in each case. IPR2021-00439 (Patent 9,421,199 B2) IPR2021-00440 (Patent 9,770,447 B2) IPR2021-00441 (Patent 10,076,515 B2) IPR2021-00442 (Patent 10,201,534 B2) 1 On April 22, 2021, in each of the above-captioned cases, with authorization of the Board, the parties filed a joint motion to terminate the proceeding. Paper 7.2 The parties also filed a true copy of their written settlement agreement. Ex. 1090. Additionally, citing to 35 U.S.C Â§ 317 (b) and 37 C.F.R. Â§ 42.74 (c), the parties filed a joint request that the settlement agreement be treated as business confidential information, maintained separate from the publicly available files of the involved patent, and made available only to Federal Government agencies on written request, or to persons showing good cause on written request. Paper 8, 2. In each joint motion, the parties explain that termination of the proceeding is appropriate because they have reached an agreement settling their dispute with respect to the involved patents. Paper 7, 1. These cases are in the preliminary proceeding stage; a decision whether to institute trial in each case has not been entered. Under these circumstances, we determine that it is appropriate to enter judgment terminating the proceedings. Additionally, the partiesâ€™ request for the settlement agreement to be treated as business confidential information and kept separate from the file of the involved patents is granted. 2 Citations to paper and exhibit numbers in this Order refer to filings in IPR2021-00439. Similar documents were filed in each of the above- captioned cases. IPR2021-00439 (Patent 9,421,199 B2) IPR2021-00440 (Patent 9,770,447 B2) IPR2021-00441 (Patent 10,076,515 B2) IPR2021-00442 (Patent 10,201,534 B2) 2 Accordingly, it is hereby ORDERED that, in each of the above-captioned cases, the joint motion to terminate the captioned proceeding is granted; FURTHER ORDERED that, in each of the above-captioned cases, the joint request for the settlement agreement to be treated as business confidential information and kept separate from the file of the involved patent under the provisions of 35 U.S.C. Â§ 317(b) and 37 C.F.R. Â§ 42.74(c) is granted; and FURTHER ORDERED that the proceeding in each of the above- captioned cases is terminated. IPR2021-00439 (Patent 9,421,199 B2) IPR2021-00440 (Patent 9,770,447 B2) IPR2021-00441 (Patent 10,076,515 B2) IPR2021-00442 (Patent 10,201,534 B2) 3 PETITIONER: James R. Barney Mark J. Feldstein Joshua L. Goldberg Yieyie Yang Drew D. Christie Lin Chen FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, L.L.P. james.barney@finnegan.com mark.feldstein@finnegan.com joshua.goldberg@finnegan.com yieyie.yang@finnegan.com drew.christie@finnegan.com lin.chen@finnegan.com PATENT OWNER: Michael Rosato Lora Green Jad Mills WILSON SONSINI GOODRICH & ROSATI mrosato@wsgr.com lgreen@wsgr.com jmills@wsgr.com