The Trustees of Columbia University in the City of New York

Patent Trials and Appeals Board

Aug 9, 2021

IPR2020-00988 (P.T.A.B. Aug. 9, 2021)

Trials@uspto.gov Paper 39
571.272.7822 Entered: August 9, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

ILLUMINA, INC.,
Petitioner,

v.

TRUSTEES OF COLUMBIA UNIVERSITY
IN THE CITY OF NEW YORK,

Patent Owner.
____________

IPR2020-00988 (Patent 10,407,458 B2)
IPR2020-01065 (Patent 10,407,459 B2)
IPR2020-01125 (Patent 10,457,984 B2)
IPR2020-01177 (Patent 10,435,742 B2)
IPR2020-01323 (Patent 10,428,380 B2)1
____________

Before SUSAN L. C. MITCHELL, ZHENYU YANG, JAMES A. WORTH,
ROBERT A. POLLOCK, MICHELLE N. ANKENBRAND, and
DEVON ZASTROW NEWMAN, Administrative Patent Judges.2

PER CURIAM

TERMINATION
Due to Settlement After Institution of Trial
35 U.S.C. § 317; 37 C.F.R. § 42.74

1 This Order applies to each of the above-listed proceedings. We exercise
our discretion to issue one Order to be filed in each proceeding. Unless
otherwise authorized, the parties shall not use this heading style in any
subsequent papers.
2 This is not a decision by an expanded panel.
IPR2020-00988 (Patent 10,407,458 B2)
IPR2020-01065 (Patent 10,407,459 B2)
IPR2020-01125 (Patent 10,457,984 B2)
IPR2020-01177 (Patent 10,435,742 B2)
IPR2020-01323 (Patent 10,428,380 B2)

2
INTRODUCTION
With the Board’s authorization, Petitioner and Patent Owner
(collectively “the Parties”) filed a Joint Motion to Terminate the above-
identified proceedings due to settlement. Paper 32 (“Joint Motion”).3 In
support of the Joint Motion, the Parties filed a Confidential Settlement
Agreement (Ex. 1169 (“2021 Settlement Agreement”)), as well as a Joint
Request to File Settlement Agreement as Business Confidential Information
pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) (Paper 33 (“Joint
Request”)). In our Order mailed July 23, 2021, we denied, without
prejudice, the Joint Motion and the Joint Request because the 2021
Settlement Agreement refers to a collateral agreement, namely a 2017
Settlement Agreement, that had not been filed with the Board. Paper 35, 3.
The Parties have now filed a copy of the 2017 Settlement Agreement
(Ex. 1170 (“2017 Settlement Agreement”)), as well as a Renewed Joint
Motion to Terminate (Paper 37 (“Renewed Joint Motion”)) and Renewed
Joint Request to File Settlement Agreement as Business Confidential
Information (Paper 38 (“Renewed Joint Request”)).

II. DISCUSSION
Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under
this chapter shall be terminated with respect to any petitioner upon the joint

3 Unless otherwise noted, Paper and Exhibit numbers herein refer to
IPR2020-00988. Similar papers and exhibits were filed in IPR2020-01065,
IPR2020-01125, IPR2020-01177, and IPR2020-01323.
IPR2020-00988 (Patent 10,407,458 B2)
IPR2020-01065 (Patent 10,407,459 B2)
IPR2020-01125 (Patent 10,457,984 B2)
IPR2020-01177 (Patent 10,435,742 B2)
IPR2020-01323 (Patent 10,428,380 B2)

3
request of the petitioner and the patent owner, unless the Office has decided
the merits of the proceeding before the request for termination is filed.”
Section 35 U.S.C. § 317(a) also provides that if no petitioner remains in the
inter partes review, the Office may terminate the review.
In the Renewed Joint Motion, the Parties represent that they have
reached an agreement to jointly seek termination of the above-identified
inter partes reviews, and that the filed copies of the 2021 Settlement
Agreement (Ex. 1169) and 2017 Settlement Agreement (Ex. 1170) constitute
a true and complete copy of the agreement. Renewed Joint Motion 1. The
Parties further represent that the 2021 Settlement Agreement and 2017
Settlement Agreement resolve “all disputes between the parties” involving
Patent 10,407,458 B2, Patent 10,407,459 B2, Patent 10,457,984 B2, Patent
10,435,742 B2, and Patent 10,428,380 B2, including the pending Patent
Office and District Court proceedings between the Parties. Id. at 1–2. The
Parties further represent that “[n]o other petitioners remain in these inter
partes review proceedings.” Id. at 1.
We instituted trial in each of the above-identified proceedings
between December 8, 2020 and January 13, 2021. IPR2020-00988, Paper
20; IPR2020-01065, Paper 19; IPR2020-01125, Paper 20; IPR2020-01177,
Paper 19; IPR2020-01323, Paper 17. We have not yet decided the merits of
any of the above-identified proceedings, and no final written decision has
been entered in any case. Notwithstanding that each proceeding has moved
beyond the preliminary stage, the Parties have shown adequately that the
termination of these proceedings is appropriate. Under these circumstances,
IPR2020-00988 (Patent 10,407,458 B2)
IPR2020-01065 (Patent 10,407,459 B2)
IPR2020-01125 (Patent 10,457,984 B2)
IPR2020-01177 (Patent 10,435,742 B2)
IPR2020-01323 (Patent 10,428,380 B2)

4
we determine that good cause exists to terminate the above-identified
proceedings with respect to the Parties.
The Parties also filed a Renewed Joint Request that the 2021
Settlement Agreement (Ex. 1169) and 2017 Settlement Agreement
(Ex. 1170) each be treated as business confidential information and be kept
separate from the file of the respective patents involved in these inter partes
reviews. Renewed Joint Request 1. After reviewing the 2021 Settlement
Agreement and 2017 Settlement Agreement between Petitioner and Patent
Owner, we find that each agreement contains confidential business
information regarding the terms of settlement. We determine that good
cause exists to treat the 2021 Settlement Agreement (Ex. 1169) and 2017
Settlement Agreement (Ex. 1170) between Petitioner and Patent Owner as
business confidential information pursuant to 35 U.S.C. § 317(b) and 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
Accordingly, for the reasons discussed above, it is:
ORDERED that the Renewed Joint Motion to Terminate (Paper 37) is
granted, and IPR2020-00988, IPR2020-01065, IPR2020-01125, IPR2020-
01177, and IPR2020-01323 are terminated with respect to Petitioner and
Patent Owner pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. § 42.72;
IPR2020-00988 (Patent 10,407,458 B2)
IPR2020-01065 (Patent 10,407,459 B2)
IPR2020-01125 (Patent 10,457,984 B2)
IPR2020-01177 (Patent 10,435,742 B2)
IPR2020-01323 (Patent 10,428,380 B2)

5
FURTHER ORDERED that the Renewed Joint Request (Paper 38) to
File the 2021 Settlement Agreement (Ex. 1169) and 2017 Settlement
Agreement (Ex. 1170) as Business Confidential Information is granted; and
FURTHER ORDERED that the 2021 Settlement Agreement and 2017
Settlement Agreement (IPR2020-00988, Ex. 1169 and 1170; IPR2020-
01065, Ex. 1169 and 1170; IPR2020-01125, Ex. 1169 and 1170; IPR2020-
01177, Ex. 1169 and 1170; and IPR2020-01323, Ex. 1169 and 1170) shall
be kept separate from the files of Patent 10,407,458 B2, Patent 10,407,459
B2, Patent 10,457,984 B2, Patent 10,435,742 B2, and Patent 10,428,380 B2
and made available only to Federal Government agencies on written request,
or to any person on a showing of good cause, pursuant to 37 C.F.R.
§ 42.74(c).

IPR2020-00988 (Patent 10,407,458 B2)
IPR2020-01065 (Patent 10,407,459 B2)
IPR2020-01125 (Patent 10,457,984 B2)
IPR2020-01177 (Patent 10,435,742 B2)
IPR2020-01323 (Patent 10,428,380 B2)

6
FOR PETITIONER:

Kerry Taylor
Nathanael R. Luman
Michael L. Fuller
William R. Zimmerman
KNOBBE, MARTENS, OLSON & BEAR, LLP
2kst@knobbe.com
2nrl@knobbe.com
2mlf@knobbe.com
2wrz@knobbe.com

FOR PATENT OWNER:

John P. White
Gary J. Gershik
COOPER & DUNHAM LLP
jwhite@cooperdunham.com
ggershik@cooperdunham.com

John D. Murnane
Justin J. Oliver
VENABLE LLP
jdmurnane@venable.com
joliver@venable.com