Acantha LLC

Patent Trials and Appeals Board

Oct 8, 2020

IPR2020-00684 (P.T.A.B. Oct. 8, 2020)

Trials@uspto.gov Paper 15
571-272-7822 Date: October 8, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

NUVASIVE, INC.,
Petitioner,

v.

ACANTHA LLC,
Patent Owner.

IPR2020-00684
Patent RE43,008 E

Before TIMOTHY J. GOODSON, JAMES J. MAYBERRY, and
TIMOTHY G. MAJORS, Administrative Patent Judges.

MAYBERRY, Administrative Patent Judge.

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

IPR2020-00684
Patent RE43,008 E

2
I. INTRODUCTION
With the Board’s authorization, Petitioner and Patent Owner
(collectively referred to as “the Parties”) filed a Joint Motion to
Terminate the above-identified proceeding due to settlement. Paper 13
(“Joint Motion”). In support of the Joint Motion, the Parties filed a copy of
a Settlement Agreement, License and Release (Ex. 2019 (“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 14 (“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
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 317(a) also provides that if no petitioner remains in
the inter partes review, the Office may terminate the review.
In the Joint Motion, the Parties represent that they have reached an
agreement that “resolves all underlying disputes between the Parties,
including this proceeding.” Joint Motion 1. The Parties further represent
that the filed copy of the Settlement Agreement is a true copy, and “there are
no collateral agreement or understandings made in connection with, or in
contemplation of, the termination of this proceeding.” Id.
We instituted a trial on the above-identified proceeding on August 25,
2020. Paper 11. We have not yet decided the merits of the proceeding,
and a final written decision has not been entered. Notwithstanding that the
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Patent RE43,008 E

3
proceeding has moved beyond the preliminary stage, the Parties have
adequately shown that termination of the proceeding is appropriate. Under
these circumstances, we determine that good cause exists to terminate the
proceeding with respect to the Parties.
In the Joint Request, the Parties request that the Settlement Agreement
be treated as business confidential information, be kept separate from the file
of the patent involved in this inter partes proceeding, and be made available
only to Federal Government agencies on written request or to other persons
on a showing of good cause. Joint Request, 1–2. After reviewing the
Settlement Agreement between Petitioner and Patent Owner, we find that the
Settlement Agreement contains confidential business information regarding
the terms of settlement. We determine that good cause exists to treat the
Settlement Agreement 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 Joint Motion to Terminate (Paper 13) is granted,
and IPR2020-00684 is terminated with respect to Petitioner and Patent
Owner pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. § 42.72; and
FURTHER ORDERED that the Joint Request to File Settlement
Agreement as Business Confidential Information (Paper 14) is granted, and
the Settlement Agreement (Ex. 2019) shall be kept separate from the file of
Patent RE43,008 E, and be made available only to Federal Government
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Patent RE43,008 E

4
agencies on written request, or to any person on a showing of good cause,
pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).

IPR2020-00684
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FOR PETITIONER:
Michael T. Rosato
Jad A. Mills
WILSON SONSINI GOODRICH & ROSATI
mrosato@wsgr.com
jmills@wsgr.com

John S. Kyle
KYLE HARRIS LLP
jkyle@klhipbiz.com

FOR PATENT OWNER:
Margaux A. Savee
Jay Guiliano
Ryan Murphy
POLSINELLI LLP
msavee@polsinelli.com
jguiliano@polsinelli.com
rmurphy@polsinelli.com