HandyLab, Inc.

Patent Trials and Appeals Board

Dec 13, 2021

IPR2020-01132 (P.T.A.B. Dec. 13, 2021)

Trials@uspto.gov Paper 39
571-272-7822 Entered: December 13, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________
NEUMODX MOLECULAR, INC.,
Petitioner,
v.
HANDYLAB, INC.,
Patent Owner.
_______________

IPR2020-01132
Patent 8,709,787 B2
_______________

Before SHERIDAN K. SNEDDEN, JO-ANNE M. KOKOSKI, and
CHRISTOPHER G. PAULRAJ, Administrative Patent Judges.

SNEDDEN, Administrative Patent Judge.

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

IPR2020-01132
Patent 8,709,787 B2

2

Petitioner (NeuMoDx Molecular, Inc.) and Patent Owner (HandyLab,
Inc.) (collectively referred to as “the parties”) indicate that they have
reached an agreement to settle the above-identified inter partes review
proceeding. The Board authorized the parties to file a joint motion to
terminate the proceeding on November 12, 2021.
On November 15, 2021, pursuant to 37 C.F.R. § 42.74 and
35 U.S.C. § 317(a), the parties filed a Joint Motion to Terminate the above-
identified proceeding (Paper 37 (“Joint Motion”)) and a Joint Request to
treat the settlement agreement as business confidential information and to
keep said settlement agreement separate from the public file (Paper 38
(“Joint Request”)), along with a copy of the confidential settlement
agreement (Ex. 1256 (“Settlement Agreement”)). The parties represent that
the Settlement Agreement is “[a] true copy of the settlement agreement” by
which the parties “have settled this proceeding, all related litigation, and all
related proceedings before the Patent Office.” Paper 37, 4–5; see Ex. 1256.
In their Joint Motion, the parties “certify that there are no other written or
oral agreements or understandings, including any collateral agreements,
between them, including but not limited to licenses, covenants not to sue,
confidentiality agreements, payment agreements, or other agreements of any
kind, that are made in connection with or in contemplation of, the
termination of the instant proceeding.” Paper 37, 5. The parties request that
the “Settlement Agreement . . . [Ex. 1256] filed concurrently herewith . . . be
treated as business confidential information, [and] be kept separate from the
file of the involved patent” and “kept separate from the files of this
proceeding.” Paper 38, 1; Paper 37, 5.
IPR2020-01132
Patent 8,709,787 B2

3

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.” 35
U.S.C. § 317(a) also provides that if no petitioner remains in the inter
partes review, the Office may terminate the review. We have not yet
decided the merits of this proceeding, and a final written decision has not
been entered. Because this proceeding has not yet advanced to a stage
where an oral hearing has been held, we determine that it is appropriate to
terminate the proceeding. After reviewing the Settlement Agreement
between Petitioner and Patent Owner, 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).
We accordingly determine that it is appropriate to terminate this
proceeding without rendering a Final Written Decision as to the patentability
of the challenged claims of U.S Patent 8,709,787 B2, and grant the Joint
Motion and Joint Request.
This Order does not constitute a final written decision pursuant to
35 U.S.C. § 318(a).

Accordingly, it is:
ORDERED that the Joint Motion to Terminate (Paper 35) is granted,
and IPR2020-01132 is hereby terminated as to all parties;
FURTHER ORDERED that the Joint Request (Paper 38) to treat the
Settlement Agreement (Exhibit 1256) as business confidential information is
IPR2020-01132
Patent 8,709,787 B2

4

granted, and the Settlement Agreement (Exhibit 1256) shall be kept separate
from the files of the above-identified proceeding and from the file of U.S.
Patent 8,415,103 B2, under the provisions of 35 U.S.C. § 317(b) and
37 C.F.R. § 42.74(c); and
FURTHER ORDERED that the filed Settlement Agreement
(Exhibit 1256) remain designated as “Parties and Board Only” in the
Board’s E2E system.

IPR2020-01132
Patent 8,709,787 B2

5

Petitioner:

James K. Cleland
Michael N. Spink
Keith Weiss
DICKINSON WRIGHT, PLLC
jcleland@dickinson-wright.com
mspink@dickinson-wright.com
kweiss@dickinson-wright.com

Patent Owner:

Heather M. Petruzzi
Barish Ozdamar, Ph.D.
Laura Macro, Ph.D.
Omar Khan
WILMER CUTLER PICKERING HALE and DORR LLP
Heather.Petruzzi@wilmerhale.com
Barish.Ozdamar@wilmerhale.com
Laura.Macro@wilmerhale.com
Omar.Khan@wilmerhale.com