UNM Rainforest Innovations

Patent Trials and Appeals Board

Dec 29, 2020

IPR2021-00021 (P.T.A.B. Dec. 29, 2020)

Trials@uspto.gov Paper 9
571-272-7822 Entered: December 29, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________
QUEST DIAGNOSTICS INCORPORATED,
Petitioner,
v.
UNM RAINFOREST INNOVATIONS,1
Patent Owner.
_______________

IPR2021-00021
Patent 7,314,760 B2
_______________

Before SUSAN L. C. MITCHELL, ZHENYU YANG, and
JON B. TORNQUIST, Administrative Patent Judges.

MITCHELL, Administrative Patent Judge.

DECISION
Settlement Prior to Institution of Trial
37 C.F.R. § 42.74

1 Patent Owner represents that “[e]ffective July 1, 2020, STC.UNM amended
its Articles of Incorporation to now be known as UNM Rainforest
Innovations.” Paper 4, 1 n.1.
IPR2021-00021
Patent 7,314,760 B2

2

On December 7, 2020, pursuant to 37 C.F.R. § 42.74 and
35 U.S.C. § 317(b), Petitioner and Patent Owner (collectively referred to as
“the parties”) filed a Joint Motion to Terminate the above-identified
proceeding (Paper 7 (“Joint Motion”)) and a Joint Request to file a
Settlement and License Agreement as business confidential information and
to keep the Settlement and License Agreement separate from the file of the
involved patent (Paper 8 (“Joint Request”)), along with a copy of the
confidential Settlement and License Agreement (Ex. 1029 (“Settlement and
License Agreement”)).
In the Joint Motion, the parties represent that they have reached an
agreement to jointly seek termination of this inter partes review proceeding,
and that the filed copy of the Settlement and License Agreement is a true
and complete copy. Paper 7, 1–3. The parties further represent that their
Settlement and License Agreement resolves all currently pending Patent
Office proceedings between the parties involving U.S. Patent No.
7,314,760 B2. Id. at 2.
The above-identified proceeding is at an early stage. Patent Owner
has not filed a preliminary response in the proceeding, and we have not yet
decided whether to institute a trial in the proceeding. In view of the early
stage of the proceeding and the settlement between the parties, we determine
that good cause exists to terminate this proceeding with respect to the
parties.
Additionally, upon review of the Joint Request that the Settlement and
License Agreement be treated as business confidential information and be
kept separate from the file of the patent involved in this inter partes
proceeding, we determine that good cause exists to treat the Settlement and
IPR2021-00021
Patent 7,314,760 B2

3

License 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).
Therefore, the Joint Motion and the Joint Request are granted.
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 (Paper 7) to terminate the above-
identified proceeding is GRANTED, and IPR2021-00021 is TERMINATED
with respect to both Petitioner and Patent Owner; and
FURTHER ORDERED that the Joint Request (Paper 8) that the
Settlement and License Agreement (Ex. 1029) be treated as business
confidential information and be kept separate from the files of the above-
identified proceeding and from the file of Patent 7,314,760, under the
provisions of 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), is GRANTED.

IPR2021-00021
Patent 7,314,760 B2

4

For PETITIONER:

Jennifer Bush
RJ Shea
FENWICK & WEST LLP
Jbush-ptab@fenwick.com
rshea@fenwick.com

For PATENT OWNER:

Jay Kesan
DIMURO GINSBERG, PC
jay@jaykesan.com

Alfonso Chan
Ari Rafilson
SHORE CHAN DEPUMPO LLP
achan@shorechan.com
arafilson@shorechan.com