The Board of Regents of the University of Texas System

Patent Trials and Appeals Board

Aug 6, 2021

IPR2018-00949 (P.T.A.B. Aug. 6, 2021)

Trials@uspto.gov Paper 20
571-272-7822 Entered: August 6, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________
BAYLOR COLLEGE OF MEDICINE,
Petitioner,
v.
THE BOARD OF REGENTS OF THE
UNIVERSITY OF TEXAS SYSTEM,
Patent Owner.
_______________

IPR2018-00948 (Patent 8,728,806 B2)
IPR2018-00949 (Patent 9,333,248 B2)1
_______________

Before ZHENYU YANG, CHRISTOPHER G. PAULRAJ, and
JOHN E. SCHNEIDER, Administrative Patent Judges.

YANG, Administrative Patent Judge.

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

1 This Order addresses an issue common to each referenced case. We,
therefore, issue a single order to be entered in each case. For convenience,
paper numbers refer to those filed in IPR2018-00948.
IPR2018-00948 (Patent 8,728,806 B2)
IPR2018-00949 (Patent 9,333,248 B2)

2

Baylor College of Medicine (“Petitioner”) filed a Petition (Paper 1),
seeking an inter partes review of claims of U.S. Patent Nos. 8,728,806 B2
and 9,333,248 B2. In each case, we authorized The Board of Regents of the
University of Texas System (“Patent Owner”) to file a Motion to Dismiss
based on the doctrine of sovereign immunity. Paper 8. We ultimately denied
Patent Owner’s Motion to Dismiss (Paper 13), but granted its unopposed
Motion to Stay to afford Patent Owner an opportunity to appeal the denials
(Paper 16). The Federal Circuit affirmed our decision denying the Motion to
Dismiss, and the mandate issued on February 25, 2021.
Thereafter, in a series of email communications with the Board, the
parties informed the Board that they have reached an agreement, whereby
Patent Owner would assign the challenged patents to Petitioner upon
approval of the National Institute of Health (the “NIH”). Ex. 3001. The
parties jointly requested, and the Board granted, several extensions during
the NIH review period. Id.
On July 23, 2021, pursuant to 37 C.F.R. § 42.74 and
35 U.S.C. § 317(b), the parties filed a Joint Motion to Terminate each of the
above-identified proceedings (Paper 18), along with copies of a Patent
Assignment Agreement and an Amendment (Exs. 2002, 2003, collectively,
“Agreements”). The parties also filed a Joint Request to keep the
Agreements as business confidential information and to keep the
Agreements separate from the files of the involved patents. Paper 19.
In the Joint Motion, the parties represent that they have reached an
agreement to jointly seek termination of the above-identified proceedings,
and that the filed copies of the Agreements are true and complete copies.
Paper 18, 1, 3. The parties further represent that their Agreements resolve
IPR2018-00948 (Patent 8,728,806 B2)
IPR2018-00949 (Patent 9,333,248 B2)

3

all currently pending disputes and proceedings (including Patent Office and
district court proceedings) between the parties involving the above-identified
patents at issue. Paper 18, 1–2.
The above-identified proceedings are at an early stage, as we have not
yet decided whether to institute a trial in any of these proceedings. In view
of the early stage of the above-identified proceedings and the settlement
between the parties, we determine that good cause exists to terminate these
proceedings with respect to the parties.
Additionally, upon review of the Joint Request that the Agreements be
treated as business confidential information and be kept separate from the
files of the respective patents, we determine that good cause exists to treat
the Agreements 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 Motions and the Joint Requests 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 Motions (IPR2018-00948, Paper 18;
IPR2018-00949, Paper 17) to terminate the above-identified proceedings are
granted, and that IPR2018-00948 and IPR2018-00949 are terminated with
respect to both Petitioner and Patent Owner;
FURTHER ORDERED that the Joint Requests (IPR2018-00948,
Paper 19; IPR2018-00949, Paper 18) that the Agreements (IPR2018-00948,
IPR2018-00948 (Patent 8,728,806 B2)
IPR2018-00949 (Patent 9,333,248 B2)

4

Exs. 2002, 2003; IPR2018-00949, Exs. 2002, 2003) be treated as business
confidential information are granted; and
FURTHER ORDERED that the Agreements shall be kept separate
from the files of the above-identified proceedings and from the files of the
involved patents (U.S. Patent 8,728,806 and U.S. Patent 9,333,248).

IPR2018-00948 (Patent 8,728,806 B2)
IPR2018-00949 (Patent 9,333,248 B2)

5

PETITIONER:

Stephen M. Hash
Paul M. Morico
Jeffrey S. Gritton
BAKER BOTTS, L.L.P.
stephen.hash@bakerbotts.com
paul.morico@bakerbotts.com
jeff.gritton@bakerbotts.com

PATENT OWNER:

Peter E. Mims
Steve Borgman
VINSON & ELKINS
pmims@velaw.com
sborgman@velaw.com