Varian Medical Systems, Inc.

Patent Trials and Appeals Board

Jul 1, 2021

IPR2020-01465 (P.T.A.B. Jul. 1, 2021)

Trials@uspto.gov Paper 12
571-272-7822 Date: July 1, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

VIEWRAY, INC. and VIEWRAY TECHNOLOGIES, INC.,
Petitioner,

v.

VARIAN MEDICAL SYSTEMS, INC.,
Patent Owner.

IPR2020-01251 (Patent 9,082,520 B2)
IPR2020-01403 (Patent 9,082,520 B2)
IPR2020-01465 (Patent 8,637,841 B2)

Before BRIAN J. McNAMARA, PATRICK M. BOUCHER, and
GARTH D. BAER Administrative Patent Judges.

BAER, Administrative Patent Judge.

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

IPR2020-01251 (Patent 9,082,520 B2)
IPR2020-01403 (Patent 9,082,520 B2)
IPR2020-01465 (Patent 8,637,841 B2)

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I. INTRODUCTION
With the Board’s authorization, Petitioner and Patent Owner
(collectively “the Parties”) filed a Joint Motion to Terminate/Joint Motion to
Dismiss in each of the above-identified proceedings. Paper 111 (“Joint
Motions”). In support of each Joint Motion, the Parties filed a copy of a
Settlement Agreement (Ex. 1022), as well as a Joint Request to Keep
Separate (Paper 12 (“Joint Request”)).
II. DISCUSSION
In each of the Joint Motions, the Parties represent that they “have
settled with respect to the challenged patent and have reached agreement to
terminate this IPR” and that they “are also moving to dismiss related case
Varian Medical Systems, Inc. v. ViewRay, Inc. et al., 3:19-cv-05697-SI
(N.D. Cal.) and do not contemplate any litigation or proceedings involving
the challenged patent in the foreseeable future.” Joint Motion 1. The parties
further represent that “there are no collateral agreements or understandings
made in connection with, or in contemplation of, the termination of this
IPR.” Id. at 3.
The above-referenced proceedings are each at an early stage, and we
have not yet decided whether to institute trials. In view of the early stage of
the proceedings and the settlement between the Parties, we determine that
good cause exists to dismiss the petitions and terminate the proceedings with
respect to the Parties.

1 For expediency, we cite to papers and exhibits in IPR2020-01251. Similar
papers were filed in IPR2020-01403 and IPR2020-01465.
IPR2020-01251 (Patent 9,082,520 B2)
IPR2020-01403 (Patent 9,082,520 B2)
IPR2020-01465 (Patent 8,637,841 B2)

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In the Joint Requests, the Parties request that the Settlement
Agreement be treated as business confidential information and be kept
separate from the files of the patents involved in these proceedings. Joint
Request 1. 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
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 Motions are granted, and the petitions in
IPR2020-01251, IPR2020-01403, and IPR2020-01465 are dismissed and
these proceedings are terminated; and
FURTHER ORDERED that the Joint Requests are granted, and the
Settlement Agreement shall be kept separate from the files of
Patents 9,082,520 B2 and 8,637,841 B2 and be 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).
IPR2020-01251 (Patent 9,082,520 B2)
IPR2020-01403 (Patent 9,082,520 B2)
IPR2020-01465 (Patent 8,637,841 B2)

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FOR PETITIONER:

Howard Wisnia
WISNIA PC
howard@wisnialaw.com

James Conley
PILLSBURY WINTHROP SHAW PITTMAN LLP
james.conley@pillsburylaw.com

FOR PATENT OWNER:

Harper Batts
Chris Ponder
Jeffrey Liang
RICHTER & HAMPTON LLP
hbatts@sheppardmullin.com
cponder@sheppardmullin.com
jliang@sheppardmullin.com