`571-272-7822
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` Paper 8
`Entered: 5 May 5, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`ENZYMOTEC LTD. and ENZYMOTEC USA, INC.
`Petitioner,
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`v.
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`NEPTUNE TECHNOLOGIES AND BIORESSOURCES INC.
`Patent Owner
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`____________
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`Cases IPR2014-00466 (Patent 8,383,675)
`IPR2014-00586 (Patent 8,278,351)
`IPR2014-00636 (Patent 8,278,351) 1
`____________
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`Before LORA M. GREEN, JACQUELINE WRIGHT BONILLA, and
`SHERIDAN K. SNEDDEN, Administrative Patent Judges.
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`GREEN, Administrative Patent Judge.
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`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
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`
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`1 This order addresses issues that are the same in both cases. We exercise our
`discretion to issue one order to be filed in each case. The parties, however, are not
`authorized to use this style heading in subsequent papers.
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`
`
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`Cases IPR2014-00466 (Patent 8,383,675)
`IPR2014-00586 (Patent 8,278,351)
`IPR2014-00636 (Patent 8,278,351)
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`A conference call was held on Wednesday, April 30, 2014, in the above
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`proceedings between Cynthia Hardman, counsel for Petitioner; Stephen Altieri,
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`representing Patent Owner; and Judges Green, Bonilla, and Snedden. The parties
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`sought authorization to file a joint motion to terminate the proceedings on the basis
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`that the parties have reached a settlement.
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`Generally, the Board expects that a proceeding will terminate after the filing
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`of a settlement agreement. See, e.g., Office Patent Trial Practice Guide, 77 Fed.
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`Reg. 48,756, 48,768 (Aug. 14, 2012). The rule governing settlement indicates that
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`any agreement between the parties made in connection with, or in contemplation
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`of, the termination of a proceeding shall be in writing and filed with the Board.
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`37 C.F.R. § 42.74.
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`During the conference call, the Board authorized the filing of a joint motion
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`to terminate the proceeding and provided guidance as to the procedure for filing
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`the parties’ settlement agreement and having the settlement agreement treated as
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`business confidential information under 37 C.F.R. § 42.74(c). The joint motion
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`must (1) include a brief explanation as to why termination is appropriate;
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`(2) identify all parties in any related district court litigation or ITC proceeding
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`involving the patents at issue; (3) identify any related proceedings currently before
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`the Office, and (4) discuss specifically the current status of each such related
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`litigation or proceeding with respect to each party to the litigation or proceeding.
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`The joint motion to terminate must be accompanied by a true copy of the parties’
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`settlement agreement, as required by 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b).
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`A redacted version of the settlement agreement will not be accepted as a true copy
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`of the settlement agreement. Moreover, the settlement agreement may not be
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`expunged after termination of the proceeding.
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`2
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`
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`Cases IPR2014-00466 (Patent 8,383,675)
`IPR2014-00586 (Patent 8,278,351)
`IPR2014-00636 (Patent 8,278,351)
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`With respect to having the settlement agreement treated as business
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`confidential information under 37 C.F.R. § 42.74(c), the parties must file the
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`confidential settlement agreement electronically in the Patent Review Processing
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`System (PRPS) as an exhibit in accordance with the instructions provided on the
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`Board’s website (uploading as “Parties and Board Only”). The parties are directed
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`to FAQ G2 on the Board’s website at http://www.uspto.gov/ip/boards/bpai/prps.jsp
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`for instructions on how to file their settlement agreement as confidential.
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`In consideration of the foregoing, it is hereby:
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`ORDERED that the parties are authorized to file a joint motion to terminate
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`this proceeding no later than MAY 9, 2014;
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`FURTHER ORDERED that the joint motion must be accompanied by a true
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`copy, labeled as an exhibit, of the parties’ settlement agreement as required by
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`35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b);
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`FURTHER ORDERED that, for the exhibit that is the settlement agreement
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`filed in this proceeding, the parties may file a separate paper requesting that the
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`settlement agreement be treated as business confidential information as specified in
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`37 C.F.R. § 42.74(c); and
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`FURTHER ORDERED that any confidential settlement agreement must be
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`filed electronically in PRPS in accordance with the instructions provided on the
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`Board’s website (uploading as “Parties and Board Only”).
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`3
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`Cases IPR2014-00466 (Patent 8,383,675)
`IPR2014-00586 (Patent 8,278,351)
`IPR2014-00636 (Patent 8,278,351)
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`PETITIONER:
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`Elizabeth Holland
`eholland@kenyon.com
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`Cynthia Hardman
`chardman@kenyon.com
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`PATENT OWNER:
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`Stephen Altieri
`saltieri@cooley.com
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`J. Dean Farmer
`dfarmer@cooley.com
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`4
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