Trials@uspto.gov
`571-272-7822
`
`Paper 39
`Entered: July 8, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`METRICS, INC., MAYNE PHARMA, and JOHNSON MATTHEY, INC.,
`Petitioner,
`
`v.
`
`SENJU PHARMACEUTICAL CO., LTD., BAUSCH & LOMB, INC., and
`BAUSCH & LOMB PHARMA HOLDINGS CORP.,
`Patent Owner.
`____________________
`
`
`
`Case IPR2014-01041 (Patent 8,129,431 B2)
`Case IPR2014-01043 (Patent 8,669,290 B2)1
`____________________
`
`Before FRANCISCO C. PRATS, ERICA A. FRANKLIN, and
`GRACE KARAFFA OBERMANN, Administrative Patent Judges.
`
`OBERMANN, Administrative Patent Judge.
`
`JUDGMENT
`Granting Joint Motion to Terminate and
`Granting Joint Request to Treat Settlement Agreement as Confidential
`37 C.F.R. §§ 42.73, 42.74
`
`
`
`
`
`
`1 This order addresses issues common to both cases; therefore, we issue a
`single order to be entered in each case. The parties are authorized to use this
`style heading when filing an identical paper in both proceedings, provided
`that such heading includes a footnote attesting that “the word-for-word
`identical paper is filed in each proceeding identified in the heading.”
`
`
`
`571-272-7822
`
`Paper 39
`Entered: July 8, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`METRICS, INC., MAYNE PHARMA, and JOHNSON MATTHEY, INC.,
`Petitioner,
`
`v.
`
`SENJU PHARMACEUTICAL CO., LTD., BAUSCH & LOMB, INC., and
`BAUSCH & LOMB PHARMA HOLDINGS CORP.,
`Patent Owner.
`____________________
`
`
`
`Case IPR2014-01041 (Patent 8,129,431 B2)
`Case IPR2014-01043 (Patent 8,669,290 B2)1
`____________________
`
`Before FRANCISCO C. PRATS, ERICA A. FRANKLIN, and
`GRACE KARAFFA OBERMANN, Administrative Patent Judges.
`
`OBERMANN, Administrative Patent Judge.
`
`JUDGMENT
`Granting Joint Motion to Terminate and
`Granting Joint Request to Treat Settlement Agreement as Confidential
`37 C.F.R. §§ 42.73, 42.74
`
`
`
`
`
`
`1 This order addresses issues common to both cases; therefore, we issue a
`single order to be entered in each case. The parties are authorized to use this
`style heading when filing an identical paper in both proceedings, provided
`that such heading includes a footnote attesting that “the word-for-word
`identical paper is filed in each proceeding identified in the heading.”
`
`
`
`
`IPR2014-01041 (Patent 8,129,431 B2)
`IPR2014-01043 (Patent 8,669,290 B2)
`
`
`On July 1, 2015, pursuant to Board authorization, the parties filed a
`
`joint motion to terminate each proceeding identified in the caption.
`
`Paper 37.2 With each joint motion, the parties filed a copy of their written
`
`settlement agreement, covering various matters involving the patents under
`
`review. Ex. 2027. The parties concurrently filed a joint request in each
`
`proceeding to treat their written settlement agreement as business
`
`confidential information, to be kept separate from the patent file pursuant to
`
`35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). Paper 38.
`
`The parties advance Exhibit 2027 as a true copy of the parties’ written
`
`settlement agreement, Paper 37, 1, and “certify that there are no collateral
`
`agreements or understandings made in connection with, or in contemplation
`
`of, the termination of the inter partes review.” Id. at 2. The parties attest
`
`that their agreement “ends all patent disputes between the parties, including”
`
`these inter partes reviews. Paper 37, 7. The parties also submit a copy of a
`
`stipulated consent judgment and injunction entered on June 30, 2015, which
`
`terminated their related district court litigation. Ex. 2028; see Paper 37, 3.
`
`The Board generally expects that a trial will terminate after the filing of a
`
`settlement agreement. See Office Patent Trial Practice Guide, 77 Fed. Reg.
`
`48756, 48768 (Aug. 14, 2012).
`
`
`
`
`
`2 Paper and Exhibit numbers are identical in IPR2014-01041 and IPR2014-
`01043. Substantially similar joint motions to terminate were filed in each
`proceeding.
`
`2
`
`
`
`
`
`
`
`IPR2014-01041 (Patent 8,129,431 B2)
`IPR2014-01043 (Patent 8,669,290 B2)
`
`
`The relatively early stage of these inter partes reviews counsels
`
`against proceeding to a final written decision. The reviews were instituted
`
`on February 19, 2015. Paper 19. Patent Owner has not yet filed a Response,
`
`which is due on July 27, 2015. Paper 36. As such, the record is incomplete
`
`and, lacking Patent Owner’s Response, is tilted towards Petitioner. We are
`
`not inclined to move forward to a final decision on this record.
`
`The parties identify a number of ongoing district court actions, and
`
`inter partes reviews, involving Patent Owner and entities other than
`
`Petitioner. Id. at 2–6. Most significantly, on March 19, 2015, an unrelated
`
`entity filed petitions challenging the patents under review and, concurrently
`
`therewith, filed motions to join with these proceedings; motions that
`
`Petitioner here has opposed. See Paper 34 (Petitioner’s opposition to
`
`joinder). One factor, informing our decision to grant the parties’ joint
`
`motion to terminate the instant proceedings, is that the unrelated petitioner in
`
`those other cases is not facing a time bar in the absence of joinder. See
`
`IPR2015-00902, Paper 3, 2; IPR2015-00903, Exhibit 0, 2 (motions for
`
`joinder, stating that underlying litigation was filed November 3, 2014); see
`
`also Exhibit 2001, 8 (hearing transcript in related cases, in which counsel for
`
`both parties confirm that the petitions in the related proceedings will not be
`
`time-barred in the absence of joinder); 35 U.S.C. § 315(b), (c) (explaining
`
`statutory bar, and the exception that applies to joinder).
`
`Taking account of all of the circumstances, including the
`
`incompleteness of the record and the fact that Petitioner and Patent Owner
`
`have resolved all of their outstanding patent disputes, the Board determinates
`
`3
`
`
`
`
`
`
`
`IPR2014-01041 (Patent 8,129,431 B2)
`IPR2014-01043 (Patent 8,669,290 B2)
`
`
`that it is appropriate to terminate the proceedings without rendering a final
`
`written decision. 37 C.F.R. § 42.72.
`
`
`
`It is
`
`ORDERED that the joint motion to terminate the proceedings is
`
`granted in each proceeding;
`
`FURTHER ORDERED that the joint request that the settlement
`
`agreement be treated as business confidential information, to be kept
`
`separate from the patent file, is granted in each proceeding; and
`
`FURTHER ORDERED that each proceeding is terminated.
`
`
`
`4
`
`
`
`
`
`
`
`
`
`IPR2014-01041 (Patent 8,129,431 B2)
`IPR2014-01043 (Patent 8,669,290 B2)
`
`
`
`
`PETITIONER:
`
`Patrick McPherson
`Vincent Capuano
`Duane Morris LLP
`pdmcpherson@duanemorris.com
`VCapuano@duanemorris.com
`
`PATENT OWNER:
`
`Bryan Diner
`M. Andrew Holtman
`Justin Hasford
`Jonathan R. Stroud
`Finnegan, Henderson, Farabow,
`Garrett & Dunner, LLP
`bryan.diner@finnegan.com
`andy.holtman@finnegan.com
`justin.hasford@finnegan.com
`jonathan.stroud@finnegan.com
`
`5
`
`
`
`
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
