`Filed: July 1, 2015
`
`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 IPR2014-01043
`Patent No. 8,669,290
`________________
`
`JOINT REQUEST THAT SETTLEMENT AGREEMENT BE TREATED
`AS BUSINESS CONFIDENTIAL INFORMATION AND KEPT
`SEPARATE UNDER 37 C.F.R § 42.74(c)
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
`
`
`
`
`
`
`
`
`
`INTRODUCTION
`
`Case IPR2014-01043
`Patent No. 8,669,290
`
`Petitioner Metrics, Inc., Mayne Pharma, and Johnson Matthey, Inc.
`
`(collectively, “Metrics”), and Patent Owner Senju Pharmaceutical Co., Ltd.,
`
`Bausch & Lomb, Inc., and Bausch & Lomb Pharma Holdings Corp. (collectively,
`
`“Senju”) have entered into a settlement agreement that resolves all underlying
`
`disputes between the parties, including the inter partes review proceeding
`
`IPR2014-01043, against U.S. Patent No. 8,669,290, currently before the Board
`
`(“the proceeding”).
`
`In an email sent to parties on June 30, 2015, in light of the settlement
`
`agreement, the Board authorized the parties to file a joint motion to terminate in
`
`the above-captioned proceeding. Also in the email, the Board authorized the
`
`parties to file a joint request that the Office treat the agreement as business
`
`confidential information. Accordingly, the parties jointly request that the
`
`agreement be held separately and treated as business confidential information
`
`pursuant to 37 C.F.R. § 42.74(c).
`
`RELIEF REQUESTED
`
`If requested, the rules permit the parties to have any filed settlement
`
`agreement treated as business confidential information, and kept separate from the
`
`files of the involved patent. 37 C.F.R. § 42.74(c). Indeed, the statute requires it.
`
`–1–
`
`
`
`Case IPR2014-01043
`Patent No. 8,669,290
`At the request of a party to the proceeding, the agreement or
`
`understanding shall be treated as business confidential
`
`information, shall be kept separate from the file of the involved
`
`patents, and shall be made available only to Federal
`
`Government agencies on written request, or to any person on a
`
`showing of good cause.
`
`35 U.S.C. § 317(b).
`
`In a motion filed concurrently herewith, Petitioner and Patent Owner jointly
`
`request termination of the proceeding. The parties also submit, as part of that joint
`
`request, a true copy of the Agreement between them (Exhibit 2027). Because the
`
`Agreement contains confidential business information, the parties jointly request
`
`that the Office treat the Agreement (Exhibit 2027) as business confidential
`
`information, that the Agreement be kept separate from the file of the involved
`
`patents, and the Agreement be made available only to Federal Government
`
`agencies on written request, or to other persons only on a showing of good cause.
`
`
`
`CONCLUSION
`
`For the foregoing reasons, the Petitioner Metrics and Patent Owner Senju
`
`jointly and respectfully request that the Board hold the Agreement as business
`
`confidential information pursuant to 37 C.F.R. § 42.74(c) in the proceeding.
`
`
`
`
`
`
`
`–2–
`
`
`
`Case IPR2014-01043
`Patent No. 8,669,290
`Respectfully submitted,
`
`
`
`
`Patrick D. McPherson
`Registration No. 46,255
`Duane Morris LLP
`505 9th Street, Suite 1000
`Washington, DC 2004
`
`Vincent L. Capuano
`Registration No. 42,385
`100 High Street, Suite 2400
`Boston, MA 02110
`
`Attorneys for Petitioner
`Metrics, Inc., Mayne Pharma, and
`Johnson Matthey, Inc.
`
`
`
`
`
`
`
`
`
`
`/Bryan C. Diner/_____________
` Bryan C. Diner, Lead Counsel
`Reg. No. 32,409
`M. Andrew Holtman, Back-up Counsel
`Reg. No. 53,032
`Justin J. Hasford, Back-up Counsel
`Reg. No. 62,180
`Joshua L. Goldberg, Back-up Counsel
`Reg. No. 59,369
`Finnegan, Henderson, Farabow,
`Garrett & Dunner, L.L.P.
`901 New York Ave. NW
`Washington, DC
`
`Attorneys for Patent Owner
`Senju Pharmaceutical Co., Ltd., Bausch
`& Lomb, Inc., and Bausch & Lomb
`Pharma Holdings Corp.
`
`–3–
`
`Date: July 1, 2015
`
`
`
`
`
`
`Date: July 1, 2015
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies a copy of the foregoing JOINT REQUEST TO
`
`FILE AS CONFIDENTIAL BUSINESS INFORMATION was served on July
`
`1, 2015 via electronic mail directed to the counsel of record for the Petitioner at the
`
`following:
`
`
`
`
`Dated: July 1, 2015
`
`
`
`
`
`
`
`
`
`
`
`
`Patrick D. McPherson
`PDMcPherson@duanemorris.com
`
`Vincent L. Capuano
`VCapuano@duanemorris.com
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`/Ashley F. Cheung/
`Ashley F. Cheung
`Case Manager
`
`
`
`
`
`FINNEGAN, HENDERSON,
`FARABOW, GARRETT &
`DUNNER LLP
`
`–4–
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