`Tel: 571-272-7822
`
`
`Paper 21
` Entered: April 30, 2015
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ANTARES PHARM, INC., LEO PHARMA A/S AND
`LEO PHARMA INC.,
`Petitioner,
`
`v.
`
`MEDAC GESELLSCHAFT FÜERKLINISCHE
`SPEZIALPRÄPARATE MBH.,
`Patent Owners.
`____________
`
`Case IPR2014-01091
`Patent 8,664,231 B2
`_____________
`
`
`Before TONI SCHEINER, ERICA A. FRANKLIN, and
`JACQUELINE WRIGHT BONILLA, Administrative Patent Judges.
`
`FRANKLIN, Administrative Patent Judge.
`
`
`
`JUDGMENT
`Termination of the Proceeding
`37 C.F.R. § 42.72
`
`
`
`
`
`
`IPR2014-01091
`Patent 8,664,231 B2
`
`
`On April 17, 2015, the parties filed a joint motion to terminate the
`
`proceeding pursuant to 35 U.S.C § 317. Paper 17. In addition, and pursuant
`
`to 35 U.S.C § 317 (b) and 37 C.F.R. § 42.74, the parties filed a true copy of
`
`their written settlement agreement, Ex. 1034, and requested in the joint
`
`motion that the settlement agreement be treated as business confidential
`
`information and kept separate from the file of US Patent No. 8,664,231 B2
`
`(“the ’231 patent”), Paper 17, 2. The joint motion and the settlement
`
`agreement were filed so as to limit viewing to the parties and the Board only.
`
`The parties indicated in their joint motion that termination of this
`
`proceeding is appropriate because they have reached an agreement settling
`
`their dispute with respect to the ’231 patent. Id. at 1. The parties indicated
`
`also that they have filed a joint stipulation of dismissal in the related district
`
`court litigation, Medac Pharma, Inc. v. Antares Pharma, Inc, No. 1:14-cv-
`
`01498-JBS-KMW (D.N.J.). Id. at 2.
`
`Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under
`
`this chapter shall be terminated with respect to any petitioner upon the joint
`
`request of the petitioner and patent owner, unless the Office has decided the
`
`merits of the proceeding before the request for termination is filed.” As the
`
`parties indicated in their joint motion, this proceeding has not yet been
`
`decided on the merits.
`
`Further, under 37 C.F.R. § 42.74(b), “[a]ny agreement or
`
`understanding between the parties made in connection with, or in
`
`contemplation of, the termination of a proceeding shall be in writing and a
`
`true copy shall be filed with the Board before termination of the trial.” As
`
`the parties have filed their written settlement agreement, and have requested
`
`a dismissal of the co-pending district court case, we determine that it is
`
`
`
`2
`
`
`
`IPR2014-01091
`Patent 8,664,231 B2
`
`appropriate to terminate this proceeding without rendering a Final Written
`
`Decision as to the patentability of claims 1–22 of the ’231 patent. See 37
`
`C.F.R. §§ 42.72, 42.73, 42.74.
`
`As requested by the parties, the settlement agreement will be treated
`
`as business confidential information and kept separate from the file of the
`
`’231 patent. 37 C.F.R. § 42.74(c). Although the parties filed the joint
`
`motion so as to limit viewing to the parties and the Board only, a motion to
`
`seal, containing a protective order, was not filed concurrently with the joint
`
`motion, nor would sealing the joint motion be appropriate. Accordingly, the
`
`joint motion (Paper 17), as well as this Judgment, will be made publicly
`
`available. See 37 C.F.R. § 42.14.
`
`
`
`Accordingly, it is
`
`ORDERED that the parties’ joint request that the settlement
`
`agreement be treated as business confidential information is GRANTED;
`
`and
`
`FURTHER ORDERED that the joint motion to terminate the
`
`proceeding is GRANTED; and
`
`FURTHER ORDERED that the proceeding is TERMINATED.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`3
`
`
`
`IPR2014-01091
`Patent 8,664,231 B2
`
`PETITIONER:
`
`Sanya Sukduang
`Thomas Jenkins
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
`Sanya.Sukduang@finnegan.com
`thomas.jenkins@finnegan.com
`
`PATENT OWNER:
`
`James F. Haley, Jr.
`Ching-Lee Fukuda
`ROPES & GRAY LLP
`james.haley@ropesgray.com
`ching-lee.fukuda@ropesgray.com
`
`
`
`4
`
`
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