`Trials@uspto.gov
`Tel: 571-272-7822 Entered: December 15, 2015
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`APOTEX CORP. and APOTEX, INC.,
`Petitioner,
`
`v.
`
`ALLERGAN, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-01278 (8,633,162 B2)
`Case IPR2015-01282 (8,629,111 B2)
`Case IPR2015-01283 (8,685,930 B2)
`Case IPR2015-01284 (8,648,048 B2)
`Case IPR2015-01286 (8,642,556 B2)1
`____________
`
`
`Before SHERIDAN K. SNEDDEN, TINA E. HULSE, and
`CHRISTOPHER G. PAULRAJ, Administrative Patent Judges.
`
`SNEDDEN, Administrative Patent Judge.
`
`ORDER AUTHORIZING FILING OF MOTION TO TERMINATE
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`1 This Order addresses issues that are common to each of the above-
`referenced cases. We, therefore, issue a single Order that has been entered
`in each case.
`
`
`
`IPR2015-01278 (8,633,162 B2); IPR2015-01282 (8,629,111 B2);
`IPR2015-01283 (8,685,930 B2); IPR2015-01284 (8,648,048 B2);
`IPR2015-01286 (8,642,556 B2)
`
`
`In an email correspondence sent to the Board on December 14, 2015,
`counsel for Petitioner suggested that the parties may seek to terminate each
`of the above-captioned cases based on settlement. The relevant portion of
`the email reads as follows:
`The deadline for a decision on institution regarding IPR2015-
`01282 and -1282 falls on December 17, 2015. The deadline
`regarding IPR2015-1278 and -1286 falls on December 18,
`2015, and the deadline regarding IPR2015-1284 falls on
`December 22, 2015.
`
`
`Both patent owner and petitioner have been working diligently
`to settle all 5 IPR proceedings, and hope to finalize an
`agreement shortly. To facilitate the settlement process, both
`parties respectfully request that the Board refrain from issuing
`institution decisions until the date on which the deadlines fall.
`Both parties are available for a telephone conference at the
`Board’s convenience should the Board feel that a telephone
`conference would be helpful.
`
`The parties are authorized to file a Joint Motion to Terminate this
`proceeding. The Joint Motion to Terminate must update the Board
`concerning the status of any litigation or proceeding, including, but not
`limited to proceedings in the U.S. Patent and Trademark Office, involving
`the subject patents. The Joint Motion to Terminate must be filed by
`December 15, 2015.
`The parties may agree to settle any issue in a proceeding pursuant to a
`written agreement, a copy of which shall be filed with the Board before
`termination of the trial. 37 C.F.R. § 42.74(a)-(b). Any agreement or
`understanding between the patent owner and a petitioner, including any
`collateral agreements referred to in such agreement or understanding made
`in connection with, or in contemplation of, the termination of an inter partes
`
`2
`
`
`
`IPR2015-01278 (8,633,162 B2); IPR2015-01282 (8,629,111 B2);
`IPR2015-01283 (8,685,930 B2); IPR2015-01284 (8,648,048 B2);
`IPR2015-01286 (8,642,556 B2)
`
`review shall be in writing, and a true copy of such agreement or
`understanding shall be filed in the Office before the termination of such
`review as between the parties. 35 U.S.C. § 317(b).
`A party to a settlement may request that any written agreement be
`treated as business confidential information and be kept separate from the
`files of an involved patent. 35 U.S.C. § 317(b); 37 C.F.R. § 42.74(c). The
`request must be filed with the settlement. Id.
`It is ORDERED that the parties are authorized to file, by December
`15, 2015, a Joint Motion to Terminate the proceeding in IPR2015-01278
`(8,633,162 B2), IPR2015-01282 (8,629,111 B2), IPR2015-01283 (8,685,930
`B2), IPR2015-01284 (8,648,048 B2), and/or IPR2015-01286 (8,642,556
`B2); and
`FURTHER ORDERED that the parties are authorized to file, by
`December 15, 2015, a Joint Request that the Settlement Agreement Be
`Treated as Business Confidential Information.
`
`3
`
`
`
`
`
`
`
`IPR2015-01278 (8,633,162 B2); IPR2015-01282 (8,629,111 B2);
`IPR2015-01283 (8,685,930 B2); IPR2015-01284 (8,648,048 B2);
`IPR2015-01286 (8,642,556 B2)
`
`PETITIONER:
`
`Eldora L. Ellison
`eellison-PTAB@skgf.com
`
`Ralph W. Powers III
`tpowers-PTAB@skgf.com
`
`PATENT OWNER:
`
`Dorothy P. Whelan
`whelan@fr.com
`
`Michael Kane
`IPR13351-0060IP1@fr.com
`
`
`
`
`4
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