`571-272-7822
`
`
`
`
`
`
`
`
` Paper 43
`
`
`Entered: September 2, 2016
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`SANOFI-AVENTIS U.S. LLC,
`REGENERON PHARMACEUTICALS, INC., AND,
`GENZYME CORPORATION,
`Petitioner,
`
`v.
`
`GENENTECH, INC. AND CITY OF HOPE,
`Patent Owner.
`_______________
`
`Case IPR2015-016241
`Patent 6,331,415 B1
`_______________
`
`
`Before LORA M. GREEN, ERICA A. FRANKLIN, and
`SUSAN L. C. MITCHELL, Administrative Patent Judges.
`
`GREEN, Administrative Patent Judge.
`
`
`
`JUDGMENT
`Termination of the Proceeding
`37 C.F.R. § 42.73
`
`
`
`1 Case IPR2016-00460 has been joined with this proceeding.
`
`
`
`IPR2015-01624
`Patent 6,331,415 B1
`
`
`On August 24, 2016, and pursuant to 35 U.S.C. § 317 and 37 C.F.R.
`
`§ 42.74, the parties filed copies of the settlement agreements between
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`Genentech, Inc., City of Hope, Sanofi-Aventis U.S. LLC, and Regeneron
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`Pharmaceuticals, Inc. (Exhibit 2142), and between Genentech, Inc., City of
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`Hope, and Genzyme Corp. (Exhibit 2143), along with a joint motion to
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`terminate the proceeding and joint request to treat the settlement agreement
`
`as business confidential, to be separate from the patent file (Paper 42).2 We
`
`note that although the parties may agree to settle their issues related to the
`
`involved patent, the Board is not a party to the settlement and may determine
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`independently any question of patentability. 37 C.F.R. § 42.74(a).
`
`For the reasons provided below, the joint motion to terminate is
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`granted. The joint request that the settlement agreement be treated as
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`business confidential information is also granted.
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`Petitioner has yet to file a reply to the Patent Owner Response in the
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`joined proceeding, and we have not yet decided the merits of this
`
`proceeding. The parties represent that the “settlement agreements and any
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`collateral agreements made in contemplation of termination of the
`
`proceeding are in writing, and true and correct copies of such documents are
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`being filed herewith as Exhibits 2142 and 2143. No other such agreements,
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`written or oral, exist between or among the parties.” Paper 42, 2. The
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`parties represent further that they have agreed to settle their disputes as
`
`
`
`2 We note that the preferred practice is to file the joint motion to terminate
`and the joint request to treat the settlement agreement as business
`confidential as separate papers.
`
`2
`
`
`
`IPR2015-01624
`Patent 6,331,415 B1
`
`
`involving the patent at issue in the instant proceeding, U.S. Patent No.
`
`6,331,415, as well as related U.S. Patent No. 7,923,221, “including all
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`litigation and Patent Office proceedings related thereto.” Id. at 4.
`
`In view of the parties’ settlement agreement made in connection with
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`the termination in accordance with 35 U.S.C. § 317(b) and 37 C.F.R.
`
`§ 42.74(b), we determine that it is appropriate to terminate the involvement
`
`of Petitioners. Moreover, we determine that it also is appropriate to
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`terminate the proceeding with respect to Patent Owner, because we have not
`
`yet decided the merits of this proceeding. As a result, it is appropriate to
`
`enter judgment in the form of termination. See 37 C.F.R. § 42.2.
`
`Accordingly, it is
`
`ORDERED that the parties’ request that the settlement agreement be
`
`treated as business confidential information, to be kept separate from the
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`patent file, is GRANTED;
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`FURTHER ORDERED that the joint motion to terminate the
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`proceeding is GRANTED;
`
`FURTHER ORDERED that the proceeding is TERMINATED.
`
`
`
`
`
`
`
`3
`
`
`
`IPR2015-01624
`Patent 6,331,415 B1
`
`
`PETITIONER:
`
`Richard McCormick
`rmccormick@mayerbrown.com
`Brian Nolan
`bnolan@mayerbrown.com
`
`
`PATENT OWNER:
`
`David Cavanaugh
`David.cavanaugh@wilmerhale.com
`Heather M. Petruzzi
`Heather.petruzzi@wilmerhale.com
`Adam R. Brausa
`abrausa@druietangri.com
`Jeffrey P. Kushan
`iprnotices@sidley.com
`
`
`
`
`
`4
`
`
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