`571.272.7822
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`
`
`
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` Paper No. 11
` Entered: April 27, 2016
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`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MYLAN PHARMACEUTICALS INC. and MYLAN LABORATORIES
`LIMITED,
`Petitioner,
`
`v.
`
`BAXTER INTERNATIONAL INC. and BAXTER HEALTHCARE S.A.,
`Patent Owner.
`____________
`
`Case IPR2016-00217 (Patent 6,310,094 B1)
`Case IPR2016-00218 (Patent 6,528,540 B2)1
`____________
`
`
`
`Before KRISTINA M. KALAN, JON B. TORNQUIST, and
`TINA E. HULSE, Administrative Patent Judges.
`
`HULSE, Administrative Patent Judge.
`
`
`
`
`
`
`
`
`TERMINATION
`Dismissing the Proceeding
`37 C.F.R. § 42.5(a), 37 C.F.R. § 42.71(a)
`
`
`1 This decision addresses issues that are common to each of the above-
`referenced cases. We, therefore, issue a single decision that has been
`entered in each case.
`
`
`
`
`
`IPR2016-00217 (Patent 6,310,094 B1)
`IPR2016-00218 (Patent 6,528,540 B2)
`
`
`On April 25, 2016, the parties filed a joint motion to terminate the
`proceeding in each of the above-referenced cases pursuant to 35 U.S.C.
`§ 317(a). Paper 8.2 The parties also filed a copy of a settlement agreement
`(Exhibit 1026) along with a joint request to file the settlement agreement as
`business confidential information under 35 U.S.C. § 317(b) (Paper 9).
`Generally, the Board expects that a proceeding will terminate after the
`filing of a settlement agreement. See, e.g., Office Patent Trial Practice
`Guide, 77 Fed. Reg. 48756, 48768 (Aug. 14, 2012). This case is in the
`preliminary proceeding stage, which begins with the filing of a petition and
`ends with a written decision as to whether trial will be instituted. See 37
`C.F.R. § 42.2. Based on the facts of this case, we determine that it is
`appropriate to dismiss the case without rendering a decision as to whether a
`trial will be instituted. Therefore, the joint motion to terminate the case is
`GRANTED.
`Accordingly, it is
`ORDERED that the parties’ request that the settlement agreement be
`treated as business confidential information, to be kept separate from the
`patent file, is GRANTED;
`FURTHER ORDERED that the joint motion to terminate the case is
`GRANTED;
`FURTHER ORDERED that the Petition for inter partes review is
`DISMISSED.
`
`
`
`
`
`2 Paper numbers and exhibits refer to those filed in IPR2016-00217. Similar
`papers and exhibits were filed in IPR2016-00218.
`
`2
`
`
`
`IPR2016-00217 (Patent 6,310,094 B1)
`IPR2016-00218 (Patent 6,528,540 B2)
`
`PETITIONER:
`
`Steven W. Parmelee
`Michael T. Rosato
`Wilson Sonsini Goodrich & Rosati
`sparmlee@wsgr.com
`mrosato@wsgr.com
`
`PATENT OWNER:
`
`James W. Hill
`David L. Cavanaugh
`Owen K. Allen
`Wilmer Cutler Pickering Hale and Dorr LLP
`james.hill@wilmerhale.com
`david.cavanaugh@wilmerhale.com
`owen.allen@wilmerhale.com
`
`
`
`3
`
`