`571-272-7822
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
` Paper 66
`
`
` Entered: May 10, 2017
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MERCK SHARP & DOHME CORP.,
`Petitioner,
`
`v.
`
`GENENTECH, INC. AND CITY OF HOPE,
`Patent Owner.
`____________
`
`Case IPR2016-007101
`Patent 6,331,415 B1
`____________
`
`
`
`Before TONI R. SCHEINER, LORA M. GREEN, and
`SUSAN L. C. MITCHELL, Administrative Patent Judges.
`
`GREEN, Administrative Patent Judge.
`
`
`JUDGMENT
`Granting Joint Motion to Terminate as to Merck
`Due to Settlement After Institution
`35 U.S.C. § 317 and 37 C.F.R. §§ 42.72, 42.74
`
`
`
`
`
`1 Case IPR2017-00047 has been joined with this proceeding.
`
`
`
`IPR2016-00710
`Patent 6,331,415 B1
`
`
`
`On May 4, 2017, Petitioner Merck Sharp & Dohme Corp. (“Petitioner
`Merck”) and Patent Owner filed a Joint Motion To Terminate Pursuant To
`35 U.S.C. § 317(a). Paper 63. The parties filed a copy of their Settlement
`Agreement, made in connection with the termination of these proceedings,
`in accordance with 37 C.F.R. § 42.74(b). Ex. 1151. The parties also filed a
`Joint Request that the settlement agreement be treated as business
`confidential information, and be kept separate from the file of the involved
`patent, under 35 U.S.C. § 317 and 37 C.F.R. § 42.74. Paper 64.
`The Board generally expects that a case “will terminate after the filing
`of a settlement agreement, unless the Board has already decided the merits.”
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14,
`2012); see 37 C.F.R. § 42.72. In their Joint Motion to Terminate, the parties
`indicate that the Settlement Agreement resolves all disputes between them
`with respect to this proceeding. See Paper 63, 3. The parties aver also that
`there are “no other written or oral agreements or understandings, including
`any collateral agreements, between them.” Id. The Joint Motion to
`Terminate was filed before oral argument, and, thus, before final written
`decision and a decision on the merits.
`We note that we terminated the proceeding as to Petitioner Mylan
`Pharmaceuticals, Inc., on April 4, 2017. Paper 54. Terminating as to
`Petitioner Merck will terminate the proceeding as to all parties. Thus, upon
`consideration of the facts before us, we determine that it is appropriate to
`terminate this proceeding, without rendering a final written decision. See 37
`
`2
`
`
`
`IPR2016-00710
`Patent 6,331,415 B1
`
`
`C.F.R. §§ 42.5(a), 42.71(a), 42.73(a), 42.74. Accordingly, we grant the Joint
`Motion to Terminate.
`We also determine that the parties have complied with the
`requirements of 37 C.F.R. § 42.74(c) to have the Settlement Agreement
`treated as business confidential information and kept separate from the files
`of the patent at issue in this proceeding. Thus, we grant the Joint Request to
`treat the Settlement Agreement as business confidential, as well as keeping it
`designated as Board only.
`
`ORDER
`
`Accordingly, it is
`ORDERED that the Joint Request of Petitioner Merck and Patent
`Owner to treat the Settlement Agreement as business confidential
`information, to be kept separate from the patent file, is GRANTED;
`FURTHER ORDERED that the joint motion to terminate the
`proceeding as to Petitioner Merck is GRANTED; and
`FURTHER ORDERED that the instant proceeding is TERMINATED
`
`
`
`
`
`
`
`3
`
`
`
`IPR2016-00710
`Patent 6,331,415 B1
`
`
`PETITIONER:
`
`Raymond Nimrod
`Matthew Traupman
`Amanda Antons
`QUINN EMANUEL URQUHART & SULLIVAN LLP
`raynimrod@quinnemanuel.com
`matthewtraupman@quinnemanuel.com
`amandaantons@quinnemanuel.com
`
`Katherine A. Helm
`SIMPSON THACHER & BARTLETT LLP
`khelm@stblaw.com
`
`PATENT OWNER:
`
`David Cavanaugh
`Heather Petruzzi
`Owen Allen
`WILMER CUTLER PICKERING HALE AND DORR LLP
`david.cavanaugh@wilmerhale.com
`heather.petruzzi@wilmerhale.com
`owen.allen@wilmerhale.com
`
`Adam Brausa
`DURIE TANGRI LLP
`abrausa@durietangri.com
`
`Jeffrey Kushan
`SIDLEY AUSTIN LLP
`jkushan@sidley.com
`
`Michael Fleming
`IRELL & MANELLA LLP
`mfleming@irell.com
`
`4
`
`