throbber
Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`
`
`
`
`
`
` Paper 52
`
`
`
` Entered: February 7, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`PAR PHARMACEUTICAL, INC.,
`ARGENTUM PHARMACEUTICAL LLC, AND
`WEST-WARD PHARMACEUTICALS
`INTERNATIONAL LIMITED,
`Petitioners,
`
`v.
`
`NOVARTIS AG,
`Patent Owner.
`____________
`
`Case IPR2016-014791
`Patent 9,006,224 B2
`____________
`
`
`Before LORA M. GREEN, CHRISTOPHER L. CRUMBLEY, and
`ROBERT A. POLLOCK, Administrative Patent Judges.
`
`GREEN, Administrative Patent Judge.
`
`
`JUDGMENT
`Granting Joint Motion to Terminate as to Par
`Due to Settlement After Institution
`35 U.S.C. § 317 and 37 C.F.R. §§ 42.72, 42.74
`
`1 Argentum Pharmaceutical LLC was joined as a party to this proceeding via
`a Motion for Joinder in IPR2017-01063; West-Ward Pharmaceuticals
`International Limited was joined as a party via a Motion for Joinder in
`IPR2017-01078.
`
`

`

`IPR2016-01479
`Patent 9,006,224 B2
`
`
`
`On January 23, 2018, Petitioner Par Pharmaceutical, Inc. (“Petitioner
`Par”) and Patent Owner filed a Joint Motion to Terminate IPR as to Par
`Pursuant To 35 U.S.C. § 317. Paper 50. The parties filed a copy of their
`Settlement Agreement, made in connection with the termination of these
`proceedings, in accordance with 35 U.S.C. § 317 and 37 C.F.R. § 42.74.
`Ex. 2118. 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(b) and
`37 C.F.R. § 42.74(c). Paper 51. In particular, Petitioner Par and Patent
`Owner request that the Settlement Agreement be maintained as viewable by
`the Board alone, and, thus, not accessible by Petitioners Argentum
`Pharmaceuticals LLC and West-Ward Pharmaceuticals International Limited
`(“Petitioners Argentum and West-Ward”). Id. at 2.2
`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,
`
`
`2 Patent Owner and Petitioner Par also seek entry of the default protective
`order with certain modifications to paragraphs 2(A) ‒(E) and 2(G) of that
`order. Paper 51, 2. We decline to make those modifications to the default
`protective order ourselves. As noted in this Order, we grant the parties
`request to designate the Settlement Agreement as Board only, and, therefore,
`do not consider a protective order necessary. If the parties wish to renew
`their request, they should file a joint motion to seal, as well as the default
`protective order with their proposed modifications. The parties should also
`file a copy of their proposed protective order showing all the changes from
`the default protective order in redline. See 37 C.F.R. § 42.54.
`2
`
`

`

`IPR2016-01479
`Patent 9,006,224 B2
`
`
`2012); see 37 C.F.R. § 42.72. In their Joint Motion to Terminate, Patent
`Owner and Petitioner Par aver that they “have settled their dispute.”
`Paper 50, 2. Although the Joint Motion to Terminate was filed after oral
`argument, it was filed before final written decision and a decision on the
`merits. In addition, the proceeding will continue as to Petitioners Argentum
`and West-Ward.
`Upon consideration of the facts before us, we determine that it is
`appropriate to terminate this proceeding as to Petitioner Par and enter
`judgment, without rendering a final written decision. See 37 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.
`We note, however, that as shown in the caption, Petitioners Argentum
`and Westward were joined to this proceeding, and, therefore, the proceeding
`will continue as to those Petitioners. See Paper 50, 2‒3. Patent Owner and
`Petitioners Argentum and West-Ward should continue to file papers and
`exhibits in the instant proceeding, that is, IPR2016-01479.
`
`
`
`3
`
`

`

`IPR2016-01479
`Patent 9,006,224 B2
`
`
`
`ORDER
`
`Accordingly, it is
`ORDERED that the joint request of Patent Owner and Petitioner Par
`to treat the Settlement Agreement as business confidential information, to be
`kept separate from the patent file, is GRANTED;
`FURTHER ORDERED that we GRANT the joint request of Patent
`Owner and Petitioner Par to maintain the Settlement Agreement as Board
`only;
`
`FURTHER ORDERED that the joint motion to terminate the
`proceedings is GRANTED as to Petitioner Par; and
`FURTHER ORDERED that the instant proceeding continues as
`between Petitioners Argentum Pharmaceuticals LLC and West-Ward
`Pharmaceuticals International Limited and Patent Owner.
`
`
`
`PETITIONER:
`Daniel Brown
`Jon Strang
`LATHAM & WATKINS, LLP
`daniel.brown@lw.com
`jonathan.strang@lw.com
`
`PATENT OWNER:
`Nicholas Kallas
`Raymond Mandra
`FITZPATRICK, CELLA, HARPER & SCINTO
`nkallas@fchs.com
`rmandra@fchs.com
`
`4
`
`

`

`
`
`IPR2016-01479IPR2016-01479IPR2016-01479
`
`
`
`IPR2016-01479
`Patent 9,006,224 B2
`Patent 9,006,224 B2
`
`Patent 9,006,224 B2Patent 9,006,224 B2
`
`
`
`
`5
`
`

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