`571-272-7822
`
`
`
`
`Paper 60
`Entered: October 5, 2020
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ARGENTUM PHARMACEUTICALS LLC and WEST-WARD
`PHARMACEUTICALS INTERNATIONAL LIMITED n/k/a HIKMA
`PHARMACEUTICALS INTERNATIONAL LIMITED,
`Petitioners,
`
`v.
`
`NOVARTIS AG,
`Patent Owner.
`____________
`
`IPR2016-014791
`Patent 9,006,224 B2
`____________
`
`
`Before CHRISTOPHER L. CRUMBLEY, ROBERT A. POLLOCK, and
`KRISTI L. R. SAWERT, Administrative Patent Judges.
`
`CRUMBLEY, Administrative Patent Judge.
`
`ORDER
`Settlement as to Petitioner Hikma Pharmaceuticals
`35 U.S.C. §§ 317; 37 C.F.R. § 47.74
`
`1 This proceeding as initially filed named Par Pharmaceutical, Inc. as the
`sole Petitioner. 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. Par subsequently requested termination of its
`participation in the proceeding pursuant to settlement, and we terminated the
`proceeding as between Par and Novartis. Papers 50, 52.
`
`
`
`IPR2016-01479
`Patent 9,006,224 B2
`
`
`Pursuant to Board authorization, Petitioner Hikma Pharmaceuticals2
`and Patent Owner Novartis AG filed a Joint Motion to Terminate this inter
`partes review as to Hikma. Paper 57, “Mot.” 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. 2119. The parties also filed a Joint Motion to keep the
`Settlement Agreement confidential, along with a proposed Protective Order.3
`Paper 58; Ex. 2120. In particular, Hikma and Novartis request that the
`Settlement Agreement be maintained as viewable by the Board alone, and,
`thus, not accessible by Petitioner Argentum Pharmaceuticals LLC. Paper 58
`at 2.
`
`Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under
`this chapter shall be terminated with respect to any petitioner upon the joint
`request of the petitioner and patent owner, unless the Office has decided the
`merits of the proceeding before the request for termination is filed.” In this
`proceeding, the parties have settled their dispute, and the Board had not yet
`decided the merits of the parties’ dispute at the time the parties filed their
`
`
`2 West-Ward Pharmaceuticals International Limited updated its Mandatory
`Notices on January 8, 2019, notifying us that it changed its name to Hikma
`Pharmaceuticals International Limited. IPR2017-01078, Paper 11.
`3 The statute and our Rules permit a party to a settlement agreement to
`“request” that the agreement be treated as business confidential information.
`35 U.S.C. § 317(b); 37 C.F.R. § 42.74(c). A formal motion is not required,
`nor is a proposed protective order. For this reason, we deem the Joint
`Motion to keep the settlement agreement confidential (Paper 58) to be moot,
`but will treat the Motion as a “request” under the statute and our Rules.
`
`2
`
`
`
`IPR2016-01479
`Patent 9,006,224 B2
`
`Joint Motion. Given the joint request of the parties, we are required to
`terminate the review with respect to Hikma, as Petitioner.
`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 parties’ request
`to treat the Settlement Agreement as business confidential, as well as
`keeping it designated as Board only.
`ORDER
`In light of the foregoing, it is hereby:
`ORDERED that the joint request to treat the settlement agreement
`(Ex. 2119) as business confidential information is granted;
`FURTHER ORDERED that Exhibit 2119 shall be maintained as
`Board only, kept separate from the patent file, and be made available only to
`Federal government agencies on written request, or to any person on
`showing of good cause;
`FURTHER ORDERED that the Joint Motion to Terminate Hikma as a
`Petitioner (Paper 57) is granted; and
`FURTHER ORDERED that the proceeding is terminated as to Hikma
`Pharmaceuticals International Limited, but will continue as between
`Petitioner Argentum Pharmaceuticals LLC and Novartis.
`
`
`
`
`
`
`3
`
`
`
`IPR2016-01479
`Patent 9,006,224 B2
`
`FOR PETITIONER:
`
`Daniel Brown
`daniel.brown@lw.com
`
`Jon Strang
`jonathan.strang@lw.com
`
`
`FOR PATENT OWNER:
`
`Nicholas Kallas
`nkallas@fchs.com
`
`Raymond Mandra
`rmandra@fchs.com
`
`
`4
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
