`5712727822
`
` Paper No. 18
` Entered: February 28, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MYLAN PHARMACEUTICALS INC.,
`Petitioner,
`
`v.
`
`GENENTECH, INC.,
`Patent Owner.
`____________
`
`Case IPR201601693 (Patent 6,407,213 B1)
`Case IPR201601694 (Patent 6,407,213 B1)1
`____________
`
`Before SHERIDAN K. SNEDDEN, ZHENYU YANG, and
`ROBERT A. POLLOCK, Administrative Patent Judges.
`
`YANG, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`1 This order addresses issues that are common to each referenced
`case. We, therefore, issue a single order that has been entered in each
`
`case. For convenience, paper numbers refer to those filed in IPR2016
`01693.
`
`
`
`IPR201601693 (Patent 6,407,213 B1)
`IPR201601694 (Patent 6,407,213 B1)
`
`Petitioner filed a Petition for an inter partes review of claims 1, 2, 4,
`12, 25, 29–31, 33, 42, 60, 62–67, 69, and 71–81 of U.S. Patent No.
`
`6,407,213 B1. Paper 2. Patent Owner filed a Preliminary Response on
`December 16, 2016. Paper 11. We must decide whether to institute a
`
`review by March 16, 2017. See 35 U.S.C. 314(b).
`
`In an email dated February 24, 2017, the parties informed the Board
`
`that they “are engaged in productive settlement negotiations in connection
`with the abovecaptioned matters,” and jointly requested that the Board
`
`“withhold any decision regarding institution in IPR201601693 and
`
`IPR201601694 until the statutory deadline (March 16, 2017).” See
`Ex. 3001.
`
`The parties’ joint request is grantedinpart. The parties are hereby
`given advanced authorization to file a joint motion to terminate the
`
`proceeding, should a settlement is reached in a timely manner. The parties
`are also authorized to file a joint request to treat the settlement agreement as
`
`business confidential, if needed. No conference call is necessary.
`To allow the Board sufficient time to process its decision, the parties
`
`must file the joint motion and any related papers and exhibits by COB on
`
`March 7, 2017. If the parties fail to meet this deadline, the Board will issue
`its decision on institution by the statutory deadline, March 16, 2017. A joint
`
`motion to terminate the proceeding, if filed after March 7, 2017, will not be
`considered until after the issuance of the institution decision.
`
`2
`
`
`
`IPR201601693 (Patent 6,407,213 B1)
`IPR201601694 (Patent 6,407,213 B1)
`
`The parties should be mindful of the requirements set forth in 35
`U.S.C. § 317(b) and 37 C.F.R. § 42.74 that any agreement between the
`
`parties made in connection with the termination of the proceeding must be in
`writing and a true copy must be filed with the Board. To the extent that the
`
`parties wish to maintain some level of confidentiality for such an agreement,
`please refer to the procedures set forth in 37 C.F.R. § 42.74(c).
`
`To have the settlement agreement treated as business confidential
`under 37 C.F.R. § 42.74(c), the parties must file the confidential settlement
`
`electronically in the Patent Review Processing System (PRPS) as an exhibit
`in accordance with the instructions provided on the Board’s website
`
`(uploading as “Parties and Board Only”). The parties are directed to FAQ
`G2 on the Board’s website at http://www.uspto.gov/ip/boards/bpai/prps.jsp
`
`for instructions on how to file their settlement agreement as confidential.
`
`Accordingly, it is
`ORDERED that the parties’ joint request for the Board to withhold
`
`decision on institution in IPR201601693 and IPR201601694 is
`GRANTEDINPART as specified in this Order.
`
`PETITIONER:
`
`Jeffrey Guise
`jguise@wsgr.com
`
`3
`
`
`
`IPR201601693 (Patent 6,407,213 B1)
`IPR201601694 (Patent 6,407,213 B1)
`
`Deanne Mazzochi
`dmazzochi@rmmslegal.com
`
`PATENT OWNER:
`
`David Cavanaugh
`David.cavanaugh@wilmerhale.com
`
`Owen Allen
`Owen.allen@wilmerhale.com
`
`Adam Brausa
`abrausa@durietangri.com
`
`4
`
`
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