`571-272-7822
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`
`
`
` Paper No. 23
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`
`
` Entered: March 3, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MYLAN PHARMACEUTICALS INC.,
`Petitioner,
`
`v.
`
`GENENTECH, INC.,
`Patent Owner.
`____________
`
`Case IPR2016-01693 (Patent 6,407,213 B1)
`Case IPR2016-01694 (Patent 6,407,213 B1)1
`____________
`
`
`Before SHERIDAN K. SNEDDEN, ZHENYU YANG, and
`ROBERT A. POLLOCK, Administrative Patent Judges.
`
`YANG, Administrative Patent Judge.
`
`
`
`
`DECISION
`Termination of the Proceeding Due to Settlement before Institution
`37 C.F.R. §§ 42.72, 42.74
`
`
`
`
`
`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.
`
`
`
`
`
`
`IPR2016-01693 (Patent 6,407,213 B1)
`IPR2016-01694 (Patent 6,407,213 B1)
`
`
`On March 7, 2017, pursuant to 35 U.S.C. § 317(a), and with the
`Board’s authorization, the parties filed a Joint Motion to Terminate in each
`of the above-captioned proceedings. Paper 21. In addition, pursuant to 35
`U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), the parties filed a true and correct
`copy of a Settlement Agreement (Ex. 1132), along with a Joint Request That
`Settlement Agreement Be Treated as Business Confidential Information, to
`be kept separate from the publicly available patent files (Paper 22).
`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.” These
`cases are in their preliminary stage. No decision on whether to institute a
`trial has been made in either case.
`Under 37 C.F.R. § 42.72, “[t]he Board may terminate a trial without
`rendering a final written decision, where appropriate, including . . . pursuant
`to a joint request under 35 U.S.C. 317(a).” After reviewing the Joint
`Motions to Terminate and the Settlement Agreement, we determine that it is
`appropriate to terminate the proceedings without rendering a final written
`decision. Therefore, the Joint Motions to Terminate are GRANTED.
`
`Accordingly, it is
`ORDERED that the Joint Motions to Terminate Proceeding are
`GRANTED and the proceedings are hereby TERMINATED; and
`FURTHER ORDERED that the Joint Requests That Settlement
`Agreement Be Treated as Business Confidential Information are
`2
`
`
`
`
`
`
`IPR2016-01693 (Patent 6,407,213 B1)
`IPR2016-01694 (Patent 6,407,213 B1)
`
`GRANTED, and the Settlement Agreement will be kept separate from the
`patent files.
`
`
`
`
`
`PETITIONER:
`
`Jeffrey Guise
`jguise@wsgr.com
`
`Deanne Mazzochi
`dmazzochi@rmmslegal.com
`
`Lorelei Westin
`lwestin@wsgr.com
`
`Clark Lin
`clin@wsgr.com
`
`PATENT OWNER:
`
`David Cavanaugh
`David.cavanaugh@wilmerhale.com
`
`Owen Allen
`Owen.allen@wilmerhale.com
`
`Adam Brausa
`abrausa@durietangri.com
`
`
`
`3
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`