`571-272-7822
`
`
`
`
`
`
`
`
`
`
`
` Paper 14
`
`
` Entered: April 4, 2017
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MYLAN PHARMACEUTICALS, INC., and
`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 Mylan
`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.
`
`
`
`IPR2017-00047
`Patent 6,331,415 B1
`
`
`On March 13, 2017, Petitioner Mylan Pharmaceuticals, Inc.
`
`(“Petitioner Mylan”) and Patent Owner filed a Joint Motion To Terminate
`With Respect to Mylan Pursuant To 35 U.S.C. § 317(a). Paper 47. 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). Paper 48.2 The parties also filed a Joint Request that the
`settlement 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 49. In particular, Petitioner Mylan and Patent Owner
`request that the Settlement Agreement be maintained as viewable by the
`Board alone, and thus, not accessible by Petitioner Merck Sharp & Dohme
`Corp. (“Petitioner Merck”). Id. at 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,
`2012); see 37 C.F.R. § 42.72. In their Joint Motion to Terminate, Mylan and
`Patent Owner indicate that the Settlement Agreement resolves all disputes
`between them with respect to this proceeding. See Paper 47, 3. The Joint
`Motion to Terminate was filed before oral argument, and thus, before final
`written decision and a decision on the merits.
`
`
`2 The parties filed a copy of their settlement agreement as a paper, but we
`note that the better practice would have been to file it as an exhibit.
`2
`
`
`
`IPR2017-00047
`Patent 6,331,415 B1
`
`
`Upon consideration of the facts before us, we determine that it is
`
`appropriate to terminate this proceeding and enter judgment as to Mylan,
`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, Petitioner Merck was
`joined to this proceeding, and, therefore, the proceeding will continue as to
`that Petitioner. See Paper 47, 3‒4. As IPR2017-00047 was terminated in
`the order granting institution and joinder (Paper 32, 5‒6), Patent Owner and
`Petitioner should continue to file papers and exhibits in IPR2016-00710. In
`addition, the Scheduling Order in IPR2016-00710 continues to govern the
`proceeding.
`
`ORDER
`
`Accordingly, it is
`ORDERED that the joint request of Petitioner Mylan and Patent
`Owner to treat the Settlement Agreement as business confidential
`information, to be kept separate from the patent file, is GRANTED;
`
`3
`
`
`
`IPR2017-00047
`Patent 6,331,415 B1
`
`
`
`FURTHER ORDERED that the joint motion to terminate the
`proceedings is GRANTED as to Petitioner Mylan; and
`FURTHER ORDERED that the instant proceeding continues as between
`Petitioner Merck and Patent Owner.
`
`FOR PETITIONER MERCK SHARP & DOHME CORP.:
`Raymond N. Nimrod
`Matthew A. Traupman
`QUINN EMANUEL URQUHART & SULLIVAN, LLP
`raynimrod@quinnemanuel.com
`matthewtraupman@quinnemanuel.com
`
`Katherine A. Helm
`SIMPSON THACHER & BARTLETT LLP
`khelm@stblaw.com
`
`PETITIONER MYLAN PHARMACEUTICALS INC.:
`
`Deanne Mazzochi
`dmazzochi@rmmslegal.com
`Paul Molino
`paul@rmmslegal.com
`
`
`PATENT OWNER:
`
`David Cavanaugh
`david.cavanaugh@wilmerhale.com
`Heather Petruzzi
`heather.petruzzi@wilmerhale.com
`Owen Allen
`owen.allen@wilmerhale.com
`
`4
`
`
`
`IPR2017-00047
`Patent 6,331,415 B1
`
`
`
`Adam Brausa
`abrausa@durietangri.com
`Daralyn J. Durie
`ddurie@durietangri.com
`
`Jeffrey Kushan
`jkushan@sidley.com
`
`Michael Fleming
`mfleming@irell.com
`
`
`5
`
`
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