`571.272.7822
`
`
`
`
`
` Paper No. 8
`
` Entered: April 19, 2017
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MYLAN INSTITUTIONAL INC.,
`Petitioner,
`
`v.
`
`FRESENIUS KABI USA, LLC,
`Patent Owner.
`____________
`
`Case IPR2017-00643 (Patent 9,168,238 B2)
`Case IPR2017-00644 (Patent 9,168,239 B2)
`Case IPR2017-00645 (Patent 9,006,289 B2)1
`____________
`
`
`Before LORA M. GREEN, ERICA A. FRANKLIN, and
`CHRISTOPHER G. PAULRAJ, Administrative Patent Judges.
`
`FRANKLIN, Administrative Patent Judge.
`
`
`
`ORDER
`Granting Joint Motion to Terminate the Proceeding Before Institution
`37 C.F.R. §§ 42.71; 42.74
`
`
`
`
`
`1 This order addresses issues common to each of the captioned cases. Thus,
`we issue a single order for entry in each case.
`
`
`
`
`
`IPR2017-00643 (Patent 9,168,238 B2)
`IPR2017-00644 (Patent 9,168,239 B2)
`IPR2017-00645 (Patent 9,006,289 B2)
`
`On April 14, 2017, in each of the above-captioned cases, with
`authorization of the Board, the parties filed a joint motion to terminate the
`proceeding under 35 U.S.C § 317 (a). Paper 6.2 The parties also filed a true
`copy of their written settlement agreement. Ex. 1058. Additionally, citing
`to 35 U.S.C § 317 (b) and 37 C.F.R. § 42.74 (c), the parties filed a joint
`request that the settlement agreement be treated as business confidential
`information and “kept separate from the files of these proceedings and the
`involved patents.” Paper 7, 2.
`In each joint motion, the parties explain that termination of the
`proceeding is appropriate because they have reached an agreement settling
`their dispute with respect to the involved patent. Paper 6, 2.
`These cases are in the preliminary proceeding stage; a decision
`whether to institute trial in each case has not been entered. Under these
`circumstances, we determine that it is appropriate to enter judgment
`terminating the proceedings. Additionally, the parties’ request for the
`settlement agreement to be treated as business confidential information and
`kept separate from the file of the involved patent is granted.
`Insofar as the parties request that the settlement agreement be “kept
`separate from the files of these proceedings,” Paper 7, 2, such request is not
`expressly authorized by 35 U.S.C § 317 (b) or 37 C.F.R. § 42.74 (c), cited
`by the parties, and is denied. The settlement agreement will remain a part of
`the files of each respective proceeding as a sealed and restricted exhibit.
`
`
`2 Citations to paper and exhibit numbers in this order refer to filings in
`IPR2017-00643. Similar documents were filed in each of the captioned
`cases.
`
`2
`
`
`
`IPR2017-00643 (Patent 9,168,238 B2)
`IPR2017-00644 (Patent 9,168,239 B2)
`IPR2017-00645 (Patent 9,006,289 B2)
`
`Accordingly, it is hereby
`ORDERED that the joint motions to terminate the proceedings are
`granted;
`FURTHER ORDERED that the joint requests that the settlement
`agreement, Ex. 1058, be treated as business confidential information and
`kept separate from the file of the involved patent under the provisions of 35
`U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) are granted;
`FURTHER ORDERED that the joint requests that the settlement
`agreement, Ex. 1058, be kept separate from the files of these proceedings are
`denied, the exhibit shall remain sealed in each proceeding; and
`FURTHER ORDERED that the proceeding in each of the above-
`captioned cases is terminated.
`
`
`
`
`3
`
`
`
`4
`
`IPR2017-00643 (Patent 9,168,238 B2)
`IPR2017-00644 (Patent 9,168,239 B2)
`IPR2017-00645 (Patent 9,006,289 B2)
`
`PETITIONER:
`
`Jitendra Malik
`H. James Abe
`Lance Soderstrom
`Alissa Pacchioli
`ALSTON & BIRD LLP
`Jitty.malik@alston.com
`James.abe@alston.com
`Lance.saderstrom@alston.com
`Alissa.pacchiolo@alston.com
`
`PATENT OWNER:
`
`Imron T. Aly
`Jason G. Harp
`John K. Hsu
`SCHIFF HARDIN LLP
`ialy@schiffhardin.com
`jharp@schiffhardin.com
`jhsu@schiffhardin.com
`
`
`
`
`
`
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