`571-272-7822
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` Paper 60
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` Entered: May 21, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`ARGENTUM PHARMACEUTICALS LLC,
`Petitioner,
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`v.
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`CIPLA LTD.,
`Patent Owner.
`____________
`
`Case IPR2017-00807
`Patent 8,168,620 B2
`____________
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`
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`Before JAMES T. MOORE, ZHENYU YANG, and
`KRISTI L. R. SAWERT, Administrative Patent Judges.
`
`SAWERT, Administrative Patent Judge.
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`DECISION
`Granting Joint Motion to Terminate
`35 U.S.C. § 317(a) and 37 C.F.R. § 42.72
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`IPR2017-00807
`Patent 8,168,620 B2
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`On May 17, 2018, Argentum Pharmaceuticals LLC (“Petitioner”) and
`Cipla Limited (“Patent Owner”) filed a joint motion to terminate this
`proceeding pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. §§ 42.72 and
`42.74. Paper 58 (“Motion” or “Mot.”). The Motion was accompanied by a
`true, unredacted copy of a settlement agreement (Ex. 2183), and a joint
`request to treat the settlement agreement as business confidential
`information, to be kept separate from the patent file, pursuant to 35 U.S.C.
`§ 317(b) and 37 C.F.R. § 42.74(b) and 42.74(c) (Paper 59).
`The parties represent in their joint motion that they “have settled their
`dispute” and have “executed a settlement agreement to terminate this inter
`partes review.” Mot. 1. Additionally, the parties state that there are no
`related inter partes review proceedings, and that the related district court
`cases, Meda Pharms. Inc. et al v. Apotex Inc., 14-1453-LPS (D. Del.), Meda
`Pharms. Inc. v. Teva Pharms. USA, Inc., 15-785-LPS (D. Del.), Meda
`Pharms. Inc. v. Perrigo UK FINCO Ltd. P’ship., 16-794 (D. Del.), have also
`settled. Id. at 4–5.
`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 also 37 C.F.R. § 42.72. Here, although the Board instituted an
`inter partes review of claims 1, 4–6, 24–26, 29, and 42–44 of U.S. Patent
`No. 8,168,620 B2, the Board has not heard oral argument and has not
`decided the merits. Under the circumstances presented here, therefore, we
`determine that it is appropriate to terminate this proceeding with respect to
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`IPR2017-00807
`Patent 8,168,620 B2
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`both Petitioner and Patent Owner. Accordingly, we grant the parties’ 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.
`Accordingly, it is
`ORDERED that the joint motion to terminate the proceedings is
`GRANTED;
`FURTHER ORDERED that the joint request to treat the parties’
`settlement agreement as business confidential information, to be kept
`separate from the patent file, is GRANTED; and
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`FURTHER ORDERED that the instant proceeding is TERMINATED.
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`IPR2017-00807
`Patent 8,168,620 B2
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`FOR PETITIONER:
`Michael R. Houston
`Joseph P. Meara
`James P. McParland
`FOLEY & LARDNER LLP
`mhouston@foley.com
`jmeara-pgp@foley.com
`jmcparland@foley.com
`
`Tyler C. Liu
`ARGENTUM PHARMACEUTICALS LLC
`tliu@agpharm.com
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`FOR PATENT OWNER:
`
`Dennies Varughese
`Deborah A. Sterling
`Adam C. LaRock
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`dvarughe-PTAB@skgf.com
`dsterlin-PTAB@skgf.com
`alarock-PTAB@skgf.com
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