Trials@uspto.gov
`571-272-7822
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` Paper 57
`Entered: August 8, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`BRECKENRIDGE PHARMACEUTICAL, INC., AND
`WEST-WARD PHARMACEUTICALS INTERNATIONAL LTD.
`Petitioner,
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`v.
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`NOVARTIS PHARMACEUTICALS CORP.,
`Patent Owner.
`____________
`
`Case IPR2017-015921
`Patent 8,410,131 B2
`____________
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`
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`Before SHERIDAN K. SNEDDEN, ROBERT A. POLLOCK, and
`JACQUELINE T. HARLOW, Administrative Patent Judges.
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`POLLOCK, Administrative Patent Judge.
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`JUDGMENT
`Granting Joint Motion to Terminate as to Breckenridge
`Due to Settlement After Institution
`35 U.S.C. § 317 and 37 C.F.R. §§ 42.72, 42.74
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`1 IPR2018-00507 has been joined to this proceeding.
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`

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`IPR2017-01592
`Patent 8,410,131 B2
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`On August 7, 2018, Petitioner Breckenridge Pharmaceutical, Inc.
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`(“Petitioner Breckenridge”) and Patent Owner filed a Joint Motion to Terminate
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`IPR as to Breckenridge Pursuant To 35 U.S.C. § 317. Paper 52. The parties filed a
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`copy of their Settlement Agreement, made in connection with the termination of
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`these proceedings, in accordance with 35 U.S.C. § 317 and 37 C.F.R. § 42.74.
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`Ex. 2114. The parties also filed a Joint Request that the settlement treatment be
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`treated as business confidential information, and be kept separate from the file of
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`the involved patent, under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). Paper 53.
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`In particular, Petitioner Breckenridge and Patent Owner request that the Settlement
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`Agreement be maintained as viewable by the Board alone, and, thus, not accessible
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`by Petitioner West-Ward Pharmaceuticals International Limited (“Petitioner West-
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`Ward”). Id. at 2.2
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`The Board generally expects that a case “will terminate after the filing of a
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`settlement agreement, unless the Board has already decided the merits.” Office
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`Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012); see
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`37 C.F.R. § 42.72. In their Joint Motion to Terminate, Patent Owner and Petitioner
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`2 Patent Owner and Petitioner Breckenridge also seek entry of the default
`protective order with certain modifications to paragraphs 2(A)‒(E) and 2(G) of that
`order such that “only parties Novartis and Breckenridge and their respective party
`representatives and in-house counsel shall have access to Exhibit 2114.”
`Paper 53, 2. We decline to make those modifications to the default protective
`order ourselves. As noted in this Order, we grant the parties request to designate
`the Settlement Agreement as Board only. If the parties wish to renew their request,
`they should file a joint motion to seal, as well as the default protective order with
`their proposed modifications. The parties should also file a copy of their proposed
`protective order showing all the changes from the default protective order in
`redline. See 37 C.F.R. § 42.54.
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`2
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`

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`IPR2017-01592
`Patent 8,410,131 B2
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`Breckenridge aver that they “have settled their dispute.” Paper 52, 2; see also id.
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`at 3 (stating that and that the pending litigation between Patent Owner and
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`Petitioner Breckenridge regarding the patent at issue here “has been settled”). The
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`Joint Motion to Terminate was filed before oral argument and a final written
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`decision on the merits. The proceeding will continue as to Petitioner West-Ward.
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`Upon consideration of the facts before us, we determine that it is appropriate
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`to terminate this proceeding as to Petitioner Breckenridge and enter judgment,
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`without rendering a final written decision. See 37 C.F.R. §§ 42.5(a), 42.71(a),
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`42.73(a), 42.74. Accordingly, we grant the Joint Motion to Terminate.
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`We also determine that the parties have complied with the requirements of
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`37 C.F.R. § 42.74(c) to have the Settlement Agreement treated as business
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`confidential information and kept separate from the files of the patent at issue in
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`this proceeding. Thus, we grant the Joint Request to treat the Settlement
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`Agreement as business confidential, as well as keeping it designated as Board only.
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`We note, however, that as shown in the caption, Petitioners Breckenridge
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`and West-Ward were joined to this proceeding, and, therefore, the proceeding will
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`continue only as to Petitioner West-Ward. See Paper 50, 2‒3. Patent Owner and
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`Petitioner West-Ward should continue to file papers and exhibits in the instant
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`proceeding, that is, IPR2016-01479, but adjust the case caption accordingly.
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`3
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`IPR2017-01592
`Patent 8,410,131 B2
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`I. ORDER
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`Accordingly, it is
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`ORDERED that the joint request of Patent Owner and Petitioner
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`Breckenridge to treat the Settlement Agreement as business confidential
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`information, to be kept separate from the patent file, is GRANTED;
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`FURTHER ORDERED that we GRANT the joint request of Patent Owner
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`and Petitioner Breckenridge to maintain the Settlement Agreement as Board only;
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`FURTHER ORDERED that the joint motion to terminate the proceedings is
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`GRANTED as to Petitioner Breckenridge; and
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`FURTHER ORDERED that the instant proceeding continues as between
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`Petitioner West-Ward Pharmaceuticals International Limited and Patent Owner;
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`subsequent to this Order, the case caption will list West-Ward Pharmaceuticals
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`International Limited as the sole Petitioner.
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`4
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`IPR2017-01592
`Patent 8,410,131 B2
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`PETITIONERS:
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`David Evans
`Marta Delsignore
`Jeffrey Blake
`Melissa Hayworth
`devans@merchantgould.com
`mdelsignore@goodwinprocter.com
`jblake@merchantgould.com
`mhayworth@merchantgould.com
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`PATENT OWNER:
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`Nicholas N. Kallas
`Laura K. Fishwick
`FITZPATRICK, CELLA, HARPER & SCINTO
`nkallas@fchs.com
`lfishwick@fchs.com
`ZortressAfinitorIPR@fchs.com
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`5
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