`571-272-7822
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` Paper No. 21
`Entered: August 7, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`KASHIV PHARMA, LLC,
`Petitioner
`
`v.
`
`PURDUE PHARMA L.P.
`THE P.F. LABORATORIES, INC., and
`PURDUE PHARMACEUTICALS L.P.
`Patent Owners.
`____________
`
`Case IPR2018-00625 (Patent 9,492,392 B2)
`Case IPR2018-00717 (Patent 9,492,393 B2)
`____________
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`
`
`
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`Before CHRISTOPHER G. PAULRAJ, JACQUELINE T. HARLOW, and
`KRISTI L. R. SAWERT, Administrative Patent Judges.
`
`PAULRAJ, Administrative Patent Judge.
`
`
`ORDER AUTHORIZING FILING OF MOTION TO TERMINATE;
`SUSPENDING DEADLINES
`Conduct of the Proceeding
`37 C.F.R. § 42.5
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`
`
`
`
`
`
`
`IPR2018-00625 (Patent 9,492,392 B2)
`IPR2018-00717 (Patent 9,492,393 B2)
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`
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`In a telephone conference with the panel held on August 6, 2018,
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`counsel for Petitioner and Patent Owner stated that the parties seek to
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`terminate these proceedings due to an impending settlement. The parties
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`also requested that the Board suspend the discovery and supplemental
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`briefing deadlines set forth in our Decision Granting Patent Owner’s Motion
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`for Additional Discovery and Authorizing Supplemental Briefing (Paper 20)
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`in view of the pending settlement and request to terminate.
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`
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`The parties are authorized to file a Joint Motion to Terminate this
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`proceeding. The Joint Motion to Terminate must update the Board
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`concerning the status of any litigation or proceeding, including, but not
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`limited to proceedings in the U.S. Patent and Trademark Office, involving
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`the subject patents. The Joint Motion to Terminate must be filed by
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`August 9, 2018. The deadlines previously set forth in Paper 20 are also
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`hereby suspended.
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`
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`The parties may agree to settle any issue in a proceeding pursuant to a
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`written agreement, a copy of which shall be filed with the Board before
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`termination of the trial. 37 C.F.R. § 42.74(a)-(b). Any agreement or
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`understanding between the patent owner and a petitioner, including any
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`collateral agreements referred to in such agreement or understanding made
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`in connection with, or in contemplation of, the termination of an inter partes
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`review shall be in writing, and a true copy of such agreement or
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`understanding shall be filed in the Office before the termination of such
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`review as between the parties. 35 U.S.C. § 317(b).
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`
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`
`
`2
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`
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`IPR2018-00625 (Patent 9,492,392 B2)
`IPR2018-00717 (Patent 9,492,393 B2)
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`
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`A party to a settlement may request that any written agreement be
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`treated as business confidential information and be kept separate from the
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`files of an involved patent. 35 U.S.C. § 317(b); 37 C.F.R § 42.74(c). The
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`request must be filed with the settlement. Id.
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`
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`
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`Accordingly, it is:
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`ORDERED that the parties are authorized to file, by August 9, 2018, a
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`Joint Motion to Terminate the proceedings in IPR2018-00625 and
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`IPR2018-00717; and
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`
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`FURTHER ORDERED that the parties are authorized to file, by
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`August 9, 2018, a Joint Request that the Settlement Agreement Be Treated
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`as Business Confidential Information; and
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`
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`FURTHER ORDERED that that the deadlines set forth in our
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`Decision Granting Patent Owner’s Motion for Additional Discovery and
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`Authorizing Supplemental Briefing (Paper 20) are suspended pending
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`resolution of the Joint Motion to Terminate.
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`
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`3
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`
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`IPR2018-00625 (Patent 9,492,392 B2)
`IPR2018-00717 (Patent 9,492,393 B2)
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`PETITIONER:
`
`Tedd W. Van Buskirk
`Michael H. Teschner
`Nichole M. Valeyko
`Maegan Fuller
`LERNER DAVID LITTENBERG KRUMHOLZ & MENTLIK, LLP
`tvanbuskirk@lernerdavid.com
`mteschner@lernerdavid.com
`nvaleyko@lernerdavid.com
`mfuller.ipr@ldlkm.com
`
`PATENT OWNER:
`
`Gasper J. LaRosa
`Kelsey I. Nix
`Pablo Hendler
`Kenneth S. Canfield
`Sarah A. Geers
`Christopher J. Harnett
`Lisamarie LoGiudice
`JONES DAY
`gjlarose@jonesday.com
`knix@jonesday.com
`phendler@jonesday.com
`kcanfield@jonesday.com
`sgeers@jonesday.com
`charnett@jonesday.com
`llogiudice@jonesday.com
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`4
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