`Tel: 571-272-7822
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`Paper 42
`Entered: January 16, 2019
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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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`MYLAN PHARMACEUTICALS INC.,
`Petitioner,
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`v.
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`BRISTOL-MYERS SQUIBB COMPANY and PFIZER INC.,
`Patent Owners.
`
`
`Case IPR2018-00892
`Patent 9,326,945 B2
`_______________
`
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`Before SHERIDAN K. SNEDDEN, ZHENYU YANG, and
`KRISTI L. R. SAWERT, Administrative Patent Judges.
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`SNEDDEN, Administrative Patent Judge.
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`
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`ORDER
`Termination of the Proceeding Due to Settlement after Institution
`35 U.S.C. § 317 and 37 C.F.R. §§ 42.72, 42.74
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`
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`IPR2018-00892
`Patent 9,326,945 B2
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`With our authorization, the parties filed a Joint Motion to Terminate
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`this proceeding pursuant to 35 U.S.C. § 317(a). Paper 40. In addition,
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`pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), the parties filed a
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`true and correct copy of a Settlement Agreement (Exs. 1047, 1048), along
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`with a Joint Request to File Settlement Agreement as Business Confidential
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`Information, to be kept separate from the publicly available patent files.
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`Paper 41.
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`Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under
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`this chapter shall be terminated with respect to any petitioner upon the joint
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`request of the petitioner and patent owner, unless the Office has decided the
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`merits of the proceeding before the request for termination is filed.” In this
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`case, the Board instituted trial on October 15, 2018. Paper 24. So far,
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`Patent Owner has not filed its Patent Owner Response, and the Board has
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`not decided the merits of the proceeding.
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`Under 37 C.F.R. § 42.72, “[t]he Board may terminate a trial without
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`rendering a final written decision, where appropriate, including . . . pursuant
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`to a joint request under 35 U.S.C. 317(a).” After reviewing the Joint Motion
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`to Terminate and the Settlement Agreement, we determine that it is
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`appropriate to terminate the proceeding without rendering a final written
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`decision. Therefore, the Joint Motion to Terminate is granted. See 37
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`C.F.R. §§ 42.72, 42.74.
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`
`
`2
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`
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`IPR2018-00892
`Patent 9,326,945 B2
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`Accordingly, it is
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`ORDERED that the Joint Motion to Terminate is granted and this
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`proceeding is hereby terminated; and
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`FURTHER ORDERED that the Joint Motion to File Settlement
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`Agreement as Business Confidential Information is granted, and Exhibit
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`1047 and Exhibit 1048 will be kept separate from the pertinent file
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`consistent with 37 C.F.R. § 42.74(c).
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`
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`PETITIONER:
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`Robert Florence
`robertflorence@parkerpoe.com
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`Karen Carroll
`karencarroll@parkerpoe.com
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`Micahel Binns
`michaelbinns@parkerpoe.com
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`Sharad Bijanki
`sharabijanki@parkerpoe.com
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`PATENT OWNER:
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`Heather Petruzzi
`Heather.petruzzi@wilmerhale.com
`
`Timothy Cook
`Tim.cook@wilmerhale.com
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`Kevin Yurkerwich
`Kevin.yurkerwich@wilmerhale.com
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`Michael Nelson
`Michael.nelson@wilmerhale.com
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`3
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