`
` Paper 64
`Trials@uspto.gov
`571-272-7822 Entered: February 19, 2021
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`PROLLENIUM U.S., INC.,
`Petitioner,
`
`v.
`
`ALLERGAN INDUSTRIE, SAS
`Patent Owner.
`____________
`
`IPR2019-01505, Patent 8,450,475 B2
`IPR2019-01506, Patent 8,357,795 B2
`IPR2019-01508, Patent 9,238,013 B2
`IPR2019-01509, Patent 9,358,322 B2
`IPR2019-01617, Patent 8,822,676 B2
`IPR2019-01632, Patent 8,357,795 B2
`IPR2020-00084, Patent 9,089,519 B21
`____________
`
`
`Before GRACE KARAFFA OBERMANN, JOHN G. NEW, SHERIDAN K.
`SNEDDEN, and ROBERT A. POLLOCK, Administrative Patent Judges.
`
`Per curiam.
`
`TERMINATION
`Due to Settlement After Institution of Trial
`35 U.S.C. § 317; 37 C.F.R. § 42.74
`
`1 Although this is not an expanded panel, this Order applies to each of the
`listed proceedings and we excersize our discretion to issue one Order to be
`filed in each proceeding.
`
`
`
`IPR2019-01505, Patent 8,450,475 B2
`IPR2019-01506, Patent 8,357,795 B2
`IPR2019-01508, Patent 9,238,013 B2
`IPR2019-01509, Patent 9,358,322 B2
`IPR2019-01617, Patent 8,822,676 B2
`IPR2019-01632, Patent 8,357,795 B2
`IPR2020-00084, Patent 9,089,519 B2
`Pursuant to authorization by the Board, the parties filed the following:
`(1) a Joint Motion to Terminate IPR (Paper 68); (2) a true copy of the
`parties’ settlement agreement (Ex. 2250); and (3) a joint motion to treat the
`settlement agreement as business confidential information, and to keep
`separate from the file of the involved patent, under 37 C.F.R. § 42.74(c)
`(Paper 69).2
`The Board generally expects that a case “will terminate after the filing
`of a settlement agreement, unless the Board has already decided the merits
`of the proceeding.” Consolidated Office Patent Trial Practice Guide
`(November 2019),3 86 (citing 35 U.S.C. §§ 317(a), 327). In their Joint
`Motions to Terminate, Patent Owner and Petitioner aver that “the parties’
`settlement completely resolves the controversy between Patent Owner and
`Petitioner relating to U.S. Patent Nos. 8,450,475; 8,357,795; 9,238,013;
`9,358,322; 8,822,676; and 9,089,519 before the Board and in the copending
`district court litigation.” See Paper 68, 2. Moreover, the Joint Motions to
`Terminate were filed before any final written decision and a decision on the
`merits.
`Upon consideration of the facts before us, we determine that it is
`appropriate to terminate the above proceedings and enter judgment, without
`
`
`2 We refer here to the papers and exhibit numbers filed in IPR2019-01505.
`Identical papers and exhibits were filed in each of the listed proceedings.
`3 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`2
`
`
`
`
`
`IPR2019-01505, Patent 8,450,475 B2
`IPR2019-01506, Patent 8,357,795 B2
`IPR2019-01508, Patent 9,238,013 B2
`IPR2019-01509, Patent 9,358,322 B2
`IPR2019-01617, Patent 8,822,676 B2
`IPR2019-01632, Patent 8,357,795 B2
`IPR2020-00084, Patent 9,089,519 B2
`rendering a final written decision. See 37 C.F.R. §§ 42.5(a), 42.71(a),
`42.73(a), 42.74. Accordingly, we grant the Joint Motions to Terminate.
`We also have reviewed the copy of the parties’ settlement agreement
`(Ex. 1023), and we determine that good cause exists to treat this settlement
`agreement as business confidential information, and keep it separate from
`the files of the above-referenced patents under 37 C.F.R. § 42.74(c).
`
`ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that the parties’ request (Paper 69) to treat the true copy
`of their settlement agreement (Ex. 2250) as business confidential
`information, and to keep separate from the file of the involved patents, under
`37 C.F.R. § 42.74(c) is granted;
`FURTHER ORDERED that the settlement agreement (Ex. 2250) shall
`be treated as business confidential information, kept separate from the files
`of U.S. Patent Nos. 8,450,475; 8,357,795; 9,238,013; 9,358,322; 8,822,676;
`and 9,089,519, and made available only to Federal Government agencies on
`written request to the Board, or to any person on a showing of good cause,
`under the provisions of 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c); and
`FURTHER ORDERED that the parties’ Joint Motion to Terminate
`Proceeding (Paper 68) is granted, and the listed proceedings are terminated.
`
`
`
`3
`
`
`
`IPR2019-01505, Patent 8,450,475 B2
`IPR2019-01506, Patent 8,357,795 B2
`IPR2019-01508, Patent 9,238,013 B2
`IPR2019-01509, Patent 9,358,322 B2
`IPR2019-01617, Patent 8,822,676 B2
`IPR2019-01632, Patent 8,357,795 B2
`IPR2020-00084, Patent 9,089,519 B2
`
`
`PETITIONER:
`Christopher L. Curfman
`William W. Cutchins
`MEUNIER CARLIN & CURFMAN LLC
`ccurfman@mcciplaw.com
`wcutchins@mcciplaw.com
`
`PATENT OWNER:
`
`Anthony M. Insogna
`Tamera M. Weisser
`S. Christian Platt
`Sarah A. Geers
`Jennifer M. Hartjes
`JONES DAY
`aminsogna@jonesday.com
`tweisser@jonesday.com
`cplatt@jonesday.com
`sgeers@jonesday.com
`jhartjes@jonesday.com
`
`
`
`4
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
