`
` 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
`
`