`571-272-7822
`
`
`
`
`Paper 14
`Entered: December 30, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`GLAXOSMITHKLINE BIOLOGICALS SA,
`Petitioner,
`
`v.
`
`PFENEX INC.,
`Patent Owner.
`_______________
`
`IPR2020-00962
`Patent 8,530,171 B2
`_______________
`
`
`Before ULRIKE W. JENKS, SHERIDAN K. SNEDDEN, and
`SUSAN L. C. MITCHELL, Administrative Patent Judges.
`
`
`MITCHELL, Administrative Patent Judge.
`
`
`
`
`
`
`
`DECISION
`Settlement Prior to Institution of Trial
`37 .F.R. § 42.74
`
`
`
`
`
`IPR2020-00962
`Patent 8,530,171 B2
`
`
`
`At the request of the parties, the Board, on October 23, 2020,
`
`authorized Petitioner and Patent Owner (collectively referred to as “the
`
`parties”) to file a motion to terminate, settlement agreement, and motion to
`
`keep the settlement agreement business confidential. On October 30, 2020,
`
`pursuant to 37 C.F.R. § 42.74 and 35 U.S.C. § 317(b), the parties filed a
`
`Joint Motion to Terminate the above-referenced proceeding (Paper 10) and a
`
`Joint Request to file settlement materials as business confidential
`
`information and to maintain said materials separate from the public file
`
`(Paper 11 (“Joint Request”)), along with a copy of the confidential
`
`settlement materials (Ex. 1036 (“Settlement Agreement”)). Pursuant to the
`
`Board’s authorization on November 6, 2020, the parties filed on
`
`November 11, 2020, an Amended Joint Motion to Terminate containing a
`
`certification that there are no other agreements or understandings between
`
`the parties made in connection with, or in contemplation of, the termination
`
`of the above-referenced proceeding (Paper 13 (“Amended Joint Motion”)).
`
`In the Amended Joint Motion, the parties represent that they have
`
`reached an agreement to jointly seek termination of this inter partes review
`
`proceeding, and that the filed copy of the Settlement Agreement is a true and
`
`complete copy. Paper 13, 1–2. The parties further represent that their
`
`Settlement Agreement resolves all currently pending Patent Office
`
`proceedings between the parties involving the 8,530,171 patent. Id at 2–4.
`
`The above-referenced proceeding is at an early stage, as we have not
`
`yet decided whether to institute a trial in the proceeding. In view of the
`
`early stage of the proceeding and the settlement between the parties, we
`
`determine that good cause exists to terminate this proceeding with respect to
`
` 2
`
`
`
`the parties.
`
`
`
`
`
`IPR2020-00962
`Patent 8,530,171 B2
`
`
`Additionally, upon review of the Joint Request that the Settlement
`
`Agreement be treated as business confidential information and be kept
`
`separate from the file of the patent involved in this inter partes proceeding,
`
`we determine that good cause exists to treat the Settlement Agreement
`
`between Petitioner and Patent Owner as business confidential information
`
`pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).
`
`Therefore, the Amended Joint Motion and the Joint Request are
`
`granted.
`
`This Order does not constitute a final written decision pursuant to
`
`35 U.S.C. § 318(a).
`
`Accordingly, it is:
`
`ORDERED that the Amended Joint Motion (Paper 13) to terminate
`
`the above-referenced proceeding is GRANTED, and IPR2020-00962 is
`
`TERMINATED with respect to both Petitioner and Patent Owner; and
`
`FURTHER ORDERED that the Joint Request (Paper 11) that the
`
`Settlement Agreement (Ex. 1036) be treated as business confidential
`
`information and be kept separate from the files of the above-referenced
`
`proceeding and from the file of U.S. Patent No. 8,530,171 B2, under the
`
`provisions of 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), is GRANTED.
`
` 3
`
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2020-00962
`Patent 8,530,171 B2
`
`For PETITIONER:
`
`Charles E. Lipsey
`Richard B. Racine
`Joann M. Neth
`Trenton A. Ward
`Amanda Murphy
`Yieyie Yang
`FINNEGAN, HENDERSON, FARABOW,
`GARRETT & DUNNER, LLP
`charles.lipsey@finnegan.com
`rich.racine@finnegan.com
`joann.neth@finnegan.com
`trenton.ward@finnegan.com
`amanda.murphy@finnegan.com
`yieyie.yang@finnegan.com
`
`
`For PATENT OWNER:
`
`Jeffrey W. Guise
`Lora M. Green
`Wendy Devine
`Lorelei Westin
`WILSON SONSINI GOODRICH &
`ROSATI
`jguise@wsgr.com
`lgreen@wsgr.com
`wdevine@wsgr.com
`lwestin@wsgr.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
