`
` Paper 25
`Trials@uspto.gov
`571-272-7822 Date: December 8, 2020
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`TEVA PHARMACEUTICALS USA, INC. AND WATSON
`LABORATORIES, INC.,
`Petitioner
`
`v.
`
`MERCK SHARP & DOHME CORP.,
`Patent Owner.
`____________
`
`IPR2020-01045
`Patent 7,326,708 B2
`____________
`
`
`
`Before SHERIDAN K. SNEDDEN, ROBERT A. POLLOCK, and
`TIMOTHY G. MAJORS, Administrative Patent Judges.
`
`MAJORS, Administrative Patent Judge.
`
`
`TERMINATION
`Due to Settlement After Institution of Trial
`35 U.S.C. § 317; 37 C.F.R. § 42.74
`
`
`
`
`
`IPR2020-01045
`Patent 7,326,708 B2
`
`DISCUSSION
`Pursuant to authorization by the Board, the parties filed the following:
`(1) a Joint Motion to Terminate IPR (Paper 22); (2) a true copy of the
`parties’ settlement agreement (Ex. 1023); 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 23).
`Oral argument has not been held, and a final written decision has not
`been entered. In the Joint Motion to Terminate IPR, the parties indicate that
`they have settled all their disputes in this proceeding, and have agreed to
`terminate the proceeding. Paper 22, 1. The parties represent that “there are
`no other agreements, oral or written, between the parties made in connection
`with, or in contemplation of, the termination of the proceeding, beyond the
`written agreements submitted as Ex. 1023.” Id. Under these particular
`circumstances, we determine that it is appropriate to terminate the
`proceeding without rendering a final written decision. See 35 U.S.C. § 317;
`37 C.F.R. § 42.72. 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 file of U.S Patent No. 7,326,708 B2 (Ex. 1001, “the
`’708 patent”), under 37 C.F.R. § 42.74(c).
`
`
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`2
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`IPR2020-01045
`Patent 7,326,708 B2
`
`ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that the parties’ request (Paper 23) to treat the true copy
`of their settlement agreement (Ex. 1023) as business confidential
`information, and to keep separate from the file of the involved patent, under
`37 C.F.R. § 42.74(c) is granted;
`FURTHER ORDERED that the settlement agreement (Ex. 1023) shall
`be treated as business confidential information, kept separate from the file of
`the ’708 patent, 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 22) is granted, and the proceeding (IPR2020-01045) is
`terminated;
`FURTHER ORDERED that, within 10 days, the parties shall file in
`the IPR2020-00040 proceeding a Joint Motion to Withdraw Joinder as to
`Petitioners Teva Pharmaceuticals USA, Inc. and Watson Laboratories, Inc.
`Before filing the Joint Motion to Withdraw Joinder, the moving parties are
`also instructed to confer with the other parties in IPR2020-00040, such that
`the moving parties are in a position to indicate to the Board upon filing of
`the motion whether the Joint Motion to Withdraw Joinder is unopposed.
`
`
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`3
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`
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`IPR2020-01045
`Patent 7,326,708 B2
`
`PETITIONER:
`Keith Zullow
`kzullow@goodwinprocter.com
`
`Sarah Fischer
`sfischer@goodwinprocter.com
`
`
`PATENT OWNER:
`
`Stanley Fisher
`sfisher@wc.com
`
`Jessamyn Berniker
`jberniker@wc.com
`
`Shaun Mahaffy
`smahaffy@wc.com
`
`Anthony Sheh
`asheh@wc.com
`
`
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`4
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