`571-272-7822
`
`
`
`Paper 19
`Entered: September 7, 2021
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`DANISCO US INC. and DUPONT NUTRITION BIOSCIENCES ApS,
`Petitioner,
`
`v.
`
`NOVOZYMES A/S,
`Patent Owner.
`____________
`
`IPR2021-00188 (Patent 10,058,107 B2)
` IPR2021-00189 (Patent 10,555,541 B2)1
`____________
`
`Before JAMES A. WORTH, ROBERT A. POLLOCK, and
`RYAN H. FLAX, Administrative Patent Judges.
`
`PER CURIAM, Administrative Patent Judge.
`
`
`
`TERMINATION
`Due to Settlement After Institution of Trial and
`Granting Joint Request to Treat Settlement Agreement as
`Business Confidential Information
`35 U.S.C. § 317; 37 C.F.R. § 42.74
`
`
`
`
`
`1 Substantially identical copies of Paper 17, Paper 18, and Exhibit 2002,
`discussed infra, are of record in both of the above-referenced proceedings
`and this order applies to both cases. We exercise our discretion to issue one
`Order to be docketed in each case. The parties, however, are not authorized
`to use this caption for any subsequent papers.
`
`
`
`IPR2021-00188, Patent 10,058,107 B2
`IPR2021-00189, Patent 10,555,541 B2
`
`
`INTRODUCTION
`I.
`Petitioner and Patent Owner (collectively “the Parties”) have
`requested that the above-identified inter partes review proceedings be
`terminated pursuant to a settlement. On August 27, 2021, the Parties filed
`an authorized Joint Motion to Terminate Proceeding (“Joint Motion”).
`Paper 17. The Parties also filed a copy of a settlement agreement and
`collateral agreements (Ex. 2002, “Agreements”) and filed a Joint Request to
`Keep Agreements Confidential and Separate Under 37 C.F.R. § 42.74(c)
`(Paper 18, “Joint Request”) in the proceeding.
`
`II. DISCUSSION
`Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under
`this chapter shall be terminated with respect to any petitioner upon the joint
`request of the petitioner and the patent owner, unless the Office has decided
`the merits of the proceeding before the request for termination is filed.” It is
`also provided in 35 U.S.C. § 317(a) that if no petitioner remains in the inter
`partes review, the Office may terminate the review.
`In the Joint Motion, the Parties represent that they have reached an
`agreement to jointly seek termination of the inter partes review proceedings,
`that the filed copies of the Agreements are true copies and “there are no
`other agreements, oral or written, between the parties made in connection
`with, or in contemplation of, the termination of this proceeding.” Joint
`Motion 1.
`We instituted a trial in each proceeding on May 17, 2021. Paper 10
`(in each). We have not yet decided the merits of the proceedings, and a final
`written decision has not been entered in either proceeding. Notwithstanding
`that the proceedings have moved beyond the preliminary stage, the Parties
`2
`
`
`
`
`
`IPR2021-00188, Patent 10,058,107 B2
`IPR2021-00189, Patent 10,555,541 B2
`
`have shown adequately that the termination of the proceedings is
`appropriate. Under these circumstances, we determine that good cause
`exists to terminate the proceedings with respect to the Parties.
`The Parties also requested that the Agreements be treated as business
`confidential information and be kept separate from the file of Patents
`10,555,541 and 10,058,107. Joint Request 1–2. After reviewing the
`Agreements between the Parties, we find that the Agreements contain
`confidential business information regarding the terms of settlement. We
`determine that good cause exists to treat the Settlement Agreement
`(Exhibit 2002 in each proceeding) as business confidential information
`pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).
`This Order does not constitute a final written decision pursuant to
`35 U.S.C. § 318(a).
`
`III. ORDER
`Accordingly, for the reasons discussed above, it is:
`ORDERED that the Joint Motion is granted, and IPR2021-00188 and
`IPR2021-00189 are terminated with respect to Petitioner and Patent Owner,
`pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. § 42.72; and
`
`FURTHER ORDERED that the Joint Request is granted, and the
`Settlement Agreement (Exhibit 2002) shall be kept separate from the file of
`Patent 10,555,541 and Patent 10,058,107, and made available only to
`Federal Government agencies on written request, or to any person on a
`showing of good cause, pursuant to 35 U.S.C. § 317(b) and 37 C.F.R.
`§ 42.74(c).
`
`
`
`
`
`3
`
`
`
`IPR2021-00188, Patent 10,058,107 B2
`IPR2021-00189, Patent 10,555,541 B2
`
`
`
`
`For PETITIONER:
`Michael J. Flibbert
`Pier D. DeRoo
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
`michael.flibbert@finnegan.com
`pier.deroo@finnegan.com
`
`For PATENT OWNER:
`Dorothy P. Whelan
`Robert C. Sullivan, Jr.
`Michael T. Zoppo
`Kathryn Grey
`FISH & RICHARDSON P.C.
`whelan@fr.com
`rsullivan@fr.com
`zoppo@fr.com grey@fr.com
`
`
`
`
`4
`
`
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