`571-272-7822
`
`Paper 9
`Date: October 29, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APOTEX INC.,
`Petitioner,
`v.
`PFIZER INC.,
`Patent Owner.
`
`IPR2021-01132
`Patent US 6,890,927 B2
`
`
`
`
`
`
`
`
`
`Before JOHN G. NEW, SUSAN L.C. MITCHELL, and
`CHRISTOPHER G. PAULRAJ, Administrative Patent Judges.
`NEW, Administrative Patent Judge.
`
`
`
`
`DECISION
`Settlement Prior to Institution of Trial
`37 C.F.R. § 42.74
`
`
`
`
`
`
`
`
`
`
`
`IPR2021-01132
`Patent US 6,890,927 B2
`
`
`On October 21, 2021, with authorization of the Board, Petitioner
`Apotex Inc. (“Petitioner”) and Patent Owner Pfizer Inc. (“Patent Owner”)
`filed a joint motion to dismiss the petition and to terminate the proceeding.
`Paper 8.
`In the motion, the parties explain that dismissal of the petition and
`termination of the proceeding is appropriate because the motion has been
`filed prior to institution. Paper 8 at 3. Specifically, the parties state that they
`have settled all of their disputes involving the challenged U.S. Patent No.
`6,890,927 (“the ’927 patent”). Id. at 2.
`The parties also represent that, pursuant to 37 C.F.R. § 42.74(b), the
`Parties’ settlement agreement made in contemplation of termination of this
`proceeding is in writing, and that a copy of the settlement agreement has
`been filed as Petitioner’s Exhibit 1025. Id. The parties jointly request that
`the settlement agreement, filed as Petitioner’s Exhibit 1025, be treated as
`business confidential information, and be kept separate from the files of the
`above captioned IPR pursuant to 35 U.S.C. § 317(b) and 37 C.F.R.
`§ 42.74(c). Id. at 4.
`As Petitioner correctly asserts, this case is in the preliminary proceeding
`stage, and a decision whether to institute trial has not been entered. Under
`the circumstances, we conclude that it is appropriate to grant Petitioner’s
`unopposed motion to terminate the proceeding. Furthermore, we grant the
`parties joint request to treat the parties’ settlement agreement as business
`confidential information. The settlement agreement will be kept separate
`from the file of the ’927 patent, but will be part of the record in this
`proceeding and shall be made available only to Federal Government
`
`2
`
`
`
`IPR2021-01132
`Patent US 6,890,927 B2
`
`agencies on written request, or to any other person on a showing of good
`cause. See 35 U.S.C. § 317(b); 37 C.F.R. § 42.74(c).
`
`
`ORDER
`
`Accordingly, it is hereby:
`ORDERED that the parties’ motion is granted with respect to the
`request to terminate the proceeding in IPR2021-01132; and
`FURTHER ORDERED that the joint request that Exhibit 1025 be
`treated as business confidential information and kept separate from the file
`of U.S. Patent 9,056,289 B2, pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. §
`42.74(c).
`
`
`
`
`3
`
`
`
`IPR2021-01132
`Patent US 6,890,927 B2
`
`FOR PETITIONER:
`
`Deanne M. Mazzochi
`Paul J. Molino
`Jeffrey A. Marx
`Mazzochi Siwik LLP
`dmazzochi@rmmslegal.com
`paul@rmmslegal.com
`jmarx@rmmslegal.com
`
`
`FOR PATENT OWNER:
`
`Andrew V. Trask
`Michael Xun Liu
`Williams & Connolly LLP
`atrask@wc.com
`mliu@wc.com
`
`
`4
`
`