`571-272-7822
`
`Paper No. 8
`Date: March 14, 2022
`
`
`
`
`
`
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`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`HIKMA PHARMACEUTICALS USA INC., HIKMA
`PHARMACEUTICALS PLC,
`Petitioner,
`v.
`AMARIN PHARMACEUTICALS IRELAND LIMITED,
`Patent Owner.
`
`IPR2022-00215
`Patent 8,642,077 B2
`
`
`Before TINA E. HULSE, CHRISTOPHER G. PAULRAJ, and
`MICHAEL A. VALEK, Administrative Patent Judges.
`
`VALEK, Administrative Patent Judge.
`
`
`
`DECISION
`Settlement Prior to Institution of Trial
`37 C.F.R. § 42.74
`
`
`
`
`
`
`
`
`
`IPR2022-00215
`Patent 8,642,077 B2
`On March 10, 2022, with authorization of the Board, the parties filed
`a joint motion to terminate the proceeding (paper 7) in light of an agreement
`between the parties and a joint request to treat that agreement as business
`confidential information under 35 U.S.C. § 317(b) (paper 6).
`The parties explain that good cause exists to terminate this proceeding
`because they have resolved their disputes relating to U.S. Patent No.
`8,642,077 (“the challenged patent”) and the proceeding is still at an early
`stage. Paper 7, 2. Moreover, pursuant to 37 C.F.R. § 42.74(b), the parties
`represent that the agreement made in contemplation of termination is in
`writing and that a true and correct copy of that agreement has been filed as
`Petitioner’s Exhibit 1050. Id. at 1. The parties jointly request that the
`agreement, filed as Exhibit 1050, be kept as a separate paper and made
`available only under the provisions of 35 U.S.C. § 327(b) and 37 C.F.R.
`§ 42.74(c) because they consider it “to contain highly sensitive business
`confidential information that would substantially harm their business
`interests if publicly disclosed.” Paper 6, 1.
`The parties are correct that this proceeding is in an early stage. The
`deadline for Patent Owner’s preliminary response has not yet passed and a
`decision on institution has not been entered. Accordingly, because the
`parties represent that they have resolved their disputes relating to the
`challenged patent and have filed a written copy of their agreement as
`contemplated by the statute and our rules, we agree that it is appropriate to
`grant the parties’ joint motion to terminate.
`We also grant the parties’ joint request to treat the agreement in
`Exhibit 1050 as business confidential information. That exhibit will be kept
`separate from the files of the challenged patent and shall be made available
`
`2
`
`
`
`IPR2022-00215
`Patent 8,642,077 B2
`only to a Government agency on written request, or to other persons on a
`written request and showing of good cause. See 35 U.S.C. § 317(b); 37
`C.F.R. § 42.74(c).
`
`ORDER
`
`Accordingly, it is:
`
`ORDERED that the joint motion to terminate (paper 7) is granted and
`
`this proceeding is terminated; and
`
`FURTHER ORDERED that the joint request that Exhibit 1050 be
`treated as business confidential information and kept separate from the file
`of U.S. Patent 8,642,077 B2 pursuant to 35 U.S.C. § 317(b) and 37 C.F.R.
`§ 42.74(c) (paper 6) is granted.
`
`
`
`
`
`
`
`
`3
`
`
`
`IPR2022-00215
`Patent 8,642,077 B2
`For PETITIONER:
`
`Jovial Wong
`Alison M. King
`WINSTON & STRAWN LLP
`JWong@winston.com
`AMKing@winston.com
`
`For PATENT OWNER:
`David Fournier
`Kourtney Merrill
`PERKINS COIE LLP
`fournier-ptab@perkinscoie.com
`merrill-ptab@perkinscoie.com
`
`4
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`
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