`571.272.7822
`
`
`Paper 30
`Date: January 5, 2024
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APOTEX INC.,
`Petitioner,
`
`v.
`
`CELLGENE CORPORATION,
`Patent Owner.
`____________
`
`IPR2023-00512
`Patent 8,846,628 B2
`____________
`
`
`
`Before TINA E. HULSE, RYAN H. FLAX, and
`DEVON ZASTROW NEWMAN, Administrative Patent Judges.
`
`FLAX, Administrative Patent Judge.
`
`
`
`
`DECISION
`Due to Settlement After Institution of Trial
`Granting Joint Motion to Treat Settlement Agreement as Confidential
`35 U.S.C. § 317; 37 C.F.R. §§ 42.71(a), 42.72, 42.74
`
`
`
`
`
`
`IPR2023-00512
`Patent 8,846,628 B2
`
`
`Celgene Corporation (“Patent Owner”) is the owner of U.S. Patent
`8,846,628 B2 (“the ’628 patent”). Paper 5, 1. On February 10, 2023,
`Apotex Inc. (“Petitioner”) filed a Petition for inter partes review challenging
`the patentability of claims 1, 2, 6–9, 11–28, 32–36, and 38–43 of the ’628
`patent (claims 3–5, 10, 29–31, and 37 are not challenged). Paper 1, 1, 6
`(“Pet.”). On July 20, 2023, we instituted trial in this proceeding. Paper 7.
`No final decision on patentability has been entered by the Board.
`On January 4, 2024, the parties jointly, with our authorization, filed a
`Joint Motion to Terminate this proceeding on the basis of a settlement
`reached by the parties. Paper 28 (“Mot.”); see 35 U.S.C. § 317(a); 42 C.F.R.
`§ 42.74.
`35 U.S.C. § 317(b) states:
`Any agreement or understanding between the patent owner and
`a petitioner, including any collateral agreements referred to in
`such agreement or understanding, made in connection with, or
`in contemplation of, the termination of an inter partes review
`under this section shall be in writing and a true copy of such
`agreement or understanding shall be filed in the Office before
`the termination of the inter partes review as between the parties.
`Id. Pursuant to that statute, and in connection with the Joint Motion to
`Terminate, the parties filed a copy of their written settlement agreement
`resolving, inter alia, this inter partes review. Exhibit 1060 (“Settlement
`Agreement”).
`Generally, the Board expects that a proceeding will terminate after the
`filing of a settlement agreement, unless the Board has already decided the
`merits of the proceeding. See 35 U.S.C. § 317(a) (“An 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,
`
`2
`
`
`
`IPR2023-00512
`Patent 8,846,628 B2
`
`unless the Office has decided the merits of the proceeding before the request
`for termination is filed.”); 37 C.F.R. § 42.72 (“The Board may terminate a
`trial without rendering a final written decision, where appropriate, including
`. . . pursuant to a joint request under 35 U.S.C. 317(a)”). As noted above,
`the Board has not yet rendered a final decision. Thus, we grant the Joint
`Motion to Terminate the proceedings.
`The parties also move that the Settlement Agreement (Ex. 1060) be
`treated as confidential information and kept separate from the ’316 patent’s
`record. Paper 29. This request is granted. See 37 C.F.R. § 42.74(c).
`This Decision does not constitute a final written decision pursuant to
`35 U.S.C. § 318(a).
`
`Accordingly, it is:
`ORDERED that the Joint Motion to Terminate this proceeding is
`granted, the Petition is dismissed, and this proceeding is hereby terminated
`under 35 U.S.C. § 317(a) and 37 C.F.R. § 42.72; and
`FURTHER ORDERED that the Joint Motion to Treat the Settlement
`Agreement (Ex. 1060) as confidential information is granted, and this
`agreement shall be kept separate from the public files of the ’628 patent, and
`made available only to Government agencies on written request, or to any
`person on written request and a showing of good cause, under 35 U.S.C.
`§ 317(b) and 37 C.F.R. § 42.74(c).
`
`
`
`3
`
`
`
`IPR2023-00512
`Patent 8,846,628 B2
`
`
`For PETITIONER:
`
`Vishal C. Gupta
`John J. Molenda
`Tyler Doh
`Robert Kappers
`STEPTOE & JOHNSON LLP
`vgupta@steptoe.com
`jmolenda@steptoe.com
`rkappers@steptoe.com
`tdoh@steptoe.com
`migreen@steptoe.com
`
`
`For PATENT OWNER:
`
`Heather M. Petruzzi
`Laura Macro, PhD
`Gabriel J. Rosanio, PhD
`WILMER CUTLER PICKERING HALE AND DORR LLP
`Heather.Petruzzi@wilmerhale.com
`Laura.Macro@wilmerhale.com
`Gabriel.Rosanio@wilmerhale.com
`
`
`
`4
`
`
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