`571-272-7822
`
`Paper 15
`Entered: September13, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`MYLAN TECHNOLOGIES, INC.,
`Petitioner,
`
`Vv.
`
`NOVEN PHARMACEUTICALS, INC.,
`Patent Owner.
`
`Case IPR2018-00173
`Patent 9,724,310 B2
`
`Before JAMES T. MOORE, SUSAN L. C. MITCHELL,and
`KRISTI L. R. SAWERT, Administrative Patent Judges.
`
`SAWERT,Administrative Patent Judge.
`
`DECISION
`Granting Joint Motion to Terminate Proceeding
`35 US.C. $317; 37 CFR. $§ 42.72, 42.74
`
`
`
`IPR2018-00173
`Patent 9,724,310 B2
`
`On September 5, 2018, Mylan Technologies, Inc. (“Petitioner”) and
`Noven Pharmaceuticals, Inc. (“Patent Owner”) filed a joint motion to
`
`terminate this proceeding pursuant to 35 U.S.C. § 317(a) and 37 C.F.R.
`
`§ 42.72. Paper 12 (‘“Motion”or “Mot.”). The motion was accompanied by a
`true, unredacted copy of a binding settlement term sheet (Ex. 2024), anda
`
`joint request to treat the binding settlement term sheet as business
`
`confidential information, to be kept separate from the patent file, pursuant to
`
`35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) (Paper 13).
`
`The parties represent in their joint motion that they “havesettled their
`
`dispute and executed a binding term sheet to terminate th[is] inter partes
`review[].” Mot. 1. The parties state that the binding settlement term sheet
`“reflects all essential terms of a settlement agreement betweenthe [p]arties.”
`
`Id. at2. Additionally, the parties state that they havefiled identical motions
`
`to terminate the related inter partes review proceedings IPR2018-00174 and
`
`IPR2018-01119, and that the related district court case betweenthe parties,
`
`Noven Pharmaceuticals, Inc. v. Mylan Technologies Inc., 1:17-cv-01777
`
`(D. Del.), and related Federal Circuit Appeal No. 18-2287, have been
`
`dismissed. Jd. at n.1, 3-4.
`
`The Board generally expects that a case “will terminate after the filing
`
`of a settlement agreement, unless the Board has already decided the merits.”
`
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14,
`
`2012); see also 37 C.F.R. § 42.72. We entered a Decision denying
`institution uf inter partes review in this case on June 12, 2018 (Paper 9), and
`
`Petitioner timely filed a request for rehearing on July 12, 2018 (Paper 10).
`
`See 37 C.F.R. § 42.71(d). No order on whether to rehear the Board’s
`
`Decision denying institution, however, has been issued. Under the
`
`2
`
`
`
`IPR2018-00173
`Patent 9,724,310 B2
`
`circumstances presented here, therefore, we determinethatit is appropriate
`
`to terminate this proceeding with respect to both Petitioner and Patent
`
`Owner. Accordingly, we dismiss Petitioner’s request for rehearing as moot
`and grant the parties’ joint motion to terminate.
`Wealso determine that the partieshave complied with the
`requirements of 37 C.F.R. § 42.74(c) to have the binding settlement term
`sheet treated as business confidential information and kept separate from the
`
`files of the patent at issue in this proceeding. Thus, we grant the Joint
`
`Requestto treat the binding settlement term sheet as business confidential.
`
`Accordingly,it is
`
`ORDEREDthatthe joint motion to terminate the proceedingis
`
`GRANTED;
`
`FURTHER ORDEREDthatthe joint request to treat the parties’
`binding settlement term sheet as business confidential information, to be
`kept separate from the patent file, is GRANTED;
`FUTHER ORDEREDthatPetitioner’s request for rehearing is
`DISMISSEDas moot; and
`
`FURTHER ORDEREDthatthe instant proceeding is TERMINATED.
`wu
`
`
`
`IPR2018-00173
`Patent 9,724,310 B2
`
`PETITIONER:
`
`Steven W. Parmelee
`sparmelee@wsgr.com
`
`Michael T. Rosato
`mrosato@wsgr.com
`
`Jad A. Mills
`jmills@wsgr.com
`
`PATENT OWNER:
`
`Courtenay C. Brinckerhoff
`cbrinckerhoff@foley.com
`
`Jason N. Mock
`jmock@foley.com
`
`
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