`571-272-7822
`
`
`
`
`
` Paper No. 24
` Date: May 8, 2018
`
` UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ACTAVIS LLC,
`Petitioner,
`
`
`
`
`
`
`
`
`v.
`
`ABRAXIS BIOSCIENCE LLC,
`Patent Owner.
`____________
`
`Case IPR2017-01101 (Patent 7,820,788 B2)
`Case IPR2017-01103 (Patent 7,923,536 B2)
`Case IPR2017-01104 (Patent 8,138,229 B2)
`____________
`
`Before JEFFREY N. FREDMAN, RAMA G. ELLURU, and SUSAN L. C.
`MITCHELL, Administrative Patent Judges.
`
`FREDMAN, Administrative Patent Judge.
`
`
`
`JUDGMENT
`Termination of the Proceeding
`35 U.S.C. § 317(a); 37 C.F.R. § 42.72
`
`On January 29, 2018, pursuant to 35 U.S.C. § 317(a), the parties filed a
`Joint Motion to terminate each of the above-referenced proceedings. IPR2017-
`01101, Paper 21; IPR2017-01103, Paper 21; IPR2017-01104, Paper 21.
`Accompanying the Motion, the parties filed a true copy of a settlement agreement
`along with a Joint Request to treat the settlement agreement as business
`confidential, to be kept separate from the patent file under 35 U.S.C. § 317(b) and
`
`
`
` IPR2017-01101 (Patent 7,820,788 B2)
` IPR2017-01103 (Patent 7,923,536 B2)
` IPR2017-01104 (Patent 8,138,229 B2)
`37 C.F.R. § 42.74(c). IPR2017-01101, Paper 22; IPR2017-01103, Paper 22;
`IPR2017-01104, Paper 22. We authorized the filing of these papers in a Board
`email dated January 26, 2018.
`We entered a Decision to Institute an inter partes review in each case on
`October 10, 2017, and conducted an initial conference call on November 15,
`2017. See IPR 2017-01101, Papers 7, 8; IPR2017-01103, Papers 7, 8; IPR2017-
`01104, Papers 7, 8. Beyond the filing by Petitioner and Patent Owner of
`Objections to Evidence and Pro Hac Vice motions, little additional significant
`briefing activity has occurred in this proceeding. Papers 9–11, 13, 15. The parties
`explain that (i) the briefing and discovery process has not yet been completed,
`(ii) Patent Owner has not filed its Response and Petitioner has not filed a Reply,
`and (iii) there are no motions pending. See Paper 21 (all proceedings). At this
`juncture of the proceeding, the Board does not have before it full briefing on the
`trial issues and the Board has not entered a final decision.
`The Joint Motions to terminate these proceedings indicates that on January
`26, 2018, the parties filed a Consent Judgment in the pending litigation
`involving the challenged patents, U.S. Patent No. 7,820,788, 7,923,536, and
`8,138,229 requesting the claims and counterclaims be dismissed with prejudice.
`Paper 21. 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 37 C.F.R. § 42.72. Based on the facts of the case, it is appropriate to enter
`
`2
`
`
`
`
`
` IPR2017-01101 (Patent 7,820,788 B2)
` IPR2017-01103 (Patent 7,923,536 B2)
` IPR2017-01104 (Patent 8,138,229 B2)
`judgment1 and terminate the proceedings without rendering a final written
`decision. See 35 U.S.C. § 317(a); 37 C.F.R. § 42.72. We also determine that the
`parties have complied with the requirements of 37 C.F.R. § 42.74(c) to have the
`Settlement Agreement treated as business confidential information and kept
`separate from the files of the patents at issue in these proceedings. Thus, the
`joint motions to terminate the proceeding and joint requests that the settlement
`agreement be treated as business confidential information are granted.
` Accordingly, it is
`
`ORDERED that the parties’ joint requests in IPR2017-01101, IPR2017-
`01103, and IPR2017-01104 that the settlement agreement be treated as business
`confidential information, to be kept separate from the patent file, 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) are granted;
`FURTHER ORDERED that the joint motions in IPR2017-01101, IPR2017-
`01103, and IPR2017-01104 to terminate these proceedings are granted; and
`
`FURTHER ORDERED that the proceedings in IPR2017-01101, IPR2017-
`01103, and IPR2017-01104 are terminated.
`
`
`1 A judgment means a final written decision by the Board, or a termination of a
`proceeding. 37 C.F.R. § 42.2.
`
` 3
`
`
`
`
`
`
`
`
`
` IPR2017-01101 (Patent 7,820,788 B2)
` IPR2017-01103 (Patent 7,923,536 B2)
` IPR2017-01104 (Patent 8,138,229 B2)
` PETITIONER:
` Samuel S. Park
` George C. Lombardi
` Charles B. Klein
` Kevin E. Warner
` Eimeric Reig-Plessis
` WINSTON & STRAWN LLP
` AbraxaneIPR@winston.com
`
` PATENT OWNER:
` J. Patrick Elsevier
` Anthony M. Insogna
` Cary Miller
` Lisamarie LoGiudice
` JONES DAY
` jpelsevier@jonesday.com
` aminsogna@jonesday.com
` cmiller@jonesday.com
` llogiudice@jonesday.com
`
` F. Dominic Cerrito
` Andrew S. Chalson
` Frank C. Calvosa
` QUINN EMANUEL URQUHART &
` SULLIVAN, LLP
` nickcerrito@quinnemanuel.com
` andrewchalson@quinnemanuel.com
` frankcalvosa@quinnemanuel.com
`
`
` 4
`
`
`
`
`
`
`
`
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