`571-272-7822
`
`
`
`
`
`Paper No. 40
`Entered: July 26, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`LUPIN LTD. and LUPIN PHARMACEUTICALS, INC.,
`Petitioners,
`
`v.
`
`HORIZON THERAPEUTICS, LLC,
`Patent Owner.
`____________
`
`Case IPR2017-01159 (Patent 9,254,278 B2)
`Case IPR2017-01160 (Patent 9,326,966 B2)1
`____________
`
`
`
`Before DEBORAH KATZ, GRACE KARAFFA OBERMANN,
`RAMA G. ELLURU, Administrative Patent Judges.
`
`KATZ, Administrative Patent Judge.
`
`
`
`ORDER
`Granting Joint Motion to Terminate Proceeding and
`Granting Joint Request to Treat Settlement Agreement as
`Business Confidential Information
`35 U.S.C. § 317; 37 C.F.R. §§ 42.72, 42.74
`
`
`
`
`
`1 We exercise our discretion to issue one Order to be filed in both cases. The
`parties are not authorized to use this style heading for any subsequent
`papers.
`
`
`
`Case IPR2017-01159 (Patent 9,254,278 B2)
`Case IPR2017-01160 (Patent 9,326,966 B2)
`On July 9, 2018, Petitioner Lupin Ltd. and Lupin Pharmaceuticals Inc. and
`Patent Owner Horizon Therapeutics, LLC (“the parties”) filed a Joint Motion to
`Terminate in each of the above-identified proceedings. See IPR2017-01159, Paper
`36, and IPR2017-01160, Paper 36 (“Joint Motions”). According to the parties, the
`settlement agreement resolves all currently pending Patent Office and District
`Court proceedings between the parties to this proceeding involving the ’278 patent
`and ’966 patent. Joint Motions 2. The parties represent that they have reached an
`agreement jointly seeking termination of these inter partes review proceedings. Id.
`The parties also represent that they have agreed to dismiss related district court
`litigation, Horizon Therapeutics, Inc. v. Lupin Ltd. and Lupin Pharmaceuticals
`Inc., Civil Action No. 1:15-cv-07624-RBK-JS (D.N.J. filed Oct. 19, 2015), and
`Horizon Therapeutics, Inc. v. Lupin Ltd. and Lupin Pharmaceuticals Inc., Civil
`Action No. 1:16-cv-4438-RBK-JS (D.N.J. filed Jul. 21, 2016). Id.
`Although we instituted a trial (see IPR2017-01159, Paper 10; IPR2017-
`01160, Paper 10), a decision has not yet been finalized in this proceeding.
`Accordingly, we grant the parties’ requests and terminate the proceedings. See 35
`U.S.C. § 317(a).
`Along with the Joint Motions, the parties filed copies of a Confidential
`Settlement and License Agreement (Exhibit 2054, “Settlement Agreement”) in
`each proceeding and request that they be kept separate and confidential because of
`the inclusion of highly sensitive business confidential information that would
`substantially harm their business interests if publicly disclosed. See IPR2017-
`01159, Paper 39, and IPR2017-01160, Paper 37 (“Joint Requests”). We grant the
`requests, pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).
`The Parties further request “the Board order that in the event a person or
`entity makes a written request, as stated in 37 C.F.R. § 42.74(c)(1)–(2), for access
`
`2
`
`
`
`Case IPR2017-01159 (Patent 9,254,278 B2)
`Case IPR2017-01160 (Patent 9,326,966 B2)
`to the settlement agreement, that any such written request be served upon the
`parties on the day the written request is provided to the Board.” Paper 39, 1. We
`have no such procedure to serve upon the parties a request for access to the
`Settlement Agreement, and, further, our regulations do not require us to do so.
`Therefore, we decline to issue an order regarding such requests.
`Accordingly, for the reasons discussed above:
`It is ORDERED that the Joint Motion to Terminate (IPR2017-01159, Paper
`36) is granted, and IPR2017-01159 is terminated with respect to Petitioner and
`Patent Owner pursuant to 37 C.F.R. § 42.72;
`It is FURTHER ORDERED that the Joint Motion to Terminate (IPR2017-
`01160, Paper 36) is granted, and IPR2017-01160 is terminated with respect to
`Petitioner and Patent Owner pursuant to 37 C.F.R. § 42.72;
`
`It is FURTHER ORDERED that the parties’ joint requests to treat the
`settlement agreement as business confidential information (IPR2017-01159, Paper
`39, and IPR2017-01160, Paper 37) are granted, and the Settlement Agreement
`(Exhibit 2054) shall be kept separate from the files of the involved patents,
`pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).
`
`
`
`
`
`
`3
`
`
`
`Case IPR2017-01159 (Patent 9,254,278 B2)
`Case IPR2017-01160 (Patent 9,326,966 B2)
`For PETITIONER:
`Elizabeth Holland
`eholland@goodwinprocter.com
`
`Cynthia Hardman
`chardman@goodwinprocter.com
`
`
`
`For PATENT OWNER:
`Robert Green
`rgreen@greengriffith.com
`
`Matthew Phillips
`mphillips@lpiplaw.com
`
`Emer Simic
`esimic@greengriffith.com
`
`Dennis Bennett
`admin@globalpatentgroup.com
`
`Ann Kotze
`akotze@greengriffith.com
`
`
`
`
`
`
`
`
`
`4
`
`
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