`Trials@uspto.gov
`Tel: 571-272-7822
`Entered: July 13, 2018
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`APOTEX INC. and APOTEX CORP.,
`Petitioners,
`v.
`ABRAXIS BIOSCIENCE, LLC,
`Patent Owner.
`
`Case IPR2018-00151 (Patent 8,138,229 B2)
`Case IPR2018-00152 (Patent 7,820,788 B2)
`Case IPR2018-00153 (Patent 7,923,536 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. IPR2018-00151, Paper 11; IPR2018-00152, Paper 12;
`
`
`
`IPRs 2018-00151, 2018-00152, 2018-00153
`Patents 7,820,788 B2, 7,923,536 B2, 8,138,229 B2
`
`
`IPR2018-00153, Paper 111. 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 37 C.F.R. § 42.74(c).
`IPR2018-00151, Paper 12; IPR2018-00152, Paper 13; IPR2018-00153,
`Paper 12. We authorized the filing of these papers in a Board email dated
`June 15, 2018.
`We entered a Decision to Institute an inter partes review in each
`case on May 8, 2018. See IPR 2018-00151, Paper 10; IPR2018-00152,
`Paper 11; IPR2018-00153, Paper 11. Since our Decision, minimal briefing
`activity has occurred in this proceeding. The parties explain that
`termination is appropriate because (1) Petitioners and Patent Owner have
`settled their disputes and have agreed to terminate the proceeding, (2) the
`Office has not yet decided the merits of the proceeding, and (3) public
`policy favors the termination. See IPR2018-00151, Paper 11; IPR2018-
`00152, Paper 12; IPR2018-00153, Paper 11. At this juncture of the
`proceeding, the record does not contain full briefing on the trial issues and
`the Board has not entered a final decision.
`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
`
`
`1 The motions in each proceeding are identical. Thus, we cite to the papers
`in IPR2018-00151 for convenience, unless otherwise specifically indicated.
`
`2
`
`
`
`IPRs 2018-00151, 2018-00152, 2018-00153
`Patents 7,820,788 B2, 7,923,536 B2, 8,138,229 B2
`
`
`is appropriate to enter judgment2 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 joint motions in IPR2018-00151, IPR2018-
`00152, and IPR2018-00153 to terminate these proceedings are granted;
`
`FURTHER ORDERED that the proceedings in IPR2018-00151,
`IPR2018-00152, and IPR2018-00153 are terminated; and
`
`FURTHER ORDERED that the parties’ joint requests in IPR2018-
`00151, IPR2018-00152, and IPR2018-00153 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.
`.
`
`
`
`
`
`
`
`2 A judgment means a final written decision by the Board, or a termination
`of a proceeding. 37 C.F.R. § 42.2.
`
`3
`
`
`
`IPRs 2018-00151, 2018-00152, 2018-00153
`Patents 7,820,788 B2, 7,923,536 B2, 8,138,229 B2
`
`PETITIONER:
`
`John Molenda
`Vishal Gupta
`Siew Chong
`STEPTOE & JOHNSON LLP
`jmolenda@steptoe.com
`schong@steptoe.com
`vgupta@steptoe.com
`
`
`PATENT OWNER:
`
`J. Patrick Elsevier
`Anthony M. Insogna
`Cary Miller
`Christopher J. Harnett
`Lisamarie LoGiudice
`JONES DAY
`jpelsevier@jonesday.com
`aminsogna@jonesday.com
`cmiller@jonesday.com
`llogiudice@jonesday.com
`charnett@jonesday.com
`
`F. Dominic Cerrito
`Andrew S. Chalson
`Daniel C. Wiesner
`Frank C. Calvosa
`QUINN EMANUEL URQUHART & SULLIVAN
`nickcerrito@quinnemanuel.com
`andrewchalson@quinnemanuel.com
`danielwiesner@quinnemanuel.com
`frankcalvosa@quinnemanuel.com
`
`4
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
