`571-272-7822
`
`
` Paper No. 73
` Entered: August 12, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`
`
`
`
`MYLAN PHARMACEUTICALS INC., and
`DR. REDDY’S LABORATORIES, INC.,
`
`Petitioners,
`
`v.
`
` HORIZON PHARMA USA, INC. and NUVO PHARMACEUTICALS
`(IRELAND) DESIGNATED ACTIVITY COMPANY,
`
`Patent Owners.
`_______________
`
`Case IPR2017-019951 (Patent 9,220,698 B2)
`Case IPR2018-002722 (Patent 9,393,208 B2)
`________________
`Before MICHELLE N. ANKENBRAND, Acting Vice Chief Administrative
`Patent Judge, TONI R. SCHEINER and DEBRA L. DENNETT,
`Administrative Patent Judges.
`
`DENNETT, Administrative Patent Judge.
`
`
`
`
`1 We exercise our discretion to issue one order to be entered in both cases.
`The parties are not authorized to use this style heading for subsequent papers
`without prior Board approval.
`2 Petitioner Dr. Reddy’s Laboratories, Inc. (“Dr. Reddy’s”), from IPR2018-
`00894 and IPR2018-01341, has been joined as a Petitioner to IPR2017-
`01995 and IPR2018-00272, respectively.
`
`
`
`IPR2017-01995 (Patent 9,220,698 B2)
`IPR2018-00272 (Patent 9,393,208 B2)
`
`
`JUDGMENT
`Terminating the Proceeding
`Granting Request to Treat Settlement Agreement
`as Confidential Business Information
`35 U.S.C. § 317(a); 37 C.F.R. § 42.72, 42.74(c)
`
`On July 29, 2019, with our prior authorization, Mylan
`Pharmaceuticals Inc. (“Mylan”) and Patent Owners filed a Joint Motion to
`Terminate Petitioner Mylan in each of the above-referenced cases (“Joint
`Motion” or “Joint Mot.”). Paper 71.3,4 Accompanying the Joint Motion,
`Mylan and Patent Owners filed copies of a settlement agreement. Ex.1092.
`Mylan and Patent Owners request that we treat the settlement agreement as
`business confidential information, to be kept separate from the publicly
`available patent files, under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).
`Paper 72.
`We instituted an inter partes review in IPR2017-01995 on March 8,
`2018 (Paper 18) and in IPR2018-00272 on June 14, 2018 (Paper 9).
`Although there has been briefing and a hearing in these cases since
`institution, Mylan and Patent Owners state that termination is appropriate
`because the parties have resolved their disputes and executed a settlement
`agreement. Joint Mot. 2–3. Mylan and Patent Owners further represent that
`they have complied with all regulatory requirements for termination. Id. at
`3.
`
`
`3 The parties’ filed substantively similar papers and exhibits in each case.
`Unless otherwise noted, we cite to the papers and exhibit filed in IPR2018-
`00272 as representative.
`4 Dr. Reddy’s is not a party to the Motions to Terminate.
`2
`
`
`
`
`
`IPR2017-01995 (Patent 9,220,698 B2)
`IPR2018-00272 (Patent 9,393,208 B2)
`
`
`The Board generally expects that a case “will terminate after the filing
`of a settlement agreement, unless the Board has already decided the merits”
`of that case. Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768
`(Aug. 14, 2012); see 37 C.F.R. § 42.72 (“The Board may terminate a trial
`without rendering a final written decision . . . pursuant to a joint request
`under 35 U.S.C. [§] 317(a).”) After reviewing the Joint Motion and the
`settlement agreement, we determine that it is appropriate to enter judgment
`and terminate Mylan as a petitioner in each of the cases without rendering a
`final written decision as to Mylan. See 35 U.S.C. § 317(a); 37 C.F.R.
`§ 42.72.
`After reviewing the parties’ settlement agreement, we find that the
`agreement contains confidential business information regarding the terms of
`the settlement and good cause exists to treat the settlement agreement as
`business confidential information pursuant to 35 U.S.C. § 317(b).
`
`Accordingly, it is
`ORDERED that Mylan’s and Patent Owners’ Joint Motion to
`Terminate each case is granted;
`FURTHER ORDERED that IPR2017-01995 and IPR2018-00272 are
`terminated with respect to Mylan;
`FURTHER ORDERED that Mylan’s and Patent Owners’ joint
`requests that the Board treat the settlement agreement as business
`confidential information, to be kept separate from the patent file in each
`case, is granted.
`
`
`
`3
`
`
`
`IPR2017-01995 (Patent 9,220,698 B2)
`IPR2018-00272 (Patent 9,393,208 B2)
`
`PETITIONERS:
`
`Brandon M. White
`Emily Greb
`Bryan D. Beel
`Autumn Nero
`PERKINS COIE LLP
`bmwhite@perkinscoie.com
`egreb@perkinscoie.com
`bbeel@perkinscoie.com
`anero@perkinscoie.com
`
`Alan Pollack
`Louis Weinstein
`WINDELS MARX LANE & MITTENDORF, LLP
`apollack@windelsmarx.com
`lweinstein@windelsmarx.com
`
`PATENT OWNERS:
`
`Thomas A. Blinka
`Jonathan G. Graves
`Ellen Scordino
`Lauren Krickl
`Susan Krumplitsch
`COOLEY LLP
`tblinka@cooley.com
`jgraves@cooley.com
`escordino@cooley.com
`lkrickl@cooley.com
`skrumplitsch@cooley.com
`
`Margaret J. Sampson
`Stephen M. Hash
`Jefferey S. Gritton
`BAKER BOTTS LLP
`margaret.sampson@bakerbotts.com
`stephen.hash@bakerbotts.com
`jefferey.gritton@bakerbotts.com
`
`
`
`4
`
`
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