Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`Paper No. 12
`Entered: July 25, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`LUPIN LTD. and LUPIN PHARMACEUTICALS INC.,
`Petitioner,
`
`v.
`
`HORIZON THERAPEUTICS, LLC,
`Patent Owner.
`____________
`
`Case IPR2018-00459
`Patent 9,561,197 B2
`____________
`
`
`Before DEBORAH KATZ, TONI R. SCHEINER, and RAMA G. ELLURU,
`Administrative Patent Judges.
`
`ELLURU, 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
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`Paper No. 12
`Entered: July 25, 2018
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`LUPIN LTD. and LUPIN PHARMACEUTICALS INC.,
`Petitioner,
`
`v.
`
`HORIZON THERAPEUTICS, LLC,
`Patent Owner.
`____________
`
`Case IPR2018-00459
`Patent 9,561,197 B2
`____________
`
`
`Before DEBORAH KATZ, TONI R. SCHEINER, and RAMA G. ELLURU,
`Administrative Patent Judges.
`
`ELLURU, 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
`
`
`
`
`
`
`Case IPR2018-00459
`Patent 9,561,197 B2
`
`I. INTRODUCTION
`On July 9, 2018, Petitioner and Patent Owner (collectively referred to
`as “the Parties”) filed a Joint Motion to Terminate this inter partes review
`proceeding challenging claims of U.S. Patent No. 9,561,197 (“the ’197
`patent”). Paper 9 (“Mot.”).1 Along with the Joint Motion, the Parties filed a
`Confidential Settlement and License Agreement (Exhibit 2021, “Settlement
`Agreement”), as well as a Joint Request to Treat the Settlement Agreement
`as Business Confidential Information pursuant to 35 U.S.C. § 317(b) and 37
`C.F.R. § 42.74(c) (Paper 10 (“Req.”)). The Parties represent that the filed
`copy of the Settlement Agreement is a true copy. Mot. 5.
`
`II. DISCUSSION
`Under 35 U.S.C. § 317(a), inter partes review proceedings “shall be
`terminated with respect to any petitioner upon the joint request of the
`petitioner and the patent owner, unless the Office has decided the merits of
`the proceeding before the request for termination is filed.”
`In the Joint Motion, the Parties represent that they have entered into a
`settlement agreement. Mot. 1. The Parties represent that their settlement
`agreement resolves all currently pending Office and District Court
`proceedings between them involving the ’197 patent, at issue in this
`proceeding. Id. at 2. The Parties further represent that they have reached an
`agreement to jointly seek termination of this inter partes review proceeding.
`Id. at 1–2.
` This proceeding is at an early stage, and we have not yet decided
`whether to institute a trial. In view of the early stage of this proceeding and
`
`1 Filing of the Joint Motion was authorized via e-mail correspondence from
`Board personnel on July 6, 2018.
`
`2
`
`
`
`Case IPR2018-00459
`Patent 9,561,197 B2
`the settlement between the Parties, we determine that good cause exists to
`terminate this proceeding with respect to the Parties.
`The Parties also filed a Joint Request that the Settlement Agreement
`be treated as business confidential information and be kept separate from the
`file of the patent involved in this inter partes proceeding. Req. 1. After
`reviewing the Settlement Agreement between Petitioner and Patent Owner,
`we find that the Settlement Agreement contains confidential business
`information regarding the terms of settlement. We determine that good
`cause exists to treat the Settlement Agreement between Petitioner and Patent
`Owner as business confidential information 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 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.” Req. 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
`Settlement Agreement access requests.
`This paper does not constitute a final written decision pursuant to 35
`U.S.C. § 318(a).
` Accordingly, for the reasons discussed above, it is:
`
`
`
`
`3
`
`
`
`Case IPR2018-00459
`Patent 9,561,197 B2
`
`III. ORDER
`ORDERED that the Joint Motion to Terminate (Paper 9), as to
`Petitioner and Patent Owner, is granted;
`
`FURTHER ORDERED that the Joint Request (Paper 10) to Treat the
`Settlement Agreement (Exhibit 2021) as Business Confidential Information
`is granted;
` FURTHER ORDERED that the Settlement Agreement shall be kept
`separate from the file of Patent 9,561,197, 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); and
`
`FURTHER ORDERED that inter partes review proceeding IPR2018-
`00459 is hereby terminated with respect to Petitioner and Patent Owner
`pursuant to 37 C.F.R. § 42.72.
`
`
`
`
`
`
`4
`
`
`
`Case IPR2018-00459
`Patent 9,561,197 B2
`For PETITIONER:
`Elizabeth J. Holland
`Cynthia Lambert Hardman
`Andrew E. Riley
`GOODWIN PROCTER LLP
`eholland@goodwinlaw.com
`chardman@goodwinlaw.com
`ariley@goodwinlaw.com
`
`For PATENT OWNER:
`Robert Green
`Caryn Borg-Breen
`GREEN, GRIFFITH &BORG-BREEN, LLP
`rgreen@greengriffith.com
`cborg-breen@greengriffith.com
`
`Matthew Phillips
`LAURENCE & PHILLIPS IP LAW LLP
`mphillips@lpiplaw.com
`
`Dennis Bennett
`GLOBAL PATENT GROUP, LLC
`dennisbennett@globalpatentgroup.com
`
`
`
`
`
`5
`
`
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