`571-272-7822
`
`
`
`
`
`
`
`
`
`
`
` Paper No. 30
`
`Entered: November 30, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`
`
`
`ARGENTUM PHARMACEUTICALS LLC,
`APOTEX INC., and APOTEX CORP.,
`Petitioner,
`
`v.
`
`ALCON RESEARCH, LTD.,
`Patent Owner.
`____________
`
`Case IPR2016-005441
`Patent 8,791,154 B2
`____________
`
`
`
`ORDER
`Termination of the Proceedings
`35 U.S.C. § 317(a) and 37 C.F.R. § 42.72
`
`
`
`Before JENNIFER MEYER CHAGNON, CHRISTOPHER M. KAISER,
`and CHRISTOPHER G. PAULRAJ, Administrative Patent Judges.
`
`KAISER, Administrative Patent Judge.
`
`
`
`
`1 Petitioner Apotex Inc. and Apotex Corp. from IPR2016-01640 has been
`joined as a Petitioner to this proceeding.
`
`
`
`
`
`IPR2018-01020 and IPR2018-01021, Exhibit 1024, Page 1
`
`
`
`IPR2016-00544
`Patent 8,791,154 B2
`
`
`On November 30, 2016, the parties filed a Joint Motion to Terminate
`this proceeding pursuant to 35 U.S.C. § 317(a). Paper 27. In addition,
`pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), the parties filed
`true and correct copies of two separate Settlement and License Agreements.
`Ex. 2004; Ex. 2005. The Agreements were accompanied by joint requests to
`treat the Agreements as business confidential information, to be kept
`separate from the publicly available patent files. Paper 28; Paper 29.
`Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under
`this chapter shall be terminated with respect to any petitioner upon the joint
`request of the petitioner and patent owner, unless the Office has decided the
`merits of the proceeding before the request for termination is filed.” In this
`case, the Board instituted trial on July 18, 2016, and Apotex Inc. and Apotex
`Corp. were joined as Petitioners on October 5, 2016. Paper 8; Paper 25. So
`far, Patent Owner has not filed its Patent Owner Response, and the Board
`has not decided the merits of the proceeding.
`Under 37 C.F.R. § 42.72, “[t]he Board may terminate a trial without
`rendering a final written decision, where appropriate, including . . . pursuant
`to a joint request under 35 U.S.C. [§] 317(a).” After reviewing the Joint
`Motion to Terminate and the Agreements, we determine that it is appropriate
`to terminate the proceeding without rendering a final written decision.
`Therefore, the Joint Motion to Terminate is GRANTED.
`
`
`
`
`
`
`2
`
`
`
`
`
`IPR2018-01020 and IPR2018-01021, Exhibit 1024, Page 2
`
`
`
`IPR2016-00544
`Patent 8,791,154 B2
`
`
`Accordingly, it is
`ORDERED that the Joint Motion to Terminate is GRANTED and this
`proceeding is hereby TERMINATED; and
`FURTHER ORDERED that the Joint Requests that Settlement
`Agreements Be Treated as Business Confidential Information and Kept
`Separate are GRANTED, and the Settlement and License Agreements will
`be kept separate from the patent files.
`
`
`
`
`
`
`3
`
`
`
`
`
`IPR2018-01020 and IPR2018-01021, Exhibit 1024, Page 3
`
`
`
`IPR2016-00544
`Patent 8,791,154 B2
`
`PETITIONER:
`
`Michael R. Houston
`Joseph P. Meara
`FOLEY & LARDNER LLP
`jmeara-pgp@foley.com
`
`Teresa Stanek Rea
`Deborah H. Yellin
`Vincent J. Galluzzo
`CROWELL & MORING LLP
`trea@crowell.com
`dyellin@crowell.com
`vgalluzzo@crowell.com
`
`PATENT OWNER:
`
`David M. Krinsky
`Thomas S. Fletcher
`Adam L. Perlman
`Thomas H. L. Selby
`Christopher J. Mandernach
`WILLIAMS & CONNOLLY LLP
`dkrinsky@wc.com
`tfletcher@wc.com
`aperlman@wc.com
`tselby@wc.com
`cmandernach@wc.com
`
`4
`
`
`
`
`
`IPR2018-01020 and IPR2018-01021, Exhibit 1024, Page 4
`
`
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