`Tel: 571-272-7822
`
`
`
`
`Paper 90
`Entered: November 18, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`MYLAN PHARMACEUTICALS INC.,
`SAWAI USA, INC., AND
`SAWAI PHARMACEUTICAL CO., LTD.,
`Petitioner,
`
`v.
`
`BIOGEN MA INC.,
`Patent Owner.
`_______________
`
`Case IPR2018-014031
`Patent 8,399,514 B2
`_______________
`
`
`Before SHERIDAN K. SNEDDEN, JENNIFER MEYER CHAGNON, and
`JACQUELINE T. HARLOW, Administrative Patent Judges.
`
`SNEDDEN, Administrative Patent Judge.
`
`
`
`
`ORDER
`Authorizing the Filing of a Joint Motion to Terminate Petitioner Sawai
`35 U.S.C. § 317; 37 C.F.R. §§ 42.20(b), 42.72
`
`
`1 Case IPR2019-00789 has been joined with this proceeding.
`
`
`
`
`
`IPR2018-01403
`Patent 8,399,514 B2
`
`
`In two email correspondence sent to the Board on November 13,
`2019, Petitioners, Sawai USA, Inc. and Sawai Pharmaceuticals Co., Ltd.
`(together, “Sawai”) and Patent Owner, Biogen MA Inc. (“Biogen”),
`indicated that Sawai and Biogen have settled their disputes regarding U.S.
`Patent No. 8,399,514. Sawai and Biogen additionally requested a
`teleconference to seek permission to file a joint motion to terminate this
`proceeding. Specifically, as indicated in the email, Sawai and Biogen jointly
`requests permission to file: (i) a Joint Motion To Terminate Sawai from
`IPR2018-01403; and (ii) a Joint Motion To Keep The Settlement Agreement
`As Confidential Pursuant to 35 U.S.C. § 317.
`Upon consideration thereof, the parties are authorized to file a joint
`motion to terminate (as a Paper). 35 U.S.C. § 317(a). The joint motion must
`(1) include a brief explanation as to why termination is appropriate;
`(2) identify all parties in any related litigation involving the patents at issue;
`(3) identify any related proceedings currently before the Office; and
`(4) discuss specifically the current status of each such related litigation or
`proceeding with respect to each party to the litigation or proceeding.
`The joint motion to terminate also must include a true copy of any
`settlement agreement or understanding (as an Exhibit) and include a
`statement certifying that there are no collateral agreements or understandings
`made in connection with, or in contemplation of, the termination of the inter
`partes review. See 35 U.S.C. § 317(b); 37 C.F.R. § 42.74(b). A redacted
`version will not be accepted as a true copy of the settlement agreement.
`Attention of the parties is directed to FAQ G2 on the Board’s website page
`at https://www.uspto.gov/patents-application-process/patent-trial-and-
`
`2
`
`
`
`IPR2018-01403
`Patent 8,399,514 B2
`
`appeal-board/ptab-e2e-frequently-asked-questions# for instructions on how
`to file a settlement agreement as confidential.
`The parties are authorized to file a joint request to file settlement
`agreement as business confidential information pursuant to 35 U.S.C.
`§ 317(b) in this proceeding. Any joint request to file the settlement
`agreement as business confidential information must be filed as a separate
`paper contemporaneously with the joint motion to terminate. See 35 U.S.C.
`§ 317(b); 37 C.F.R. § 42.74(c).
`In consideration of the foregoing, it is
`ORDERED that the parties are authorized to file, by no later than
`December 2, 2019, (1) a joint motion to terminate Petitioner Sawai (as a
`Paper), including a true copy of any settlement agreement (as an Exhibit),
`and (2) a joint request to file settlement agreement as business confidential
`information pursuant to 35 U.S.C. § 317(b) (as a separate Paper) in this
`proceeding.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`3
`
`
`
`IPR2018-01403
`Patent 8,399,514 B2
`
`PETITIONER:
`
`Brandon M. White
`Emily J. Greb
`David L. Anstaett
`Courtney M. Prochnow
`Maria A. Stubbings
`Shannon M. Bloodworth
`PERKINS COIE LLP
`white-ptab@perkinscoie.com
`greb-ptab@perkinscoie.com
`danstaett@perkinscoie.com
`porchnow-ptab@perkinscoie.com
`mstubbings@perkinscoie.com
`sbloodworth@perkinscoie.com
`
`PATENT OWNER:
`
`Barbara C. McCurdy
`Mark J. Feldstein
`Erin M. Sommers
`Pier D. DeRoo
`Cora R. Holt
`FINNEGAN, HENDERSON, FARABOW,
`GARRETT & DUNNER, LLP
`barbara.mccurdy@finnegan.com
`mark.feldstein@finnegan.com
`erin.sommers@finnegan.com
`pier.deroo@finnegan.com
`cora.holt@finnegan.com
`
`
`
`
`
`
`
`
`4
`
`
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