`571-272-7822
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` Paper No. 11
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` Entered: October 24, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`PAR PHARMACEUTICAL, INC.,
`Petitioners,
`
`v.
`
`HORIZON THERAPEUTICS, LLC,
`Patent Owner.
`____________
`
`Case IPR2018-01550
`U.S. Patent 9,561,197 B2
`____________
`
`Before 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
`
`
`On September 28, 2018, Petitioner Par Pharmaceutical, Inc. and Patent
`Owner Horizon Therapeutics, LLC (“the parties”) filed a Joint Motion to
`Terminate in the instant proceeding. See Paper 8 (“Joint Mot.”). According to the
`
`
`
`Case IPR2018-01550
`U.S. Patent 9,561,197 B2
`
`parties, the settlement agreement resolves all currently pending Patent Office and
`District Court proceedings between the parties to this proceeding involving U.S.
`Patent 9,561,197 B2. Joint Mot. 2. The parties represent that they have reached an
`agreement jointly seeking termination of these inter partes review proceedings. Id.
`at 1–2. The parties also represent that they have agreed to dismiss related district
`court litigation, Horizon Therapeutics, LLC v. Par Pharmaceutical, Inc., Civil
`Action No. 1:17-cv-05901- MAH-KM (D.N.J. filed Aug. 08, 2017). Id.
`We have not yet instituted a trial in the instant proceeding. Briefing is, thus,
`not yet complete in the instant proceeding and a Final Written Decision has not yet
`been finalized. Accordingly, we grant the parties’ request and terminate the
`proceeding. See 35 U.S.C. § 317(a).
` Along with the Joint Motions, the parties filed copies of a Confidential
`Settlement and License Agreement (Exhibit 2001, “Settlement Agreement”) in the
`instant proceeding and request that it be kept separate and confidential because of
`the inclusion of highly sensitive business confidential information that would
`substantially harm their business interests if publicly disclosed. See Paper 9 (“Joint
`Request”). We grant the request, pursuant to 35 U.S.C. § 317(b) and 37 C.F.R.
`§ 42.74(c).
`The Parties further request that “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.” Joint Request 1.
`We have no 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 such requests.
`
`
`
`
`2
`
`
`
`Case IPR2018-01550
`U.S. Patent 9,561,197 B2
`
`
`Accordingly, for the reasons discussed above:
`It is ORDERED that the Joint Motion to Terminate (Paper 8) is granted, and
`IPR2018-01550 is terminated with respect to Petitioner and Patent Owner pursuant
`to 37 C.F.R. § 42.72;
`It is FURTHER ORDERED that the parties’ joint request to treat the
`settlement agreement as business confidential information (Paper 9) is granted, and
`the Settlement Agreement (Exhibit 2001) shall be kept separate from the files of
`the involved patents, pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c);
`It is FURTHER ORDERED that the parties’ request for notice of a request
`to access the settlement agreement is DENIED.
`
`
`
`
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`
`3
`
`
`
`Case IPR2018-01550
`U.S. Patent 9,561,197 B2
`
`Petitioner:
`David H. Silverstein
`Aziz Burgy
`Dan Feng Mei
`Christopher M. Gallo
`AXINN, VELTROP & HARKRIDER LLP
`dsilverstein@axinn.com
`aburgy@axinn.com
`dmei@axinn.com
`cgallo@axinn.com
`
`Patent Owner:
`
`Robert Green
`Caryn Borg-Breen
`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
`
`
`
`
`4
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`
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