Trials@uspto.gov
`571.272.7822
`
`Paper 25
`Entered: January 14, 2020
`
`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.
`_______________
`
`IPR2018-014031
`Patent 8,399,514 B2
`_______________
`
`Before SHERIDAN K. SNEDDEN, JENNIFER MEYER CHAGNON, and
`JAMIE T. WISZ, Administrative Patent Judges.
`
`SNEDDEN, Administrative Patent Judge.
`
`ORDER
`Settlement as to Sawai USA, Inc. and Sawai Pharmaceutical Co., Ltd.
`35 U.S.C. § 317; 37 C.F.R. § 42.74
`
`1 Case IPR2019-00789 has been joined with this proceeding. See IPR2018-
`01403, Paper 60.
`
`
`571.272.7822
`
`Paper 25
`Entered: January 14, 2020
`
`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.
`_______________
`
`IPR2018-014031
`Patent 8,399,514 B2
`_______________
`
`Before SHERIDAN K. SNEDDEN, JENNIFER MEYER CHAGNON, and
`JAMIE T. WISZ, Administrative Patent Judges.
`
`SNEDDEN, Administrative Patent Judge.
`
`ORDER
`Settlement as to Sawai USA, Inc. and Sawai Pharmaceutical Co., Ltd.
`35 U.S.C. § 317; 37 C.F.R. § 42.74
`
`1 Case IPR2019-00789 has been joined with this proceeding. See IPR2018-
`01403, Paper 60.
`
`
`
`IPR2018-01403
`Patent 8,399,514 B2
`
`INTRODUCTION
`I.
`Petitioners Sawai USA, Inc. and Sawai Pharmaceutical Co., Ltd.
`(collectively, “Sawai”) and Patent Owner Biogen MA Inc. (“Biogen”) have
`requested that the above-identified inter partes review proceeding be
`terminated with respect to Sawai due to a settlement. With our authorization
`provided in the Order dated November 18, 2019 (Paper 90), Sawai and
`Biogen filed a “Joint Motion to Terminate Proceeding as to Petitioner Sawai
`Pursuant to 35 U.S.C. § 317 and 37 C.F.R. § 42.74” (Paper 94 (“Joint
`Motion”)). Along with the Joint Motion, the parties filed a “Settlement and
`License Agreement” (Ex. 1135 (“Settlement Agreement”)), as well as a
`“Joint Motion to Keep Settlement Agreement as Business Confidential
`Information Pursuant to 35 U.S.C. § 317” (Paper 95).
`II.
`DISCUSSION
`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 the patent owner, unless the Office has decided
`the merits of the proceeding before the request for termination is filed.”
`In the Joint Motion, Sawai and Biogen represent that they have
`reached agreement to settle their disputes regarding U.S. Patent No.
`8,399,514 B2 (“the ’514 patent”), they jointly seek termination of this inter
`partes review proceeding with respect to Sawai, and the filed copy of the
`Settlement Agreement is a true and correct copy. Joint Motion 2–3.2 The
`parties also represent that the Settlement Agreement resolves the related
`
`2 The Joint Motion does not include page numbers. Thus, for convenience,
`we refer herein to pages of the Joint Motion numbered in consecutive order,
`beginning with the title page as page 1.
`2
`
`
`
`IPR2018-01403
`Patent 8,399,514 B2
`
`District Court litigation and Patent Office proceedings between Sawai and
`Biogen involving the ’514 patent. Id. at 4–6.
`We instituted a trial on the above-identified proceeding on February 6,
`2019. Paper 12. We instituted and joined Sawai’s petition in IPR2019-
`00789 to this proceeding on September 12, 2019. See Paper 60. We have
`not yet decided the merits of the proceeding, and a final written decision has
`not been entered. Notwithstanding that the proceeding has moved beyond
`the preliminary stage, Sawai and Biogen have shown adequately that the
`termination of the proceeding with respect to Sawai is appropriate. Under
`these circumstances, we determine that good cause exists to terminate the
`proceeding as to Sawai. Mylan Pharmaceuticals Inc. will remain as
`Petitioner in this proceeding.
`Sawai and Biogen also filed a joint motion requesting that the
`Settlement Agreement be treated as business confidential information and be
`kept separate from the file of the ’514 patent. Paper 95. After reviewing the
`Settlement Agreement, 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 as
`business confidential information pursuant to 35 U.S.C. § 317(b) and 37
`C.F.R. § 42.74(c).
`This Order does not constitute a final written decision pursuant to
`35 U.S.C. § 318(a).
`
`ORDER
`III.
`Accordingly, for the reasons discussed above, it is:
`ORDERED that the Joint Motion to Terminate Proceeding is granted,
`and IPR2018-01403 is terminated with respect to Petitioner Sawai;
`
`3
`
`
`
`IPR2018-01403
`Patent 8,399,514 B2
`
`FURTHER ORDERED that Mylan Pharmaceuticals Inc. will remain
`as Petitioner in this proceeding; and
`FURTHER ORDERED that the Joint Motion to Keep Settlement
`Agreement as Business Confidential Information is granted, and the
`Settlement Agreement shall be kept separate from the file of U.S. Patent No.
`8,399,514 B2, 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).
`
`4
`
`
`
`IPR2018-01403
`Patent 8,399,514 B2
`
`PETITIONER:
`Brandon White
`white-ptab@perkinscoie.com
`
`Christopher Ferenc
`christopher.ferenc@kattenlaw.com
`
`David Anstaett
`danstaett@perkinscoie.com
`
`Courtney Prochnow
`prochnow-ptab@perkinscoie.com
`
`Maria Stubbings
`mstubbings@perkinscoie.com
`
`Shannon Bloodworth
`sbloodworth@perkinscoie.com
`
`Emily Greb
`greb-ptab@perkinscoie.com
`
`PATENT OWNER:
`Barbara McCurdy
`barbara.mccurdy@finnegan.com
`
`Erin Sommers
`erin.sommers@finnegan.com
`
`Pier DeRoo
`pier.deroo@finnegan.com
`
`Mark Feldstein
`mark.feldstein@finnegan.com
`
`Cora R. Holt
`cora.holt@finnegan.com
`
`5
`
`
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