`
` Entered: November 12, 2020
`
`Trials@uspto.gov
`571.272.7822
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`PFENEX INC.,
`Petitioner,
`
`v.
`
`GLAXOSMITHKLINE BIOLOGICALS SA,
`Patent Owner.
`
`
`
`IPR2019-01028
`Patent No. 9,422,345 B2
`
`
`
`
`Before SHERIDAN K. SNEDDEN, JO-ANNE M. KOKOSKI, and
`RICHARD J. SMITH, Administrative Patent Judges.
`
`SMITH, Administrative Patent Judge.
`
`
`DECISION
`Due to Settlement After Institution of Trial
`35 U.S.C. § 317; 37 C.F.R § 42.74
`
`
`
`
`
`
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`
`
`
`IPR2019-01028
`Patent 9,422,345 B2
`
`
`
`At the request of the parties, the Board authorized the parties to file a
`motion to terminate, settlement agreement, and motion to keep the
`settlement agreement business confidential. Ex. 3005. On October 30,
`2020, the parties filed a Joint Motion to Terminate (Paper 57), and a Joint
`Request to File Settlement Materials as Business Confidential Information
`and to Maintain said Materials Separate from the Public File (Paper 58).
`The parties also filed a Confidential Settlement Agreement. Ex. 2049.
`On November 3, 2020, the Board granted the Joint Request to File
`Settlement Materials as Business Confidential Information and to Maintain
`said Materials Separate from the Public File. Paper 60. The Board also
`denied, without prejudice, the Joint Motion to Terminate, but granted the
`parties leave to file an Amended Joint Motion to Terminate containing a
`certification that there are no other agreements or understandings between
`the parties made in connection with, or in contemplation of, the termination
`of the above-referenced proceeding.1 Id. The Amended Joint Motion to
`Terminate, providing the certification, was filed on November 4, 2020.2
`Paper 61.
`
`
`
`
`1 Paper 60 contains a typographical error at page 3, and should read
`“FURTHER ORDERED that the parties are granted leave to file an
`Amended Joint Motion to Terminate containing a certification that there are
`no other agreements or understandings no later than November 5, 2020.”
`Paper 60, 3.
`2 The certification in the Amended Joint Motion to Terminate refers to
`“Confidential Exhibit 1081.” Paper 61, 2–3. Because there is no Exhibit
`1081, we understand that reference to be a typographical error that was
`meant to state “Confidential Exhibit 2049.”
`2
`
`
`
`IPR2019-01028
`Patent 9,422,345 B2
`
`
`
`
`Generally, the Board expects that a proceeding will terminate after the
`filing of a settlement agreement. Patent Trial and Appeal Board
`Consolidated Trial Practice Guide3 86. An oral hearing was held in the
`above-referenced case on September 9, 2020, but a final written decision has
`not been rendered. Based on the facts in this case, we determine that it is
`appropriate to terminate the above-referenced case without rendering a final
`written decision.
`
`Accordingly, in consideration of the foregoing, it is hereby
`ORDERED that the Amended Joint Motion to Terminate the above-
`referenced case (Paper 61) is GRANTED; and
`FURTHER ORDERED that the inter partes review in IPR2019-01028
`is TERMINATED.
`
`
`
`
`
`
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`
`
`
`
`3 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`
`3
`
`
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`
`
`
`
`IPR2019-01028
`Patent 9,422,345 B2
`
`For PETITIONER:
`Jeffrey Guise
`Lora Green
`Wendy Devine
`Lorelei Westin
`WILSON SONSINI GOODRICH & ROSATI
`jguise@wsgr.com
`lgreen@wsgr.com
`wdevine@wsgr.com
`lwestin@wsgr.com
`
`For PATENT OWNER:
`Charles Lipsey
`Rich Racine
`Joann Neth
`Amanda Murphy
`Trenton Ward
`Yieyie Yang
`FINNNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
`Charles.lipsey@finnegan.com
`Rich.racine@finnegan.com
`Joan.neth@finnegan.com
`Amanda.murphy@finnegan.com
`Trenton.ward@finnegan.com
`Yieyie.yang@finnegan.com
`
`
`4
`
`
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