`Tel: 571-272-7822
`
`Paper 9
`Entered: September 17, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`CIPLA LTD.,
`Petitioner,
`
`v.
`
`ALCON RESEARCH, LTD.,
`Patent Owner.
`____________
`
`Case IPR2018-01020 (Patent 8,791,154 B2)
`Case IPR2018-01021 (Patent 9,533,053 B2)1
`____________
`
`Before GRACE KARAFFA OBERMANN, CHRISTOPHER M. KAISER,
`and CHRISTOPHER G. PAULRAJ, Administrative Patent Judges.
`
`KAISER, Administrative Patent Judge.
`
`ORDER
`Termination of the Proceedings
`35 U.S.C. § 317(a) and 37 C.F.R. § 42.72
`
`1 This Order addresses issues that are the same in all identified cases. We
`exercise our discretion to issue one Order to be filed in each case. The
`parties, however, are not authorized to use this style heading in subsequent
`papers.
`
`Novartis AG Exhibit 2010
`Ayla Pharma LLC v. Novartis AG
`IPR2020-00295
`Page 1
`
`
`
`Case IPR2018-01020 (Patent 8,791,154 B2)
`Case IPR2018-01021 (Patent 9,533,053 B2)
`
`On September 14, 2018, the parties filed Joint Motions to Terminate
`these two proceedings pursuant to 35 U.S.C. § 317(a). Paper 10.2 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 a Settlement and License Agreement
`in each proceeding. Ex. 1043. The Agreements were accompanied by joint
`requests to treat the Agreement as business confidential information, to be
`kept separate from the publicly available patent files. Paper 9.
`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 these
`cases, Petitioner has filed its petitions, and Patent Owner has filed its
`mandatory notices, but there have been no preliminary responses, and we
`have not yet decided whether to institute trial. Paper 1; Paper 7.
`Under 37 C.F.R. § 42.72, “[t]he Board may terminate a [proceeding]
`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 Motions to Terminate and the Agreements, we determine that it is
`appropriate to terminate each of these proceedings without instituting trial or
`rendering a final written decision. Therefore, the Joint Motions to Terminate
`are GRANTED.
`
`2 We cite to the papers and exhibits filed in IPR2018-01020. Similar filings
`exist in IPR2018-01021.
`
`2
`
`Novartis AG Exhibit 2010
`Ayla Pharma LLC v. Novartis AG
`IPR2020-00295
`Page 2
`
`
`
`Case IPR2018-01020 (Patent 8,791,154 B2)
`Case IPR2018-01021 (Patent 9,533,053 B2)
`
`Accordingly, it is
`ORDERED that the Joint Motions to Terminate are GRANTED, and
`IPR2018-01020 and IPR2018-01021 are hereby TERMINATED; and
`FURTHER ORDERED that the Joint Requests to File Settlement
`Agreements as Business Confidential Information are GRANTED, and the
`Settlement and License Agreements will be kept separate from the patent
`files.
`
`PETITIONER:
`Jitendra Malik, Ph.D.
`Brian Sodikoff
`Alissa M. Pacchioli
`KATTEN MUCHIN ROSENMAN LLP
`jitty.malik@kattenlaw.com
`brian.sodikoff@kattenlaw.com
`alissa.pacchioli@kattenlaw.com
`
`PATENT OWNER:
`
`Christopher A. Suarez
`David M. Krinsky
`WILLIAMS & CONNOLLY LLP
`csuarez@wc.com
`dkrinsky@wc.com
`
`Peter J. Waibel
`NOVARTIS PHARMACUTICAL CORP.
`Peter.waibel@novartis.com
`
`3
`
`Novartis AG Exhibit 2010
`Ayla Pharma LLC v. Novartis AG
`IPR2020-00295
`Page 3
`
`
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