Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`
`Paper 67
`Entered: April 16, 2021
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MYLAN INSTITUTIONAL LLC and PFIZER INC.,
`Petitioner,
`
`v.
`
`NOVO NORDISK A/S,
`Patent Owner.
`____________
`
`IPR2020-003241
`Patent 8,114,833 B2
`____________
`
`
`
`Before ERICA A. FRANKLIN, JOHN G. NEW, and
`SUSAN L. C. MITCHELL, Administrative Patent Judges.
`
`FRANKLIN, Administrative Patent Judge.
`
`
`
`ORDER
`Granting Patent Owner and Petitioner Mylan Institutional LLC’s Joint
`Motion to Terminate the Proceeding as to Petitioner Mylan
`Institutional LLC and Joint Request to Treat Settlement Documents as
`Business Confidential Information
`35 U.S.C § 317
`
`
`
`1 IPR2020-01252 has been joined with this proceeding.
`
`
`Tel: 571-272-7822
`
`
`
`
`
`Paper 67
`Entered: April 16, 2021
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MYLAN INSTITUTIONAL LLC and PFIZER INC.,
`Petitioner,
`
`v.
`
`NOVO NORDISK A/S,
`Patent Owner.
`____________
`
`IPR2020-003241
`Patent 8,114,833 B2
`____________
`
`
`
`Before ERICA A. FRANKLIN, JOHN G. NEW, and
`SUSAN L. C. MITCHELL, Administrative Patent Judges.
`
`FRANKLIN, Administrative Patent Judge.
`
`
`
`ORDER
`Granting Patent Owner and Petitioner Mylan Institutional LLC’s Joint
`Motion to Terminate the Proceeding as to Petitioner Mylan
`Institutional LLC and Joint Request to Treat Settlement Documents as
`Business Confidential Information
`35 U.S.C § 317
`
`
`
`1 IPR2020-01252 has been joined with this proceeding.
`
`
`
`IPR2020-00324
`Patent 8,114,833 B2
`
`
`On April 7, 2021, with authorization of the Board, Patent Owner and
`Petitioner Mylan Institutional LLC (“Petitioner Mylan”) filed a joint motion
`to terminate the proceeding as to Petitioner Mylan only. Paper 66. Patent
`Owner filed a true copy of their written settlement agreement under seal.
`Ex. 2098. Additionally, citing to 35 U.S.C § 317(b) and 37 C.F.R.
`§ 42.74(c), Patent Owner and Petitioner Mylan filed a joint request that the
`settlement agreement be treated as business confidential information and
`kept separate from the file of US Patent No. 8,114,833 B2 (Ex. 1001,
`“the ’833 patent”). Paper 65.
`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.” See
`also 37 C.F.R. § 42.74(a) (“parties may agree to settle any issue in a
`proceeding”).
`The Decision on Institution for this proceedings was entered on June
`23, 2020. Paper 12. The Decision Granting Petitioner Pfizer Inc.’s Motion
`for Joinder with this proceeding was entered on December 4, 2020.
`Paper 33. On March 26, 2021, the parties presented arguments at an oral
`hearing. Paper 51. In the joint motion, Patent Owner and Petitioner Mylan
`explain that termination of the proceeding as to Petitioner Mylan is
`appropriate because Patent Owner and Petitioner Mylan reached a settlement
`agreement that settles their dispute and all litigation between them that
`involves the ’833 patent. Paper 66, 1–6. Patent Owner and Petitioner Mylan
`assert also that the requested termination is appropriate because the Board
`has not decided the merits of proceeding. Id. at 3. In the joint motion,
`
`2
`
`
`
`IPR2020-00324
`Patent 8,114,833 B2
`
`Patent Owner and Petitioner Mylan note that “Petitioner Pfizer Inc. takes no
`position with respect to this Motion to Terminate.” Id. at 1.
`Although we do not agree with the assertion in the joint motion that
`the Board has not decided the merits of the proceeding as of the date that the
`parties filed their motion for termination, such that the proceeding “shall be
`terminated” as to Petitioner Mylan, see id. at 3, we nevertheless agree to
`such termination based upon the settlement reached by Patent Owner and
`Petitioner Mylan. Additionally, due to the prior joinder of this proceeding
`with IPR2020-01252, Pfizer Inc. remains a petitioner in this proceeding after
`termination as to Petitioner Mylan. Consequently, granting the requested
`termination as to Petitioner Mylan does not terminate this proceeding. As
`such, we will proceed to a final written decision. 35 U.S.C. §§ 317(a) and
`318(a).
`Under 35 U.S.C. § 317(b),
`[a]ny agreement or understanding between the patent owner and
`a petitioner, including any collateral agreements referred to in
`such agreement or understanding, made in connection with, or in
`contemplation of, the termination of an inter partes review under
`this section shall be in writing and a true copy of such agreement
`or understanding shall be filed in the Office before the
`termination of the inter partes review as between the parties.
`
`See also 37 C.F.R. § 42.74(b) (“Any agreement or understanding between
`the parties made in connection with, or in contemplation of, the termination
`of a proceeding shall be in writing and a true copy shall be filed with the
`Board before the termination of the trial.”). As noted above, Patent Owner
`and Petitioner Mylan have filed a settlement agreement relating to these
`proceedings. Ex. 2098. In their joint motion, they state that the settlement
`agreement filed as Exhibit 2098 is a “true and correct copy” and that “[t]here
`
`3
`
`
`
`IPR2020-00324
`Patent 8,114,833 B2
`
`are no collateral agreements.” Paper 66, 1–2. We understand those
`statements to mean that Patent Owner and Petitioner Mylan certify that
`Exhibit 2098 is a true and complete copy of their settlement agreement and
`that there are no other written or oral agreements or understandings between
`them that are made in connection with, or in contemplation of, the
`termination of Petitioner Mylan in the instant proceeding.2 See 35 U.S.C. §
`317(b); 37 C.F.R. § 42.74(b). Based on that understanding, we determine
`that the parties have satisfied section 317(b).
`
`
`
`
`ORDER
`In accordance with the foregoing, it is hereby:
`ORDERED that the joint motion to terminate the proceeding as to
`Petitioner Mylan is granted;
`FURTHER ORDERED that this inter partes review is terminated as
`to Petitioner Mylan only, but is not terminated as to Patent Owner or
`Petitioner Pfizer Inc.; and
`FURTHER ORDERED that the joint request that the settlement
`agreement, Ex. 2098, be treated as business confidential information and
`kept separate from the file of the involved is granted.
`
`
`
`
`
`
`
`2 If this understanding is inaccurate, Patent Owner and Petitioner Mylan
`shall immediately notify the Board in writing.
`4
`
`
`
`IPR2020-00324
`Patent 8,114,833 B2
`
`For PETITIONER MYLAN:
`
`Brandon White
`White-ptab@perkinscoie.com
`
`Lara Dueppen
`Dueppen-ptab@perkinscoie.com
`
`Emily Greb
`Greb-ptab@perkinscoie.com
`
`For PETITIONER PFIZER:
`
`Thomas J. Meloro
`tmeloro@willkie.com
`
`Michael W. Johnson
`Mjohnson1@willkie.com
`
`For PATENT OWNER:
`
`Jeffrey Oelke
`joelke@fenwick.com
`
`Ryan Johnson
`Ryan.johnson@fenwick.com
`
`Laura Moran
`Laura.moran@fenwick.com
`
`5
`
`
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