Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`
`Paper 80
`Entered: June 21, 2021
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`PFIZER INC.,1
`Petitioner,
`
`v.
`
`NOVO NORDISK A/S,
`Patent Owner.
`____________
`
`IPR2020-003242
`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 Joint Motion to Terminate the Proceeding and Joint Request to
`Treat Settlement Documents as Business Confidential Information
`35 U.S.C § 317
`
`
`1 This proceeding has been terminated as to the original petitioner, Mylan
`Institutional LLC. Paper 67.
`2 IPR2020-01252 has been joined with this proceeding. Paper 33.
`
`
`Tel: 571-272-7822
`
`
`
`
`
`Paper 80
`Entered: June 21, 2021
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`PFIZER INC.,1
`Petitioner,
`
`v.
`
`NOVO NORDISK A/S,
`Patent Owner.
`____________
`
`IPR2020-003242
`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 Joint Motion to Terminate the Proceeding and Joint Request to
`Treat Settlement Documents as Business Confidential Information
`35 U.S.C § 317
`
`
`1 This proceeding has been terminated as to the original petitioner, Mylan
`Institutional LLC. Paper 67.
`2 IPR2020-01252 has been joined with this proceeding. Paper 33.
`
`
`
`IPR2020-00324
`Patent 8,114,833 B2
`
`
`With authorization of the Board, Novo Nordisk A/S (“Patent Owner”)
`and Pfizer Inc. (“Petitioner Pfizer”) filed a joint motion to terminate the
`proceeding. Paper 77. Patent Owner filed a true copy of their written
`settlement agreement under seal. Ex. 2102. Additionally, with authorization
`from the Board, the parties 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 78.
`The Decision on Institution for this proceeding was entered on June
`23, 2020. Paper 12. The Decision on Institution of IPR2020-01252 and
`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. Thereafter, with
`authorization from the Board, Patent Owner and Petitioner Mylan filed a
`joint motion to terminate the proceeding as to Petitioner Mylan because they
`reached an agreement that settled their dispute and all litigation between
`them involving the ’833 patent. Paper 66, 1–6. As noted in footnote 1,
`above, we granted the Termination as to Petitioner Mylan on April 16, 2021.
`Paper 67. On that same date, Petitioner Pfizer and Patent Owner requested
`authorization to file a motion to terminate the proceeding. We now consider
`that motion, as well as their joint request to treat their settlement agreement
`as business confidential information and to keep it separate from the file of
`the ’833 patent.
`
`2
`
`
`
`IPR2020-00324
`Patent 8,114,833 B2
`
`
` The parties assert that their requested termination is appropriate
`because they have settled their dispute concerning the ’833 patent and have
`agreed to move to terminate this proceeding in full. Mot. 2 (citing
`Ex. 2102). The parties explain that there is no pending district court
`litigation between them that involves the ’833 patent. Id. at 3. Additionally,
`the parties confirm that the district court litigation between Patent Owner
`and Mylan involving the ’833 patent, i.e., Novo Nordisk Inc. et al. v. Mylan
`Institutional LLC, C.A. No. 19-cv-01551 (D. Del.), was resolved by a
`settlement between those parties and dismissed by the court on April 6,
`2021. Id. Further, the parties correctly note that the Board has not issued a
`final written decision in this proceeding. Id.
`Having considered the circumstances involved in this proceeding,
`including the foregoing assertions of the parties, we determine that a
`termination of the proceeding is appropriate.
`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, the parties filed
`a settlement agreement relating to these proceedings. In their joint motion,
`they certify that “Exhibit 2102 is a true and complete copy of the Settlement
`
`3
`
`
`
`IPR2020-00324
`Patent 8,114,833 B2
`
`Agreement, and there are no other written or oral agreements or
`understandings between Pfizer and Novo Nordisk that are made in
`connection with, or in contemplation of, the termination of the instant
`proceeding.” Mot. 2. 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 is
`granted;
`FURTHER ORDERED that this inter partes review is terminated;
`
`and
`
`FURTHER ORDERED that the joint request that the settlement
`agreement, Ex. 2102, be treated as business confidential information and
`kept separate from the file of the ’833 patent is granted.
`
`
`
`
`
`
`4
`
`
`
`IPR2020-00324
`Patent 8,114,833 B2
`
`For PETITIONER PFIZER INC:
`
`Thomas J. Meloro
`tmeloro@willkie.com
`
`Michael W. Johnson
`mjohnson1@willkie.com
`
`For PATENT OWNER NOVO NORDISK A/S:
`
`Jeffrey Oelke
`joelke@fenwick.com
`
`Ryan Johnson
`Ryan.johnson@fenwick.com
`
`Laura Moran
`Laura.moran@fenwick.com
`
`5
`
`
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