`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`__________________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`BIOFRONTERA INCORPORATED,
`
`BIOFRONTERA BIOSCIENCE GMBH,
`
`BIOFRONTERA PHARMA GMBH,
`
`AND
`
`BIOFRONTERA AG
`
`Petitioner
`
`v.
`
`DUSA PHARMACEUTICALS, INC.
`
`Patent Owner
`__________________
`
`
`Inter Partes Review No. IPR2022-00056
`U.S. Patent No. 10,357,567
`
`
`
`
`
`
`
`
`
`
`
`
`RENEWED UNOPPOSED MOTION TO DISMISS
`PETITION FOR INTER PARTES REVIEW
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313–1450
`
`
`
`
`
`I.
`
`INTRODUCTION
`
`10,357,567
`IPR2022-00056
`
`
`On December 28, 2021, the Board authorized Petitioner to file a renewed
`
`motion to dismiss the present petition for inter partes review together with a true
`
`and correct copy of any settlement agreement, and thereby terminate IPR2022-
`
`00056 directed to U.S. Patent No. 10,357,567 (“the ’567 Patent”). Paper No. 7 at 4.
`
`Petitioner and Patent Owner have conferred via email, and Patent Owner does not
`
`oppose the relief requested in this motion. Petitioner now so moves and respectfully
`
`requests that the Board dismiss the present petition and terminate IPR2022-00056
`
`consistent with Board’s precedent allowing petitioners to withdraw IPR petitions
`
`pre-institution. This proceeding is in its preliminary phase, Patent Owner has not yet
`
`filed a Preliminary Response, and the Board has not yet reached the merits by issuing
`
`a decision on institution.
`
`II. BACKGROUND AND RELATED IPR PROCEEDINGS
`
`The present petition was filed less than three months ago on October 19, 2021.
`
`The parties have entered into a confidential settlement agreement (“Settlement
`
`Agreement”) that will resolve the parties’ instant dispute regarding the challenged
`
`’567 Patent, as well as other disputes in the District of Massachusetts in a lawsuit
`
`originally captioned as Dusa Pharmaceuticals, Inc. v. Biofrontera Inc. et al. (Civil
`
`Action No. 1:18-cv-10568) involving U.S. Patent No. 9,723,991 (“the ’991 Patent”)
`
`and U.S. Patent No. 8,216,289 (“the ’289 Patent”), neither of which is in the same
`
`2
`
`
`
`10,357,567
`IPR2022-00056
`
`family as the ’567 Patent. This Settlement Agreement has been made in writing, and
`
`a true and correct copy shall be filed with this Office as business confidential
`
`information pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b) (Ex. 1101).
`
`There are no other agreements, oral or written, between the parties made in
`
`connection with, or in contemplation of, the termination of this proceeding. Pursuant
`
`to the terms of the Settlement Agreement, the parties have filed a Joint Notice of
`
`Settlement in the aforementioned district court case, and the parties’ disputes have
`
`been dismissed by the court.
`
`Further, pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), Patent
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`Owner and Petitioner are concurrently filing a Joint Request That Settlement
`
`Agreement Be Treated as Business Confidential Information and Be Kept Separate,
`
`which asks the Board to treat the Settlement Agreement as business confidential
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`information, and to keep it separate from the files of this proceeding and the files of
`
`the ’567 Patent.
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`III. ARGUMENT
`
`Good cause exists to dismiss the present petition and terminate IPR2022-
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`00056. The proceeding is in its preliminary stage and Patent Owner has not yet filed
`
`a Preliminary Response. “The Board may . . . dismiss any petition.” 37 C.F.R.
`
`42.71(a); see also 37 C.F.R. § 42.72 (The Board “may terminate a trial without
`
`rendering a final written decision, where appropriate.”). Further, the rules governing
`
`3
`
`
`
`10,357,567
`IPR2022-00056
`
`IPR proceedings “shall be construed to secure the just, speedy, and inexpensive
`
`resolution of every proceeding.” Id. § 42.1(b). In determining whether a termination
`
`request is “appropriate,” the Board primarily examines the stage and nature of the
`
`proceedings. See, e.g., Samsung Elecs. Co. v. NVIDIA Corp., IPR2015-01270, Paper
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`12 at 3 (PTAB Dec. 9, 2015). Here, dismissal will preserve both Board and party
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`resources, particularly in view of the early stage of the proceeding.
`
`The Board has precedent for allowing petitioners to withdraw IPR petitions
`
`pre-institution when proceedings are in a similar posture. See, e.g., Ericsson Inc. v.
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`Electronics and Telecommunications Research Institute, IPR2020-00241, Paper 13
`
`(PTAB March 9, 2020); Intel Corp. v. Tela Innovations, Inc., IPR2019-01221, Paper
`
`21 (PTAB Jan. 13, 2020); Huawei Technologies Co. Ltd v. Harris Global
`
`Communications, Inc., IPR2019-01512, Paper 8 (PTAB Jan. 10, 2020); Pfizer, Inc.,
`
`v. Biogen, Inc., IPR2018-00231, Paper No. 11 (PTAB June 6, 2018); Darfon
`
`Electronics Corp. v. Lite-On Technology Corp., IPR2018-01797, Paper No. 8
`
`(PTAB Jan. 9, 2019); Turner Sports Interactive, Inc. v. Tagi Ventures, LLC,
`
`IPR2017-01010, Paper No. 7 (PTAB July 31, 2017). Moreover, withdrawal of the
`
`present petition does not prejudice the Patent Owner, who does not oppose the filing
`
`of this motion.
`
`4
`
`
`
`IV. CONCLUSION
`
`10,357,567
`IPR2022-00056
`
`
`For the reasons set forth herein, Petitioner Biofrontera respectfully requests
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`that the Board grant the Renewed Unopposed Motion to Dismiss Petition for Inter
`
`Partes Review in Case Number IPR2022-00056 and dismiss the proceeding in its
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`entirety.
`
`
`
`
`
`
`
`5
`
`
`
`10,357,567
`IPR2022-00056
`
`
`Respectfully submitted,
`
`Dated: January 18, 2022
`
`By: /Lauren L. Fornarotto/
`
`
`
`Lauren L. Fornarotto, Reg. No. 76,470
`
`6
`
`
`
`CERTIFICATE OF SERVICE
`
`I certify that on January 18, 2022, I will cause a copy of the foregoing
`
`10,357,567
`IPR2022-00056
`
`
`document, including any exhibits referred to therein, to be served via electronic mail,
`
`as previously consented to by Patent Owner, upon the following:
`
`W. Karl Renner
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`Email: IPR46697-0005IP1@fr.com
`
`Heather L. Flanagan
`Andrew B. Patrick
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`PTABInbound@fr.com
`axf-ptab@fr.com
`patrick@fr.com
`flanagan@fr.com
`
`Dated: January 18, 2022
`
`
`
`By: /Lauren L. Fornarotto/
`Lauren L. Fornarotto
`Reg. No. 76,470
`
`
`
`
`
`7
`
`
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