`571.272.7822
`
`
`
`
`
` Paper 10
`
`
`Entered: January 24, 2022
`
`
`
`
`
`
`
`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.
`____________
`
`IPR2022-00056
`Patent 10,357,567
`____________
`
`
`Before ERICA A. FRANKLIN, CHRISTOPHER G. PAULRAJ, and
`ROBERT A. POLLOCK, Administrative Patent Judges.
`
`FRANKLIN, Administrative Patent Judge.
`
`
`
`ORDER
`Granting Petitioner’s Renewed Unopposed Motion to Dismiss the Petition
`and to Terminate the Proceeding; and Granting Joint Request that the
`Settlement Agreement be Treated as Business Confidential and
`Kept Separate
`37 C.F.R. §§ 42.5(a), 42.71(a), 42.74
`
`
`
`
`
`
`
`
`IPR2022-00056
`Patent 10,357,567 B1
`With authorization of the Board, Petitioner filed a renewed unopposed
`motion to dismiss the petition and to terminate this proceeding, Paper 8
`(“Renewed Motion”), along with a copy of their written settlement
`agreement, Exhibit 1011 (“Settlement Agreement”). Additionally, pursuant
`to 35 U.S.C § 317(b) and 37 C.F.R. § 42.74(c), the parties filed a joint
`request that the settlement agreement be treated as business confidential
`information and be kept separate. Paper 9.
`In the Renewed Motion, Petitioner asserts that good cause exists to
`dismiss the Petition and to terminate the proceeding because the proceeding
`is in its preliminary stage and Patent Owner has not yet filed a Preliminary
`Response. Paper 8, 3. Petitioner explains also that the parties have entered
`into a confidential settlement agreement, Ex. 1011, that resolves the parties’
`dispute regarding U.S. Patent No. 10, 357, 567 B2 (Ex. 1001, “the ’567
`patent”), along with other disputes in Dusa Pharm., Inc. v. Biofrontera Inc.
`et al. (Civil Action No. 1:18-cv-10568) involving two patents that are not in
`the same family as the ’567 patent. Paper 8, 2. Petitioner states that the
`Settlement Agreement “has been made in writing, and a true and correct
`copy shall be filed with this Office as business confidential pursuant to 35
`U.S.C § 317(b) and 37 C.F.R. § 42.74(b) (Ex. 1101).” Id. at 3.
`As Petitioner correctly asserts, this case is in the preliminary phase of
`the proceeding, as the Patent Owner has not yet filed a Preliminary
`Response, and the Board has not issued a decision whether to institute trial.
`Under the circumstances, we determine that it is appropriate to grant
`Petitioner’s Renewed Motion.
`
`1
`
`
`
`IPR2022-00056
`Patent 10,357,567 B1
`Additionally, the parties’ joint request for the Settlement Agreement
`to be treated as business confidential information and kept separate from the
`file of the involved patents under the provisions of 35 U.S.C. § 317(b) and
`37 C.F.R. § 42.74(c) is granted.1
`
`
`ORDER
`
`Accordingly, it is hereby:
`ORDERED that Petitioner’s Renewed Unopposed Motion to Dismiss
`the Petition is granted and the Petition is dismissed;
`FURTHER ORDERED that the joint request for the settlement
`agreement to be treated as business confidential information and kept
`separate from the file of the involved patent under the provisions of 35
`U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) is granted; and
`FURTHER ORDERED that the proceeding is terminated.
`
`
`
`
`1 In their joint request, the parties state, “Pursuant to 35 U.S.C. § 317(b) and
`37 C.F.R. § 42.74(c), Petitioner . . . and Patent Owner . . . jointly request to
`file the Settlement Agreement (Ex. 1101) . . . as business confidential
`information, which shall be kept separate from the file of the patent at issue,
`and only made available to Federal Government agencies upon written
`request..[sic]” Paper 9, 2. We note that 35 U.S.C. § 317(b) expressly
`provides that the agreement also “shall be made available . . . to any person
`on a showing of good cause.” Similarly, 37 C.F.R. § 42.74(c) expressly
`provides that, in addition to a Government agency, the settlement “shall” be
`available “[t]o any other person upon written request to the Board to make
`the settlement agreement available, along with the fee specified in § 42.15(d)
`and on a showing of good cause.” Thus, we treat the parties’ omission of
`those provisions under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) as an
`inadvertent error and not as an argument or attempt to limit the provisions of
`that statute and rule. As set forth in this Order, the joint request is granted,
`under the provisions of 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).
`2
`
`
`
`IPR2022-00056
`Patent 10,357,567 B1
`PETITIONER:
`
`Lauren Fornarotto
`MCKOOL SMITH, P.C.,
`lfornarotto@mckoolsmith.com
`
`
`PATENT OWNER:
`
`Walter Renner
`Heather Flanagan
`Andrew Patrick
`FISH & RICHARDSON P.C.
`axf-ptab@fr.com
`flanagan@fr.com
`patrick@fr.com
`
`
`
`
`3
`
`
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