Trials@uspto.gov
`571.272.7822
`
`
`
`
` Paper 7
`
`
`Entered: December 28, 2021
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`
`
`
`
`
`
`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.
`
`PER CURIAM, Administrative Patent Judge.
`
`
`
`ORDER
`Denying, without Prejudice, Petitioner’s Motion to Dismiss the Petition
`37 C.F.R. §§ 42.5(a), 42.71(a), 42.74(b)
`
`
`
`
`
`
`
`571.272.7822
`
`
`
`
` Paper 7
`
`
`Entered: December 28, 2021
`
`
`
`
`
`
`
`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.
`
`PER CURIAM, Administrative Patent Judge.
`
`
`
`ORDER
`Denying, without Prejudice, Petitioner’s Motion to Dismiss the Petition
`37 C.F.R. §§ 42.5(a), 42.71(a), 42.74(b)
`
`
`
`
`
`
`
`
`PGR2022-00056
`Patent 10,357,567 B1
`With authorization of the Board, Petitioner filed an unopposed motion
`to dismiss the petition. Paper 6 (“Mot.”). This case, involving U.S. Patent
`No. 10, 357, 567 B2 (Ex. 1001, “the ’567 patent”) 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.
`In the Motion, Petitioner reveals that “[t]he parties have recently
`entered into a confidential settlement agreement (‘Settlement Agreement’)
`that will resolve the parties’ instant dispute regarding the challenged ’567
`Patent,” and litigation in district court involving unrelated patents. Mot. 3.
`Petitioner asserts that there are no district court proceedings between the
`parties related to the ’567 patent, or any pending related matters before the
`Board. Id. at 4.
`Petitioner asserts that good cause exists to dismiss the Petition and
`terminate the proceeding because the parties have settled their disputes, a
`preliminary response has not been filed, and a decision on institution has not
`been rendered. Id. at 7. We agree. Petitioner asserts also that dismissing
`the Petition “before any decision on the merits will promote the Board’s
`objective of achieving ‘just, speedy, and inexpensive resolution of every
`proceeding.’” Id. at 8 (quoting 37 C.F.R. § 42.1(b)). We again agree.
`Additionally, however, Petitioner contends that “Petitioner and Patent
`Owner are not required to file a copy of their Settlement Agreement with
`this motion.” Id. at 9. According to Petitioner, because the requirement to
`file such an agreement under 37 C.F.R. § 42.74 (b) applies to the
`“termination of a proceeding” and the “termination of the trial,” it does not
`apply here because the motion to dismiss the petition prior to institution is
`not a motion to terminate a proceeding or trial. See id. at 8–10 (quoting 37
`C.F.R. § 42.74 (b)) (emphasis added by Petitioner). In support of that
`
`1
`
`
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`PGR2022-00056
`Patent 10,357,567 B1
`contention, Petitioner refers to the majority holding in Samsung Elecs. Co. v.
`Telefonaktiebolaget LM Ericsson, IPR2021-00446, Paper 7 (PTAB Aug. 3,
`2021) (“Samsung”). Id. at 9–10.
`Petitioner asserts further that even if viewed as a termination of a
`proceeding, the parties would not be obligated to file a “true and correct
`copy” of their settlement agreement because Section 42.74(b) states that
`such agreements shall be filed “before the termination of the trial.” Id. at
`10 (quoting 37 C.F.R. § 42.74 (b)) (emphasis added by Petitioner).
`According to Petitioner, “[s]ince no ‘trial’ exists for a non-instituted
`proceeding, such termination will never occur, and the parties are therefore
`not obligated to file a copy of the settlement agreement.” Id. (citing 37
`C.F.R. §§ 42.2, 42.74).
`We have considered Petitioner’s arguments, but do not find them
`persuasive. 37 C.F.R. § 42.74 (b) recites, “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.” We recognize that this
`rule has been, in recent times, interpreted so as not to apply to terminations
`based on settlements reached by parties prior to institution. For example, to
`support its position, Petitioner relies on the majority opinion in Samsung,
`which determined that “for preliminary proceedings, the regulations provide
`for ‘dismissal’ of a petition without specifically requiring that parties file
`settlement agreements.” Id. at 4. That majority holding, however, has not
`been designated as precedential, and therefore is not binding on this panel.
`Indeed, the Board currently has no precedential decision or written directive
`from the Director resolving different interpretations regarding the
`applicability of Rule 42.74 (b) to motions to dismiss petitions based on pre-
`
`2
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`PGR2022-00056
`Patent 10,357,567 B1
`institution settlement agreements.
`As acknowledged by the majority opinion in Samsung, “the Board has
`generally required parties to file settlement agreements without regard to the
`stage of the proceeding.” Id. at 4. In the dissent in Samsung, Judge Miriam
`Quinn provides some background for that long-standing practice. See id. at
`7–9. In her dissent, Judge Quinn also provides her rationale as to why she
`views Rule 42.74 (b) as expressly requiring the filing of settlement
`agreements “between the parties made in connection with, or in
`contemplation of, the termination of a proceeding.” Id. at 9 (quoting 37
`C.F.R. § 42.74 (b)). She explains,
`The Board’s rules define “proceeding” as “a trial or preliminary
`proceeding.” 37 C.F.R. § 42.2. The Rules further state that a
`“[p]reliminary [p]roceeding begins with the filing of a petition
`for instituting a trial and ends with a written decision as to
`whether a trial will be instituted.” Id. Therefore, I read Rule
`42.74(b) as requiring parties who settle before the Board issues
`an institution decision (i.e., during a “preliminary proceeding”)
`to file the settlement agreement when seeking termination of that
`proceeding.
`Id. at 9–10. We agree with Judge Quinn.
`Accordingly, we give deference to the long-standing view and
`practice of the Board and require the parties to file, along with the
`authorized motion to dismiss the petition, a true and correct copy of any
`settlement agreements made in connection with, or in contemplation of, the
`termination of this proceeding, which is in the preliminary phase.
`Because Petitioner has not filed its Settlement Agreement, we find
`that it has not complied with Rule 42.74(b). Consequently, Petitioner’s
`Motion to Dismiss the Petition is denied.
`
`3
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`
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`PGR2022-00056
`Patent 10,357,567 B1
`We deny the motion without prejudice, to provide Petitioner an
`opportunity to file a renewed motion to dismiss the petition, along with a
`true and correct copy of the Settlement Agreement.
`
`
`ORDER
`
`Accordingly, it is hereby:
`ORDERED that Petitioner’s Unopposed Motion to Dismiss the
`Petition is denied, without prejudice;
`FURTHER ORDERED that Petitioner may file a renewed motion to
`dismiss the petition and terminate the proceeding prior to institution, which
`must be accompanied by the filing of a true and correct copy of any
`settlement agreement made in connection with, or in contemplation of, the
`termination of this proceeding, pursuant to 37 C.F.R. § 42.74 (b);
`FURTHER ORDERED that Petitioner and/or Patent Owner may
`request that such settlement agreement be treated as business confidential
`information and be kept separate from the files of an involved patent or
`application, pursuant to 37 C.F.R. § 42.74 (c); and
`FURTHER ORDERED that any renewed motion, settlement
`agreement, and request to treat the settlement agreement as business
`confidential information shall be filed by January 31, 2022.
`
`
`
`
`4
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`
`
`PGR2022-00056
`Patent 10,357,567 B1
`
`For 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
`
`
`
`
`5
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`
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