`571-272-7822
`
`
`
`Paper 14
`Date: September 8, 2022
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`FRESENIUS KABI USA, LLC,
`Petitioner,
`v.
`NOVO NORDISK A/S,
`Patent Owner.
`
`IPR2022-00657
`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 Prior to Institution; and
`Granting-in-Part 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
`
`
`
`
`
`
`
`
`
`IPR2022-00657
`Patent 8,114,833 B2
`With authorization from the Board, the parties filed a joint motion to
`terminate this proceeding, Paper 11 (“Joint Motion”), along with a copy of
`their written settlement agreements, Exhibits 2007 and 2008 (collectively
`referred to as “Settlement Agreements”). 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 12.
`In the Joint Motion, the parties assert that termination is appropriate
`because the proceeding is in its preliminary stage and a decision on
`institution has not been entered. Paper 11, 3. The parties explain also that
`they have entered into confidential settlement agreements, Ex. 2007 and
`Ex. 2008, that resolve the parties’ dispute regarding U.S. Patent No.
`8,114,833 B2 (Ex. 1001) Paper 11, 3. The parties state that the Settlement
`Agreements “have been made in writing, and true and correct copies will be
`concurrently filed with this Office as business confidential pursuant to 35
`U.S.C § 317(b) and 37 C.F.R. § 42.74(b) as Exhibits 2007 and 2008.” Id. at
`1–2. The parties confirm that there are no collateral agreements. Id. at 2.
`As the parties correctly assert, this case is in the preliminary phase of
`the proceeding, and the Board has not issued a decision whether to institute
`trial. As noted, the parties have filed the Settlement Agreements. Under the
`circumstances, we determine that it is appropriate to grant the Joint Motion
`to Terminate.
`
`2
`
`
`
`IPR2022-00657
`Patent 8,114,833 B2
`Additionally, the parties’ joint request for the Settlement Agreements
`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 with respect to those provisions.
`We note that the parties additionally request “that the Board order
`that, in the event a person or entity makes a written request, as stated in 37
`C.F.R. § 42.74(c)(1)-(2), for access to the Settlement Agreements, any such
`written request be served upon Petitioner and Patent Owner on the day the
`written request is provided to the Board.” Paper 12, 1. That request is
`denied. Under 35 U.S.C. § 317(b), settlement agreements “shall be made
`available only to Federal Government agencies on written request, or to any
`person on a showing of good cause.” The provision under 37 C.F.R.
`§ 42.74(c) reads similarly. Here, the parties are essentially asking us to
`include additional requirements to those provisions. Further, the parties’
`request would require us to issue an order for the conduct of Government
`agencies or individuals seeking access to the settlement agreements who are
`not parties to this proceeding or subject to our orders. As we find those
`aspects of the parties’ request to be inappropriate, it is denied.
`ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that Joint Motion to Terminate the Proceeding is granted;
`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-in-part; and
`FURTHER ORDERED that the proceeding is terminated.
`
`
`
`3
`
`
`
`IPR2022-00657
`Patent 8,114,833 B2
`For PETITIONER:
`
`Leinnea Cipriano
`GOODWIN PROCTER LLP
`lcipriano@goodwinlaw.com
`
`
`For PATENT OWNER:
`
`Jeffrey Oelke
`Laura T. Moran
`Ryan P. Johnson
`FENWICK & WEST LLP
`joelke@fenwick.com
`laura.moran@fenwick.com
`ryan.johnson@fenwick.com
`
`
`
`4
`
`
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