`Tel: 571-272-7822
`
`
`
`
`Paper: 30
`Date: May 23, 2023
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`MILTENYI BIOMEDICINE GmbH and MILTENYI BIOTEC INC,
`Petitioner,
`
`v.
`
`THE TRUSTEES OF THE UNIVERSITY OF PENNSYLVANIA,
`Patent Owner.
`_______________
`
`IPR2022-00855
`Patent 9,540,445 B2
`_______________
`
`Before ULRIKE W. JENKS, SUSAN L. C. MITCHELL, and
`ROBERT A. POLLOCK, Administrative Patent Judges.
`
`POLLOCK, Administrative Patent Judge.
`
`
`
`TERMINATION
`Due to Settlement After Institution of Trial and
`Granting-in-part and Denying-in-part Joint Motion to Keep
`Settlement Agreement Separate and Confidential
`35 U.S.C. § 317; 37 C.F.R. §§ 42.72, 42.74
`
`
`
`
`
`
`
`
`IPR2022-00855
`Patent 9,540,445 B2
`
`
`INTRODUCTION
`I.
`On May 16, 2023, and with our authorization (Ex. 3003), Petitioner
`and Patent Owner (collectively, “the Parties”) filed a joint motion to
`terminate the above-captioned inter partes review proceeding. Paper 28
`(“Joint Motion”). Along with the Joint Motion, the Parties filed a copy of a
`settlement and license agreement (Ex. 2083, “Settlement Agreement”), as
`well as a joint motion requesting that the Settlement Agreement be treated as
`business confidential information and kept it separate from the file of U.S.
`Patent No. 9,540,445 B2 (“the ’445 patent”). Paper 29 (“Joint Request”).
`
`II. DISCUSSION
`In the Joint Motion, the Parties represent that the Settlement
`Agreement resolves their underlying dispute involving the ’445 patent. Joint
`Motion 8. The Parties also represent that they have filed a true copy of the
`Settlement Agreement made in connection with, or in contemplation of, the
`termination of the above-captioned proceeding. Id. at 8–9. The Parties
`“certify that there are no other agreements, oral or written, between the
`Parties made in connection with, or in contemplation of, the termination of
`the proceeding.” Id. at 11.
`We instituted trial for the above-captioned inter partes review
`proceeding on October 11, 2022. See Paper 10. We have not yet decided
`the merits of the proceeding, and a final written decision has not been
`entered. Notwithstanding that the proceeding has moved beyond the
`preliminary stage, the Parties have shown adequately that the termination of
`the proceeding is appropriate. Under these circumstances, we determine that
`good cause exists to terminate the proceeding with respect to the Parties.
`
`2
`
`
`
`IPR2022-00855
`Patent 9,540,445 B2
`
`
`The Parties also request that the Settlement Agreement be treated as
`business confidential information and kept separate from the file of the ’445
`patent. Joint Request 8. After reviewing the Settlement Agreement, we find
`that it contains confidential business information regarding the terms of
`settlement. Thus, good cause exists to treat the Settlement Agreement as
`business confidential information pursuant to 35 U.S.C. § 317(b) and
`37 C.F.R. § 42.74(c). Accordingly, we grant this portion of the Joint
`Request.
`However, we deny the portion of the Joint Request specifying that,
`should there be filed a request for access to the Settlement Agreement, “the
`Parties be given the opportunity to comment on the request before a decision
`is made with respect to whether it should be granted or denied.” Joint
`Request 8. The Parties’ request is not supported by stature nor rule.
`This Order does not constitute a final written decision pursuant to
`35 U.S.C. § 318(a).
`
`III. ORDER
`
`Accordingly, it is:
`ORDERED that the Joint Motion to terminate (Paper 28) is granted,
`and IPR2022-00855 is terminated with respect to Petitioner and Patent
`Owner; and
`FURTHER ORDERED that the Joint Request to treat the Settlement
`Agreement as business confidential information under 35 U.S.C. § 317(b)
`(Paper 29) is granted-in-part and denied-in-part, in the manner noted above;
`and
`
`FURTHER ORDERED that the Settlement Agreement (Ex. 2083)
`shall be kept separate from the file of U.S. Patent No. 9,540,445 B2, and
`
`3
`
`
`
`IPR2022-00855
`Patent 9,540,445 B2
`
`made available only to Federal Government agencies on written request, or
`to any person on a showing of good cause, pursuant to 37 C.F.R. § 42.74(c).
`
`4
`
`
`
`IPR2022-00855
`Patent 9,540,445 B2
`
`PETITIONER:
`
`Yite John Lu
`Gary Frischling
`ORRICK, HERRINGTON & SUTCLIFFE LLP
`ptabdocketl2y7@orrick.com
`ptabdocketg2f1@orrick.com
`
`PATENT OWNER:
`
`Brian Landry
`Kathryn Doyle
`Alireza Behrooz
`SAUL EWING ARNSTEIN & LEHR LLP
`blandry@saul.com
`kathryn.doyle@saul.com
`alireza.behrooz@saul.com
`
`Thomas Fletcher
`Jessamyn Berniker
`David Krinsky
`WILLIAMS & CONNOLLY LLP
`tfletcher@wc.com
`jberniker@wc.com
`dkrinsky@wc.com
`
`
`
`
`
`
`5
`
`
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