`571-272-7822
`
`
`
` Paper 54
`Entered: July 11, 2014
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`APOTEX CORP.,
`Petitioner,
`
`
`
`
`
`v.
`
`ALCON RESEARCH, LTD,
`Patent Owner.
`____________
`
`Cases IPR2013-00428 (Patent 8,268,299 B2)
`IPR2013-00429 (Patent 8,323,630 B2)
`IPR2013-00430 (Patent 8,388,941 B2) 1
`
`____________
`
`Before LORA M. GREEN and FRANCISCO C. PRATS,
`Administrative Patent Judges.
`
`GREEN, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceedings
`37 C.F.R. § 42.5
`
`
`1 This order addresses the consolidated conference call held on July 10,
`2014, for all three cases. We exercise our discretion to issue one order to be
`filed in each case. The parties, however, are not authorized to use this style
`heading in subsequent papers.
`
`
`
`Cases IPR2013-00428 (Patent 8,268,299 B2)
`IPR2013-00429 (Patent 8,323,630 B2)
`IPR2013-00430 (Patent 8,388,941 B2)
`
`
`A conference call was held on Thursday, July 10, 2014, in the above
`proceedings between Eldora Ellison, counsel for Petitioner; Adam Perlman,
`counsel for Patent Owner; and Judges Green and Prats. The parties sought
`authorization to file a joint motion to terminate the proceedings on the basis
`that the parties have reached a settlement.
`Generally, the Board expects that a proceeding will terminate after the
`filing of a settlement agreement. See, e.g., Office Patent Trial Practice
`Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). The rule governing
`settlement indicates that any agreement between the parties made in
`connection with, or in contemplation of, the termination of a proceeding
`shall be in writing and filed with the Board. 37 C.F.R. § 42.74.
`During the conference call, the Board authorized the filing of a joint
`motion to terminate the proceeding and provided guidance as to the
`procedure for filing the parties’ settlement agreement and having the
`settlement agreement treated as business confidential information under 37
`C.F.R. § 42.74(c). The joint motion must (1) include a brief explanation as
`to why termination is appropriate; (2) identify all parties in any related
`litigation involving the patents at issue; (3) identify any related proceedings
`currently before the Office, and (4) discuss specifically the current status of
`each such related litigation or proceeding with respect to each party to the
`litigation or proceeding. The joint motion to terminate must be accompanied
`by a true copy of the parties’ settlement agreement, as required by 35 U.S.C.
`§ 317(b) and 37 C.F.R. § 42.74(b). A redacted version of the settlement
`agreement will not be accepted as a true copy of the settlement agreement.
`
`
`
`2
`
`
`
`Cases IPR2013-00428 (Patent 8,268,299 B2)
`IPR2013-00429 (Patent 8,323,630 B2)
`IPR2013-00430 (Patent 8,388,941 B2)
`
`Moreover, the settlement agreement may not be expunged after termination
`of the proceeding.
`With respect to having the settlement agreement treated as business
`confidential information under 37 C.F.R. § 42.74(c), the parties must file the
`confidential settlement agreement electronically in the Patent Review
`Processing System (PRPS) as an exhibit in accordance with the instructions
`provided on the Board’s website (uploading as “Parties and Board Only”).
`The parties are directed to FAQ G2 on the Board’s website at
`http://www.uspto.gov/ip/boards/bpai/prps.jsp for instructions on how to file
`their settlement agreement as confidential.
`In consideration of the foregoing, it is hereby:
`ORDERED that the parties are authorized to file a joint motion to
`terminate this proceeding no later than JULY 18, 2014;
`FURTHER ORDERED that the joint motion must be accompanied by
`a true copy, labeled as an exhibit, of the parties’ settlement agreement as
`required by 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b);
`FURTHER ORDERED that, for the exhibit that is the settlement
`agreement filed in this proceeding, the parties may file a separate paper
`requesting that the settlement agreement be treated as business confidential
`information as specified in 37 C.F.R. § 42.74(c); and
`FURTHER ORDERED that any confidential settlement agreement
`must be filed electronically in PRPS in accordance with the instructions
`provided on the Board’s website (uploading as “Parties and Board Only”).
`
`
`
`
`
`3
`
`
`
`Cases IPR2013-00428 (Patent 8,268,299 B2)
`IPR2013-00429 (Patent 8,323,630 B2)
`IPR2013-00430 (Patent 8,388,941 B2)
`
`For PETITIONER:
`Eldora L. Ellison
`Ralph W. Powers, III
`David Holman
`H. Keeto Sabharwal
`Paul A. Ainsworth
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`eellison-PTAB@skgf.com
`tpowers-PTAB@skgf.com
`dholman-PTAB@skgf.com
`keetos-PTAB@skgf.com
`painsworth@skgf.com
`
`
`For PATENT OWNER:
`Stanley E. Fisher
`David Krinsky
`Dov P. Grossman
`Adam L. Perlman
`Christopher J. Mandernach
`David M. Horniak
`WILLIAMS & CONNOLLY LLP
`sfisher@wc.com
`dkrinsky@wc.com
`dgrossman@wc.com
`aperlman@wc.com
`cmandernack@wc.com
`dhorniak@wc.com
`
`Barry Copeland
`ALCON RESEARCH, LTD.
`barry.copeland@alcon.com
`patent.docketing@alcon.com
`
`
`
`
`4
`
`
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