`571-272-7822
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`Paper 106
`Entered: December 13, 2019
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`ELI LILLY AND COMPANY,
`Petitioner,
`
`v.
`
`LOS ANGELES BIOMEDICAL RESEARCH INSTITUTE AT
`HARBOR-UCLA MEDICAL CENTER,
`Patent Owner.
`____________
`
`IPR2014-00752
`Patent 8,133,903 B2
`____________
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`
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`Before FRANCISCO C. PRATS, SHERIDAN K. SNEDDEN, and
`SUSAN L. C. MITCHELL, Administrative Patent Judges.
`
`SNEDDEN, Administrative Patent Judge.
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`TERMINATION
`Due to Settlement After Institution of Trial
`35 U.S.C. § 317; 37 C.F.R. § 42.74
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`IPR2014-00752
`Patent 8,133,903 B2
`
`INTRODUCTION
`I.
`Petitioner and Patent Owner (collectively referred to as “the Parties”)
`have requested that the above-identified inter partes review proceeding be
`terminated pursuant to a settlement. On December 5, 2019, we authorized
`the Parties to a file joint motion to terminate the above-identified
`proceeding. Paper 102, 2. On December 9, 2019, the Parties filed a Joint
`Motion to Terminate the above-identified proceeding. Paper 103 (“Joint
`Motion”). Along with the Joint Motion, the Parties filed a Binding Term
`Sheet (Ex. 1184 (“Settlement Agreement”)), as well as a Joint Request 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) (Paper 104 (“Joint
`Request”)).
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`II. DISCUSSION
`Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under
`this chapter shall be terminated with respect to any petitioner upon the joint
`request of the petitioner and the patent owner, unless the Office has decided
`the merits of the proceeding before the request for termination is filed.” It is
`also provided in 35 U.S.C. § 317(a) that if no petitioner remains in the inter
`partes review, the Office may terminate the review.
`In the Joint Motion, the Parties represent that they have reached an
`agreement to jointly seek termination of this inter partes review proceeding,
`and that the filed copy of the Settlement Agreement is a true and complete
`copy. Joint Motion 1. The Parties further represent that their settlement
`agreement resolves all currently pending Patent Office and District Court
`proceedings between the Parties involving the ’903 patent. Id at 1–2.
`Following remand to the Board by the Court of Appeals for the
`Federal Circuit in light of the Supreme Court’s holding in SAS Institute, Inc.
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`2
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`IPR2014-00752
`Patent 8,133,903 B2
`v. Iancu, 138 S. Ct. 1348 (2018), we entered a revised Institution Order to
`include all grounds set forth in the Petition. Paper 60 (citing L.A.
`BioMedical Research Inst. at Harbor-UCLA Med. Ctr. v. Eli Lilly & Co.,
`slip op. at 5 (Fed. Cir. 2018). 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.
`The Parties also filed a Joint Request that the Settlement Agreement
`be treated as business confidential information and be kept separate from the
`file of the respective patent involved in this inter partes proceeding. Paper
`104, 1. After reviewing the Settlement Agreement between Petitioner and
`Patent Owner, we find that the Settlement Agreement contains confidential
`business information regarding the terms of settlement. We determine that
`good cause exists to treat the Settlement Agreement between Petitioner and
`Patent Owner as business confidential information pursuant to
`35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).
`This Order does not constitute a final written decision pursuant to 35
`U.S.C. § 318(a).
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`III. ORDER
`Accordingly, for the reasons discussed above, it is:
`ORDERED that the Joint Motion to Terminate (Paper 103) is granted,
`and IPR2014-00752 is terminated with respect to Petitioner and Patent
`Owner pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. § 42.72; and
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`FURTHER ORDERED that the Joint Request (Paper 104) to Treat the
`Settlement Agreement (Exhibit 1184) as Business Confidential Information
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`3
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`IPR2014-00752
`Patent 8,133,903 B2
`is granted, and the Settlement Agreement shall be kept separate from the file
`of Patent 8,133,903 B2, and made available only to Federal Government
`agencies on written request, or to any person on a showing of good cause,
`pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).
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`4
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`IPR2014-00752
`Patent 8,133,903 B2
`FOR PETITIONER:
`
`Mark Feldstein
`Charles Lipsey
`Joshua Goldberg
`Maureen Queler
`FINNEGAN, HENDERSON, FARABOW, GARRETT,
` & DUNNER, LLP
`Mark.feldstein@finnegan.com
`Charles.lipsey@finnegan.com
`Joshua.goldberg@finnegan.com
`Maureen.queler@finnegan.com
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`Mark Stewart
`Dan Wood
`ELI LILLY AND COMPANY
`Stewart_mark@lilly.com
`Wood_dan_l@lilly.com
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`FOR PATENT OWNER:
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`David Tellekson
`Ewa Davison
`Virgina DeMarchi
`Michael Shuster
`Jonathan T. McMichael
`FENWICK & WEST LLP
`dtellekson@fenwick.com
`edavison@fenwick.com
`vdemarchi@fenwick.com
`mshuster@fenwick.com
`jmcmichael@fenwick.com
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`5
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