Trials@uspto.gov
`571-272-7822
`
`Paper 67
`Entered: May 5, 2016
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`
`
`AMNEAL PHARMACEUTICALS LLC, PAR PHARMACEUTICAL, INC.,
`AND WOCKHARDT BIO AG,
`Petitioners,
`
`v.
`
`JAZZ PHARMACEUTICALS, INC.,
`Patent Owner.
`____________
`
`Cases: IPR2015-00545 (Patent 8,589,182 B1)
`IPR2015-00546 (Patent 7,765,106 B2)
`IPR2015-00547 (Patent 7,765,107 B2)
`IPR2015-00548 (Patent 7,895,059 B2)
`IPR2015-00551 (Patent 8,457,988 B1)
`IPR2015-00554 (Patent 7,668,730 B2)1
`____________
`
`Before JACQUELINE WRIGHT BONILLA, SUSAN L. C. MITCHELL, and
`BRIAN P. MURPHY, Administrative Patent Judges.
`
`
`MURPHY, Administrative Patent Judge.
`
`
`ORDER
`Termination of the Proceedings as to Petitioner Wockhardt Bio AG
`37 C.F.R. §§ 42.72, 42.74
`
`
`1 We exercise our discretion to issue one Order to be filed in each case. The parties
`are not authorized to use this style heading. Cases IPR2015-01810, 01813, 01814,
`01815, 01816, 01817, 01818, and 01820 have been joined to these proceedings.
`
`

`

`IPR2015-00545 (Patent 8,589,182 B1)
`IPR2015-00546 (Patent 7,765,106 B2)
`IPR2015-00547 (Patent 7,765,107 B2)
`IPR2015-00548 (Patent 7,895,059 B2)
`IPR2015-00551 (Patent 8,457,988 B1)
`IPR2015-00554 (Patent 7,668,730 B2)
`On April 19, 2016, we authorized Petitioner Wockhardt Bio AG (“Petitioner
`Wockhardt”) and Jazz Pharmaceuticals, Inc. (“Patent Owner”) to file a joint
`motion to terminate this proceeding with respect to Petitioner Wockhardt due to
`settlement. Ex. 2060.2 We also authorized the Petitioner Wockhardt and Patent
`Owner to file a joint request to treat the underlying settlement agreement as
`business confidential information. Id. On April 26, 2016, pursuant to 35 U.S.C.
`§ 317(a) and 37 C.F.R. §§ 42.72, 42.74, the parties filed a Joint Motion to
`terminate these proceedings with respect to Petitioner Wockhardt (Paper 65, “Joint
`Motion” or “Joint Mot.”) and to treat the submitted settlement agreement (Ex.
`2061) as business confidential information (Paper 66). In the Joint Motion, the
`parties represent that a true and correct copy of the confidential settlement
`agreement has been submitted electronically via the Patent Review Processing
`System (PRPS) as “Board Only.”3 Joint Mot. 2–3.
`“An 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.” 35 U.S.C. § 317(a). The Office has not yet
`decided the merits of this proceeding, and a final written decision has not yet been
`entered. Petitioner Wockhardt and Patent Owner represent that there are no related
`proceedings currently before the Office involving the patents at issue and
`
`2 For ease of reference, all citations are to the papers and exhibits filed in
`IPR2015-00545.
`3 The settlement agreement contains both Patent Owner’s and Petitioner
`Wockhardt’s business confidential information, which cannot be made available to
`any of the other Petitioners remaining in these proceedings.
`2
`
`
`
`

`

`IPR2015-00545 (Patent 8,589,182 B1)
`IPR2015-00546 (Patent 7,765,106 B2)
`IPR2015-00547 (Patent 7,765,107 B2)
`IPR2015-00548 (Patent 7,895,059 B2)
`IPR2015-00551 (Patent 8,457,988 B1)
`IPR2015-00554 (Patent 7,668,730 B2)
`Petitioner Wockhardt. Joint Mot. 4. Petitioner Wockhardt and Patent Owner
`identify related, co-pending U.S. district court proceedings, and they represent that
`the related district court proceedings remain pending against Petitioners Amneal
`Pharmaceuticals LLC and Par Pharmaceutical, Inc. as well as other defendants. Id.
`Petitioner Wockhardt and Patent Owner further represent that they have
`concurrently filed a Stipulation and Order of Dismissal in the district court. Id. at
`2. Accordingly, we determine that good cause exists to terminate this proceeding
`with respect to Petitioner Wockhardt.
` “At the request of a party to the proceeding, the agreement or
`understanding shall be treated as business confidential information, shall be kept
`separate from the file of the involved patents, and shall be made available only to
`Federal Government agencies on written request, or to any person on a showing of
`good cause.” 35 U.S.C. § 317(b). After reviewing the parties’ settlement
`agreement, 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 as business confidential information
`pursuant to 35 U.S.C. § 317(b).
`
`ORDER
`
`For the reasons given, it is
`ORDERED that the Joint Motion (Paper 65) is granted;
`FURTHER ORDERED that the Joint Request that the Confidential
`Settlement Agreement be Treated as Business Confidential Information (Paper 66)
`is granted;
`
`
`
`3
`
`

`

`IPR2015-00545 (Patent 8,589,182 B1)
`IPR2015-00546 (Patent 7,765,106 B2)
`IPR2015-00547 (Patent 7,765,107 B2)
`IPR2015-00548 (Patent 7,895,059 B2)
`IPR2015-00551 (Patent 8,457,988 B1)
`IPR2015-00554 (Patent 7,668,730 B2)
`FURTHER ORDERED that this proceeding is hereby terminated with
`respect to Petitioner Wockhardt; and
`FURTHER ORDERED that the filed settlement agreement (Ex. 2061) be
`treated as Business Confidential Information pursuant to 35 U.S.C. § 317(b) and 37
`C.F.R. § 42.74(c) and also remain designated as “Board Only” in PRPS.
`
`
`
`FOR PETITIONERS:
`
`Matthew C. Ruedy
`Steven A. Maddox
`MADDOX EDWARDS PLLC
`mruedy@meiplaw.com
`smaddox@meiplaw.com
`
`Janine Carlan
`Bradford Frese
`Richard Berman
`ARENT FOX LLP
`bradford.frese@arentfox.com
`richard.berman@arentfox.com,
`janine.carlan@arentfox.com
`
`Laura Vogel
`Patrick Gallagher
`DUANE MORRIS LLP
`LAVogel@duanemorris.com
`PCGallagher@duanemorris.com
`
`
`
`
`
`4
`
`

`

`IPR2015-00545 (Patent 8,589,182 B1)
`IPR2015-00546 (Patent 7,765,106 B2)
`IPR2015-00547 (Patent 7,765,107 B2)
`IPR2015-00548 (Patent 7,895,059 B2)
`IPR2015-00551 (Patent 8,457,988 B1)
`IPR2015-00554 (Patent 7,668,730 B2)
`FOR PATENT OWNER:
`
`F. Dominic Cerrito
`Evangeline Shih
`Frank C. Calvosa
`Eric C. Stops
`QUINN EMANUEL URQUHART & SULLIVAN, LLP
`nickcerrito@quinnemanuel.com
`evangelineshih@quinnemanuel.com
`frankcalvosa@quinnemanuel.com
`ericstops@quinnemanuel.com
`
`John V. Biernacki
`JONES DAY
`jvbiernacki@jonesday.com
`
`
`
`
`5
`
`