Paper No.
`Filed: August 9, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
`
`MYLAN PHARMACEUTICALS INC.
`Petitioner,
`
`v.
`
`SENJU PHARMACEUTICAL CO., LTD.
`Patent Owner.
`
`_____________________
`
`Case IPR2016-01163
`Patent No. 8,877,168
`
`JOINT REQUEST THAT SETTLEMENT AGREEMENT BE TREATED AS
`BUSINESS CONFIDENTIAL INFORMATION AND KEPT SEPARATE
`UNDER 37 C.F.R § 42.74(c)
`
`LEGAL02/36554588v1
`
`
`Filed: August 9, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
`
`MYLAN PHARMACEUTICALS INC.
`Petitioner,
`
`v.
`
`SENJU PHARMACEUTICAL CO., LTD.
`Patent Owner.
`
`_____________________
`
`Case IPR2016-01163
`Patent No. 8,877,168
`
`JOINT REQUEST THAT SETTLEMENT AGREEMENT BE TREATED AS
`BUSINESS CONFIDENTIAL INFORMATION AND KEPT SEPARATE
`UNDER 37 C.F.R § 42.74(c)
`
`LEGAL02/36554588v1
`
`
`
`Case IPR2016-01163
`Patent No. 8,877,168
`
`INTRODUCTION
`Petitioner Mylan Pharmaceuticals, Inc. (“Mylan”) and Patent Owner Senju
`
`Pharmaceutical Co., Ltd. (“Senju”) have entered into a settlement agreement that
`
`resolves all underlying disputes between the parties, including the inter partes
`
`review proceeding IPR2016-01163, against U.S. Patent No. 8,877,168, currently
`
`before the Board (“the proceeding”).
`
`In an email sent to the parties on August 4, 2016, in light of the settlement
`
`agreement, the Board authorized the parties to file a joint motion to terminate in
`
`the above-captioned proceeding. Also in the email, the Board authorized the parties
`
`to file a joint request that the Office treat the agreement as business confidential
`
`information. Accordingly, the parties jointly request that the agreement be held
`
`separately and treated as business confidential information pursuant to 37 C.F.R. §
`
`42.74(c).
`
`RELIEF REQUESTED
`
`If requested, the rules permit the parties to have any filed settlement
`
`agreement treated as business confidential information, and kept separate from the
`
`files of the involved patent. 37 C.F.R. § 42.74(c). Indeed, the statute requires it.
`
`LEGAL02/36554588v1
`
`
`
`Case IPR2016-01163
`Patent No. 8,877,168
`
`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).
`
`In a motion filed concurrently herewith, Petitioner and Patent Owner jointly
`
`request termination of the proceeding. The parties also submit, as part of that joint
`
`request, a true copy of the Agreement between them (Exhibit 1035). Because the
`
`Agreement contains confidential business information, the parties jointly request
`
`that the Office treat the Agreement (Exhibit 1035) as business confidential
`
`information, that the Agreement be kept separate from the file of the involved
`
`patents, and that the Agreement be made available only to Federal Government
`
`agencies on written request, or to other persons only on a showing of good cause.
`
`CONCLUSION
`
`For the foregoing reasons, the Petitioner Mylan and the Patent Owner Senju
`
`jointly and respectfully request that the Board hold the Agreement as business
`
`confidential information pursuant to 37 C.F.R. § 42.74(c) in the proceeding.
`
`LEGAL02/36554588v1
`
`
`
`Case IPR2016-01163
`Patent No. 8,877,168
`
`RESPECTFULLY SUBMITTED,
`
`Date: August 9, 2016
`
`/Jitendra Malik/
`
`Jitendra Malik
`Reg. No. 55823
`Alston & Bird LLP
`4721 Emperor Boulevard, Suite 400
`Durham, North Carolina 27703
`
`Lance Soderstrom
`Reg. No. 65405
`Alston & Bird LLP
`90 Park Avenue, 15th Floor
`New York, New York 10016-1387
`
`H. James Abe
`Reg. No. 61182
`Alston & Bird LLP
`333 South Hope Street, 16th Floor
`Los Angeles, CA 90071
`
`Joseph M. Janusz
`Reg. No. 70396
`Alston & Bird LLP
`101 S. Tryon Street, Suite 4000
`Charlotte, NC 28205
`
`Attorneys for Petitioner
`Mylan Pharmaceuticals Inc.
`
`Date: August 9, 2016
`
`/Bryan Diner/
`
`Bryan C. Diner, Lead Counsel
`Reg. No. 32,409
`Justin J. Hasford, Back-up Counsel
`
`LEGAL02/36554588v1
`
`
`
`Case IPR2016-01163
`Patent No. 8,877,168
`
`Reg. No. 62,180
`Joshua L. Goldberg, Back-up Counsel
`Reg. No. 59,369
`Elizabeth D. Ferrill, Back-up Counsel
`Reg. No. 58,415
`Finnegan, Henderson, Farabow,
`Garrett & Dunner, L.L.P.
`901 New York Ave. NW
`Washington, DC
`
`Attorneys for Patent Owner
`Senju Pharmaceutical Co., Ltd..
`
`LEGAL02/36554588v1
`
`
`
`CERTIFICATION OF SERVICE
`
`The undersigned certifies a copy of the foregoing JOINT REQUEST TO
`
`FILE AS CONFIDENTIAL BUSINESS INFORMATION was served on
`
`August 9, 2016 via electronic mail directed to the counsel of record for the
`
`Petitioner at the following:
`
`Bryan C. Diner
`Bryan.Diner@finnegan.com
`
`Justin J. Hasford
`Justin.Hasford@finnegan.com
`
`Joshua L. Goldberg
`Joshua.Goldberg@finnegan.com
`
`Elizabeth D. Ferrill
`Elizabeth.Ferrill@finnegan.com
`
`Respectfully submitted,
`
`Alston & Bird LLP
`
`By: /Jitendra Malik/
`
`Jitendra Malik, Ph.D.
`Reg. No. 55823
`Alston & Bird LLP
`4721 Emperor Blvd., Suite 400
`Durham, NC 27703-8580
`jitty.malik@alston.com
`
`Lance Soderstrom
`Reg. No. 65405
`Alston & Bird LLP
`
`LEGAL02/36554588v1
`
`
`
`90 Park Avenue, 15th Floor
`New York, New York 10016-1387
`lance.soderstrom@alston.com
`
`H. James Abe
`Reg. No. 61182
`Alston & Bird LLP
`333 South Hope Street, 16th Floor
`Los Angeles, CA 90071
`james.abe@alston.com
`
`Joseph M. Janusz
`Reg. No. 70396
`Alston & Bird LLP
`101 S. Tryon Street, Suite 4000
`Charlotte, NC 28205
`joe.janusz@alston.com
`
`Attorneys for Petitioner
`Mylan Pharmaceuticals Inc.
`
`LEGAL02/36554588v1
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