`571.272.7822
`
`
`
`
`
` Paper No. 18
`
` Entered: January 25, 2017
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MERCK SHARP & DOHME CORP.,
`Petitioner,
`
`v.
`
`ONO PHARMACEUTICAL CO., LTD. and TASUKO HONJO,
`Patent Owner.
`____________
`
`Case IPR2016-01217 (Patent 9,067,999 B1)
`Case IPR2016-01218 (Patent 9,067,999 B1)
`Case IPR2016-01219 (Patent 9,073,994 B2)
`Case IPR2016-01221(Patent 9,073,994 B2)1
`____________
`
`
`Before ERICA A. FRANKLIN, TINA E. HULSE, and
`JACQUELINE T. HARLOW, Administrative Patent Judges.
`
`FRANKLIN, Administrative Patent Judge.
`
`JUDGMENT
`Termination of the Proceeding
`37 C.F.R. §§ 42.72 – 42.74
`
`
`
`
`
`
`
`1 This order addresses issues common to each of the captioned cases. Thus,
`we issue a single order for entry in each case.
`
`
`
`
`
`IPR2016-01217 and IPR2016-01218 (Patent 9,067,999 B1)
`IPR2016-01219 and IPR2016-01221 (Patent 9,073,994 B2)
`
`On January 23, 2017, in each of the captioned cases, the parties filed a
`joint motion to terminate the proceeding under 35 U.S.C § 317 (a). Paper
`14.2 The parties also filed a true copy of their written settlement agreement.
`Ex. 2056. Additionally, citing to 35 U.S.C § 317 (b) and 37 C.F.R. § 42.74,
`the parties filed a joint request that the settlement agreement be treated as
`business confidential information and kept separate from the files of US
`Patent Nos. 9,067,999 B1 and 9,073,994 B2. Paper 15.
`In each joint motion, the parties explain that termination of the
`proceeding is appropriate because they have reached an agreement settling
`their dispute with respect to the involved patent. Paper 14, 3. The parties
`explain also that the settlement requires the Patent Owner to dismiss with
`prejudice the related district court litigation, Bristol-Myers Squibb et al. v.
`Merck & Co., Inc., et al., Civ. No. 1:15-00572-GMS (D. Del). Id.
`These cases are in the preliminary proceeding stage; a decision
`whether to institute trial in each case has not been entered. Under these
`circumstances, we determine that it is appropriate to enter judgment
`terminating the proceedings. Additionally, the parties’ request for the
`settlement agreement to be treated as business confidential information and
`kept separate from the file of the involved patent is granted.
`
`
`
`
`2 Citations to paper and exhibit numbers in this order refer to filings in
`IPR2016-01217. Similar documents were filed in each of the captioned
`cases.
`
`2
`
`
`
`IPR2016-01217 and IPR2016-01218 (Patent 9,067,999 B1)
`IPR2016-01219 and IPR2016-01221 (Patent 9,073,994 B2)
`Accordingly, it is hereby
`ORDERED that the joint motions to terminate the proceedings are
`granted; and
`FURTHER ORDERED that the joint requests that the settlement
`agreement, Ex. 2056, be treated as business confidential information and
`kept separate from the file of the involved patent under the provisions of 35
`U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) is granted; and
`FURTHER ORDERED that the proceeding is terminated.
`
`
`
`3
`
`
`
`IPR2016-01217 and IPR2016-01218 (Patent 9,067,999 B1)
`IPR2016-01219 and IPR2016-01221 (Patent 9,073,994 B2)
`
`PETITIONER:
`
`Jeffrey Kushan
`IPRNotices@sidley.com
`
`Peter Choi
`Peter.choi@sidley.com
`
`Lisa A. Schneider
`lschneider@sidley.com
`
`PATENT OWNER:
`
`Eldora Ellison
`eellison@skgf.com
`
`Jeremiah Frueauf
`Jfrueauf-ptab@skgf.com
`
`David Holman
`Dholman-ptab@skgf.com
`
`David Roadcap
`Droadcap-ptab@skgf.com
`
`
`
`4
`
`
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