Trials@uspto.gov
`571-272-7822
`
`
`
`Paper 114
`Entered: January 8, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`ACRUX DDS PTY LTD., ACRUX LIMITED, and
`ARGENTUM PHARMACEUTICALS LLC,
`Petitioner,
`v.
`KAKEN PHARMACEUTICAL CO., LTD. and VALEANT
`PHARMACEUTICALS INTERNATIONAL, INC.,
`Patent Owner.
`_______________
`
`IPR2017-00190
`Patent 7,214,506 B2
`_______________
`
`
`Before ERICA A. FRANKLIN, SUSAN L. C. MITCHELL, and
`ROBERT A. POLLOCK, Administrative Patent Judges.
`
`MITCHELL, Administrative Patent Judge.
`
`
`
`TERMINATION
`Due to Settlement on Remand
`37 C.F.R. § 42.74
`
`
`
`
`
`
`571-272-7822
`
`
`
`Paper 114
`Entered: January 8, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`ACRUX DDS PTY LTD., ACRUX LIMITED, and
`ARGENTUM PHARMACEUTICALS LLC,
`Petitioner,
`v.
`KAKEN PHARMACEUTICAL CO., LTD. and VALEANT
`PHARMACEUTICALS INTERNATIONAL, INC.,
`Patent Owner.
`_______________
`
`IPR2017-00190
`Patent 7,214,506 B2
`_______________
`
`
`Before ERICA A. FRANKLIN, SUSAN L. C. MITCHELL, and
`ROBERT A. POLLOCK, Administrative Patent Judges.
`
`MITCHELL, Administrative Patent Judge.
`
`
`
`TERMINATION
`Due to Settlement on Remand
`37 C.F.R. § 42.74
`
`
`
`
`
`
`
`IPR2017-00190
`Patent 7,214,506 B2
`
`
`On May 11, 2020, the Board authorized the parties to file a motion to
`terminate, settlement agreement, and motion to keep the settlement
`agreement business confidential. Thereafter, pursuant to 37 C.F.R.
`§§ 42.72, 42.74 and 35 U.S.C. § 317(b), Petitioners (Acrux DDS PTY Ltd.,
`Acrux Limited, and Argentum Pharmaceuticals LLC) and Patent Owner
`(Kaken Pharmaceutical Co., Ltd., and Bausch Health Companies Inc.
`formerly known as Valeant Pharmaceuticals International, Inc.) (collectively
`referred to as “the parties”) filed Joint Motions to Terminate the above-
`referenced proceeding, including requests to treat the respective settlement
`agreements as Business Confidential Information and Be Kept Separate,
`(Papers 105 and 112 (collectively “Joint Motions”)) along with copies of
`two written Confidential Settlement Agreements (Ex. 2204 and Ex. 2205
`(collectively “Settlement Agreements”)).
`Particularly, on May 13, 2020, Patent Owner and Petitioners Acrux
`DDS PTY Ltd. and Acrux Limited (collectively “Acrux”) filed a Joint
`Motion to Terminate the above-referenced proceeding and Joint Request to
`keep a settlement agreement as business confidential information and to
`keep the settlement agreement separate from the file of the involved patent
`(Paper 105), along with a copy of the written Confidential Settlement
`Agreement (Ex. 2204—filed as BOARD’S EYES ONLY). On November
`12, 2020, Patent Owner and Petitioner Argentum Pharmaceuticals LLC
`(“Argentum”) filed a Joint Motion to Terminate the above-referenced
`proceeding and Joint Request to keep a second settlement agreement as
`business confidential information and to keep that settlement agreement
`separate from the file of the involved patent (Paper 112), along with a copy
`
` 2
`
`
`
`
`
`
`
`IPR2017-00190
`Patent 7,214,506 B2
`
`of the written Confidential Settlement Agreement (Ex. 2205—filed as
`BOARD’S EYES ONLY). 1
`In the Joint Motions, the parties represent that they have reached
`agreements to jointly seek termination of this inter partes review
`proceeding, and that the filed copies of the Settlement Agreements are true
`and complete copies. Paper 105, 1, 4; Paper 112, 1, 4. The parties further
`represent that their Settlement Agreements resolve all currently pending
`disputes and proceedings between the parties (including Patent Office and
`District Court proceedings) involving the 7,214,506 patent. Paper 105, 3–4;
`Paper 112, 3–4.
`Generally, the Board expects that a proceeding will terminate after the
`filing of a settlement agreement. Patent Trial and Appeal Board
`Consolidated Trial Practice Guide 86.2 This proceeding is on remand from
`the United States Court of Appeals for the Federal Circuit, and a final
`written decision has not been rendered in the remanded proceeding. Based
`on the facts in this case, we determine that it is appropriate to terminate the
`above-referenced proceeding without rendering a final written decision.
`Additionally, upon review of the Joint Motions requesting that the
`Settlement Agreements be treated as business confidential information and
`be kept separate from the file of the patent involved in this inter partes
`proceeding, we determine that good cause exists to treat the Settlement
`
`
`1 Argentum originally opposed the motion to terminate filed by Acrux DDS
`PTY Ltd., Acrux Limited, and Patent Owner. See Paper 107. Argentum,
`however, now jointly supports termination of this proceeding as no dispute
`remains between the parties and the Board. See Paper 112, 3–4.
`2 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
`
` 3
`
`
`
`
`
`
`
`IPR2017-00190
`Patent 7,214,506 B2
`
`Agreements as business confidential information pursuant to
`35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).
`Therefore, both requests in the Joint Motions are granted.
`This Order does not constitute a final written decision pursuant to
`35 U.S.C. § 318(a).
`Accordingly, it is:
`ORDERED that the requests in the Joint Motions (Papers 105 and
`112) to terminate the above-referenced proceeding are GRANTED, and
`IPR2017-00190 is TERMINATED with respect to all Petitioners and Patent
`Owner;
`FURTHER ORDERED that the requests in the Joint Motion that the
`Settlement Agreements (Ex. 2204 and Ex. 2205) be treated as business
`confidential information and be kept separate from the file of the above-
`referenced proceeding and from the file of Patent 7,214,506 B2, under the
`provisions of 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), are GRANTED;
`and
`
`FURTHER ORDERED that the Settlement Agreements (Ex. 2204 and
`Ex. 2205) shall remain available as BOARD’S EYES ONLY in the record in
`IPR2017-00190.
`
`
` 4
`
`
`
`
`
`
`
`
`
`
`
`IPR2017-00190
`Patent 7,214,506 B2
`
`For PETITIONER:
`
`Tara Raghavan
`Steven Birkos
`RAKOCZY MOLINO MAZZOCHI SIWIK LLP
`traghavan@rmmslegal.com
`sbirkos@rmmslegal.com
`
`Teresa Rea
`Shannon Lentz
`CROWELL & MORING LLP
`trea@crowell.com
`slentz@crowell.com
`
`
`For PATENT OWNER:
`
`John Livingstone
`Naoki Yoshida
`Anthony Hartman
`Trenton Ward
`Barbara Rudolph
`FINNEGAN HENDERSON FARABOW GARRETT & DUNNER LLP
`john.livingstone@finnegan.com
`naoki.yoshida@finnegan.com
`Hartmana@finnegan.com
`Trenton.ward@finnegan.com
`Barbara.rudolph@finnegan.com
`
`Toan Vo
`BAUSCH
`Toan.vu@bausch.com
`
`
` 5
`
`
`
`
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
