`Entered: January 17, 2018
`
`Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MYLAN PHARMACEUTICALS INC.,
`Petitioner,
`
`v.
`
`COSMO TECHNOLOGIES LIMITED,
`Patent Owner.
`
`
`Case IPR2017-01035
`Patent 9,320,716 B2
`
`
`
`Before SUSAN L. C. MITCHELL, ZHENYU YANG, and
`KRISTI L. R. SAWERT, Administrative Patent Judges.
`
`MITCHELL, Administrative Patent Judge.
`
`
`
`DECISION
`Granting Joint Motion to Terminate
`35 U.S.C. § 317(a) and 37 C.F.R. § 42.72
`
`
`
`
`
`
`
`
`IPR2017-01035
`Patent 9,320,716 B2
`
`
`Petitioner, Mylan Pharmaceuticals Inc., and Patent Owner, Cosmo
`Technologies Limited, jointly move to terminate this proceeding pursuant to
`35 U.S.C. § 317(a), 37 C.F.R. §§ 42.72 and 42.74. (Paper 23, “Motion” or
`“Mot.”). As the parties note, on September 21, 2017, the Board instituted
`inter partes review in this case of claims 1–29 of the U.S. Patent
`9,320,716 B2 (“the ’716 patent”). On November 14, 2017, the parties
`represent that they entered into a settlement agreement in which Patent
`Owner “agrees to dismiss its infringement claim of [the ’716 patent] against
`Petitioner and terminate the related district court proceeding.” Paper 23, 2.
`The Board subsequently authorized the parties to file this motion to
`terminate proceedings.
`The parties also filed a copy of their Settlement Agreement, made in
`connection with the termination of these proceedings, in accordance with
`35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b). See Ex. 2037. The parties
`filed a Joint Request that the settlement agreement be treated as business
`confidential information, and be kept separate from the file of the involved
`patent, under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). Paper 24.
`The Board generally expects that a case “will terminate after the filing
`of a settlement agreement, unless the Board has already decided the merits.”
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14,
`2012); see 37 C.F.R. § 42.72. In their Motion, the parties indicate that the
`settlement agreement, Ex. 2037, “has resolved litigation between Mylan and
`Cosmo in Cosmo Technologies Ltd. v. Mylan Pharmaceuticals Inc., 16-cv-
`00152 (D.Del.).” Paper 23, 3. The parties further state that “Petitioner
`
`2
`
`
`
`IPR2017-01035
`Patent 9,320,716 B2
`
`represents that it will no longer participate in this inter partes review and
`will file no further papers.” Id. at 4.
`The parties do note a second district court litigation involving the ’716
`patent and different defendants remains pending, as well as another petition
`for inter partes review involving the ’716 patent and a different petitioner,
`Argentum Pharmaceuticals LLC, for which Argentum is seeking joinder
`with this proceeding. Id. With respect to Argentum’s petition, the parties
`state that “[n]o substantive rulings have been made in that IPR proceeding,”
`and that “Argentum is not subject to any statutory bar under 35 U.S.C.
`§ 315(b).” Id. We have confirmed in a call with the parties involving
`Argentum’s petition that there is no statutory bar under 35 U.S.C. § 315(b)
`regarding that petition.
`As the parties point out, the Motion was filed after institution, but
`before briefing on the merits was concluded, and thus, before a final written
`decision has issued on the merits.
`Thus, upon consideration of the facts before us, we determine that it is
`appropriate to terminate this proceeding. See 37 C.F.R. §§ 42.5(a), 42.71(a),
`42.73(a), 42.74. Accordingly, we grant the Motion.
`We also determine that the parties have complied with the
`requirements of 37 C.F.R. § 42.74(c) to have the Settlement Agreement
`treated as business confidential information and kept separate from the files
`of the patent at issue in this proceeding. Thus, we grant the Joint Request to
`treat the Settlement Agreement as business confidential.
`
`
`
`3
`
`
`
`IPR2017-01035
`Patent 9,320,716 B2
`
`
`ORDER
`For the foregoing reasons, it is hereby:
`ORDERED that the Joint Motion to Terminate is granted;
`FURTHER ORDERED that inter partes review in IPR2017-01035 is
`terminated as to all parties; and
`FURTHER ORDERED that the Joint Request of the parties to treat
`the Settlement Agreement (Ex. 2037) as business confidential information,
`to be kept separate from the patent file in the above-referenced inter partes
`proceeding, is granted.
`
`
`
`
`4
`
`
`
`IPR2017-01035
`Patent 9,320,716 B2
`
`For PETITIONER:
`
`Jitendra Malik
`H. James Abe
`Lance Soderstrom
`Joseph Janusz
`ALSTON & BIRD LLP
`jitty.malik@alston.com
`james.abe@alston.com
`lance.soderstrom@alston.com
`joe.janusz@alston.com
`
`
`For PATENT OWNER:
`Gary Frischling
`Yite Lu
`IRELL & MANELLA LLP
`gfrischling@irell.com
`yjlu@irell.com
`
`
`5
`
`
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