`Trials@uspto.gov
`Entered: August 7, 2018
`Tel: 571-272-7822
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`TARO PHARMACEUTICALS U.S.A., INC.,
`Petitioner,
`v.
`APOTEX TECHNOLOGIES, INC.,
`Patent Owner.
`
`Case IPR2017-01446
`Patent 7,049,328 B2
`
`
`
`
`
`
`
`
`Before JEFFREY N. FREDMAN, ZHENYU YANG, and
`MICHELLE N. ANKENBRAND, Administrative Patent Judges.
`
`FREDMAN, Administrative Patent Judge.
`
`
`
`
`JUDGMENT
`Termination of the Proceeding
`35 U.S.C. § 317(a); 37 C.F.R. § 42.72
`
`
`On August 6, 2018, pursuant to 35 U.S.C. § 317(a), and with our prior
`authorization, the parties filed a Joint Motion to terminate the above-
`referenced proceeding. Paper 61. Accompanying the Motion, the parties
`filed a copy of a settlement agreement along with a Joint Request to treat the
`settlement agreement as business confidential, to be kept separate from the
`
`
`
`IPR2017-01446
`Patent 7,049,328 B2
`
`patent file under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). Papers 62,
`63.
`
`We entered a Decision to Institute an inter partes review on
`November 28, 2017. Paper 7. Although there has been briefing activity in
`this proceeding since institution, the parties explain that termination is
`appropriate because (1) Petitioners and Patent Owner have settled their
`disputes and have agreed to terminate the proceeding, (2) the Office has not
`yet decided the merits of the proceeding, and (3) public policy favors the
`termination. See Paper 61. At this juncture of the proceeding, the oral
`hearing has not occurred and the Board has not entered a final decision.
`The Board generally expects that a case “will terminate after the filing
`of a settlement agreement, unless the Board has already decided the merits”
`of that case. Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768
`(Aug. 14, 2012); see also 37 C.F.R. § 42.72 (“The Board may terminate a
`trial without rendering a final written decision . . . pursuant to a joint request
`under 35 U.S.C. 317(a).”). Based on the facts of the case, it is appropriate to
`enter judgment and terminate the proceeding without rendering a final
`written decision. See 35 U.S.C. § 317(a); 37 C.F.R. § 42.72. 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, the joint motion to terminate the proceeding and joint
`request that the settlement agreement be treated as business confidential
`information are granted.
`
`2
`
`
`
`IPR2017-01446
`Patent 7,049,328 B2
`
`
`Accordingly, it is
`ORDERED that the joint motion to terminate this proceeding is
`granted;
`FURTHER ORDERED that this proceeding is terminated; and
`FURTHER ORDERED that the parties’ joint request that the
`settlement agreement be treated as business confidential information, to be
`kept separate from the patent file is granted.
`
`
`3
`
`
`
`IPR2017-01446
`Patent 7,049,328 B2
`
`
`
`PETITIONER:
`Huiya Wu
`Sara Fink
`GOODWIN PROCTER LLP
`hwu@goodwinlaw.com
`sfink@goodwinlaw.com
`
`PATENT OWNER:
`W. Blake Coblentz
`Aaron S. Lukas
`COZEN O’CONNOR
`wcoblentz@cozen.com
`alukas@cozen.com
`
`4
`
`
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