`571-272-7822
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` Paper 11
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` Entered: October 3, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ARGENTUM PHARMACEUTICALS LLC,
`Petitioner,
`
`v.
`
`ICOS CORPORATION,
`Patent Owner.
`____________
`
`Case IPR2017-01762
`Patent 6,943,166 B1
`____________
`
`
`Before SHERIDAN K. SNEDDEN, SUSAN L. C. MITCHELL, and
`ZHENYU YANG, Administrative Patent Judges.
`
`YANG, Administrative Patent Judge.
`
`
`
`
`DECISION
`Dismissing Petition’s Motion for Joinder
`Termination of the Proceeding Due to Settlement before Institution
`37 C.F.R. §§ 42.72, 42.74
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`IPR2017-01762
`Patent 6,943,166 B1
`
`
`On July 12, 2017, Argentum Pharmaceuticals LLC (“Petitioner”) filed
`a Petition for an inter partes review of claims 1–12 of U.S. Patent
`No. 6,943,166 B1. Paper 2. Petitioner concurrently filed a Motion for
`Joinder (Paper 3), seeking to be joined to Mylan Pharmaceuticals Inc. v.
`ICOS Corporation, Case No. IPR2017-00323. Patent Owner filed an
`Opposition to Petitioner’s Motion for Joinder. Paper 7.
`On August 28, 2017, pursuant to 35 U.S.C. § 317(a), and with the
`Board’s authorization, the parties filed a Joint Motion to Terminate. Paper
`9. In addition, pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), the
`parties filed a true and correct copy of a Settlement Agreement (Ex. 1039),
`along with a Joint Motion to Keep Confidential and Separate that Settlement
`Agreement (Paper 8).
`Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under
`this chapter shall be terminated with respect to any petitioner upon the joint
`request of the petitioner and patent owner, unless the Office has decided the
`merits of the proceeding before the request for termination is filed.” Under
`37 C.F.R. § 42.72, “[t]he Board may terminate a trial without rendering a
`final written decision, where appropriate, including . . . pursuant to a joint
`request under 35 U.S.C. 317(a).”
`This case is in its preliminary stage. No decision on whether to
`institute a trial has been made. After reviewing the Joint Motion to
`Terminate and the Settlement Agreement, we determine that it is appropriate
`to terminate the proceeding without rendering a final written decision.
`Therefore, the Joint Motion to Terminate is GRANTED, and the Motion for
`Joinder is DISMISSED as moot.
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`2
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`IPR2017-01762
`Patent 6,943,166 B1
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`Accordingly, it is
`ORDERED that Petitioner’s Motion for Joinder is dismissed as moot;
`FURTHER ORDERED that the Joint Motion to Terminate Proceeding
`is GRANTED and the proceeding is hereby TERMINATED; and
`FURTHER ORDERED that the Joint Motion to Keep Confidential
`and Separate is GRANTED, and the Settlement Agreement will be kept
`separate from the patent files.
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`3
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`IPR2017-01762
`Patent 6,943,166 B1
`
`PETITIONER:
`Kevin Laurence
`Tyler Liu
`Matthew` Phillips
`klaurence@lpiplaw.com
`tliu@agpharm.com
`mphillips@lpiplaw.com
`
`PATENT OWNER:
`Mark J. Feldstein
`Maureen D. Queler
`Yieyie Yang
`Joshua L. Goldberg
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
`mark.feldstein@finnegan.com
`maureen.queler@finnegan.com
`yieyie.yang@finnegan.com
`joshua.goldberg@finnegan.com
`
`Mark J. Stewart
`Dan L. Wood
`Gerald P. Keleher
`Eli Lilly and Company Lilly Corporate Center
`stewart_mark@lilly.com
`wood_dan_l@lilly.com
`keleher_gerald@lilly.com
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`4
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