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`Trials@uspto.gov
`571-272-7822
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` Paper No. 46
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` Entered: October 5, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`PAR PHARMACEUTICAL, INC.,
`Petitioners,
`
`v.
`
`HORIZON THERAPEUTICS, LLC,
`Patent Owner.
`____________
`
`Case IPR2017-01767 (Patent 9,254,278 B2)
`Case IPR2017-01768 (Patent 9,095,559 B2)
`Case IPR2017-01769 (Patent 9,326,966 B2)1
`____________
`
`Before TONI R. SCHEINER, DEBORAH KATZ, GRACE KARAFFA
`OBERMANN, and RAMA G. ELLURU, Administrative Patent Judges.
`
`KATZ, Administrative Patent Judge.
`
`
`
`ORDER
`Granting Joint Motion to Terminate Proceeding and
`Granting Joint Request to Treat Settlement Agreement as
`Business Confidential Information
`35 U.S.C. § 317; 37 C.F.R. §§ 42.72, 42.74
`
`
`
`
`1 We exercise our discretion to issue one Order to be filed in the three cited cases.
`The parties are not authorized to use this style heading for any subsequent papers.
`
`
`
`
`Case IPR2017-01767 (Patent 9,254,278 B2)
`Case IPR2017-01768 (Patent 9,095,559 B2)
`Case IPR2017-01769 (Patent 9,326,966 B2)
`
`
`On September 28, 2018, Petitioner Par Pharmaceutical, Inc. and Patent
`Owner Horizon Therapeutics, LLC (“the parties”) filed a Joint Motion to
`Terminate in each of the above-identified proceedings. See IPR2017-01767, Paper
`43, IPR2017-01768, Paper 42, and IPR2017-01769, Paper 43 (“Joint Motions”).
`According to the parties, the settlement agreement resolves all currently pending
`Patent Office and District Court proceedings between the parties to this proceeding
`involving patents 9,095,559, 9,254,278, and 9,326,966. Joint Motions 2. The
`parties represent that they have reached an agreement jointly seeking termination
`of these inter partes review proceedings. Id. The parties also represent that they
`have agreed to dismiss related district court litigation, Horizon Therapeutics, Inc.
`v. Par Pharmaceuticals, Inc., Civil Action No. 1:16-cv-03910-RBK-JS (D.N.J.
`filed June 30, 2016). Id.
`Although we instituted trials (see IPR2017-01767, Paper 10; IPR2017-
`01768, Paper 10, and IPR2017-01769, Paper 10), briefing is not yet complete in
`these proceedings and Final Written Decisions have not yet been finalized.
`Accordingly, we grant the parties’ requests and terminate the proceedings. See 35
`U.S.C. § 317(a).
` Along with the Joint Motions, the parties filed copies of a Confidential
`Settlement and License Agreement (Exhibit 2058, “Settlement Agreement”) in
`each proceeding and request that they be kept separate and confidential because of
`the inclusion of highly sensitive business confidential information that would
`substantially harm their business interests if publicly disclosed. See IPR2017-
`01767, Paper 44, IPR2017-01768, Paper 43, and IPR2017-01769, Paper 44 (“Joint
`Requests”). We grant the requests, pursuant to 35 U.S.C. § 317(b) and 37 C.F.R.
`§ 42.74(c).
`
`
`
`2
`
`
`
`Case IPR2017-01767 (Patent 9,254,278 B2)
`Case IPR2017-01768 (Patent 9,095,559 B2)
`Case IPR2017-01769 (Patent 9,326,966 B2)
`
`
`The Parties further request that “the Board order that in the event a person or
`entity makes a written request, as stated in 37 C.F.R. § 42.74(c)(1)-(2), for access
`to the settlement agreement, that any such written request be served upon the
`parties on the day the written request is provided to the Board.” Joint Request 1.
`We have no procedure to serve upon the parties a request for access to the
`Settlement Agreement, and, further, our regulations do not require us to do so.
`Therefore, we decline to issue an order regarding such requests.
`Accordingly, for the reasons discussed above:
`It is ORDERED that the Joint Motion to Terminate (IPR2017-01767, Paper
`43) is granted, and IPR2017-01767 is terminated with respect to Petitioner and
`Patent Owner pursuant to 37 C.F.R. § 42.72;
`It is FURTHER ORDERED that the Joint Motion to Terminate (IPR2017-
`01768, Paper 42) is granted, and IPR2017-01768 is terminated with respect to
`Petitioner and Patent Owner pursuant to 37 C.F.R. § 42.72; and
`It is FURTHER ORDERED that the Joint Motion to Terminate (IPR2017-
`01769, Paper 43) is granted, and IPR2017-01769 is terminated with respect to
`Petitioner and Patent Owner pursuant to 37 C.F.R. § 42.72;
`It is FURTHER ORDERED that the parties’ joint requests to treat the
`settlement agreement as business confidential information (IPR2017- 01767, Paper
`44, IPR2017-01768, Paper 43, and IPR2017-01769, Paper 44) are granted, and the
`Settlement Agreement (Exhibit 2058) shall be kept separate from the files of the
`involved patents, pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c);
`It is FURTHER ORDERED that the parties’ request for notice of a request
`to access the settlement agreement is DENIED.
`
`
`
`
`
`
`3
`
`
`
`Case IPR2017-01767 (Patent 9,254,278 B2)
`Case IPR2017-01768 (Patent 9,095,559 B2)
`Case IPR2017-01769 (Patent 9,326,966 B2)
`
`Petitioner:
`
`David H. Silverstein
`Dan Feng Mei
`Aziz Burgy
`AXINN, VELTROP & HARKRIDER LLP
`dsilverstein@axinn.com
`dmei@axinn.com
`Ravicti@axinn.com
`aburgy@axinn.com
`
`Patent Owner:
`
`Robert Green
`Emer Simic
`Ann Kotze
`GRIFFITH & BORG-BREEN, LLP
`rgreen@greengriffith.com
`esimic@greengriffith.com
`akotze@greengriffith.com
`
`Matthew Phillips
`LAURENCE & PHILLIPS IP LAW LLP
`mphillips@lpiplaw.com
`
`Dennis Bennett
`GLOBAL PATENT GROUP, LLC
`dennisbennett@globalpatentgroup.com
`
`
`
`
`4
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`