`571-272-7822
`
`
`
`
`Paper 9
` Entered: June 1, 2018
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAWAI USA, INC. and SAWAI PHARMACEUTICAL CO., LTD.,
`Petitioner,
`
`v.
`
`ASTELLAS PHARMA INC.,
`Patent Owner.
`____________
`
`Case IPR2018-00079
`Patent 6,346,532 B1
`Reexamination 6,346,532 C1
`____________
`
`
`
`Before JAMES T. MOORE, SUSAN L. C. MITCHELL, and KRISTI L. R.
`SAWERT, Administrative Patent Judges.
`
`SAWERT, Administrative Patent Judge.
`
`
`
`
`
`DECISION
`Granting Joint Motion to Terminate Proceeding
`35 U.S.C. § 317(a); 37 C.F.R. §§ 42.72, 42.74
`
`
`
`
`
`
`
`
`
`
`IPR2018-00079
`Patent 6,346,532 B1
`Reexamination 6,346,532 C1
`
`
`
`
`
`On May 29, 2018, Sawai USA, Inc. and Sawai Pharmaceutical Co.,
`Ltd. (“Petitioner”) and Astellas Pharma Inc. (“Patent Owner”) filed a joint
`motion to terminate pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. § 42.72,
`and a joint request to treat their settlement agreement as business
`confidential information, to be kept separate from the patent file, pursuant to
`35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). Paper 8. The joint motion
`was accompanied by a true, unredacted copy of a settlement agreement.
`Ex. 1026. We authorized filing of these papers during a conference call held
`on May 21, 2018.
`The parties represent that they have settled their disputes involving the
`U.S. Patent No. 6,346,532 (“the ’532 patent”). Mot. 2. Additionally, the
`parties state that they have agreed to settle the claims and counterclaims
`related to the ’532 patent in the related district court litigation, Astellas
`Pharma Inc. v. Sawai Pharm. Co., 16-cv-954 (D. Del.), and that the
`dismissal has been entered by the Court in that case. Id.
`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 also 37 C.F.R. § 42.72. We entered a Decision denying
`institution of inter partes review in this case on May 4, 2018. Paper 7.
`However, the deadline for filing a request for rehearing has not yet passed as
`of the filing of the parties’ joint motion to terminate. See 37 C.F.R.
`§ 42.71(d). Under the circumstances presented here, therefore, we
`determine that it is appropriate to terminate this proceeding with respect to
`
`
`
`2
`
`
`
`
`
`IPR2018-00079
`Patent 6,346,532 B1
`Reexamination 6,346,532 C1
`
`
`both Petitioner and Patent Owner. Accordingly, we grant the parties’ joint
`motion to terminate.
`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.
`Accordingly, it is
`ORDERED that the joint motion to terminate the proceeding is
`GRANTED;
`FURTHER ORDERED that the joint request to treat the parties’
`settlement agreement (Ex. 1026) as business confidential information, to be
`kept separate from the patent file, is GRANTED; and
`
`FURTHER ORDERED that the instant proceeding is TERMINATED.
`
`
`
`
`
`
`
`
`
`
`
`3
`
`
`
`
`
`
`
`IPR2018-00079
`Patent 6,346,532 B1
`Reexamination 6,346,532 C1
`
`PETITIONER:
`
`Brian J. Sodikoff
`Martin Masar III
`KATTEN MUCHIN ROSEMAN LLP
`brian.sodikoff@kattenlaw.com
`martin.masar@kattenlaw.com
`
`PATENT OWNER:
`
`Robert L. Baechtold
`Scott K. Reed
`Simon D. Roberts
`FITZPATRICK, CELLA, HARPER & SCINTO
`astellas532ipr@fchs.com
`sreed@fchs.com
`sroberts@fchs.com
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`4
`
`
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