Trials@uspto.gov
`571-272-7822
`
` Paper 15
`Entered: June 3, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`WEST-WARD PHARMACEUTICALS INTERNATIONAL LIMITED n/k/a
`HIKMA PHARMACEUTICALS INTERNATIONAL LIMITED
`Petitioner,
`
`v.
`
`NOVARTIS PHARMACEUTICALS CORP.,
`Patent Owner.
`____________
`
`Case IPR2017-015921
`Patent 8,410,131 B2
`____________
`
`Before SHERIDAN K. SNEDDEN, ROBERT A. POLLOCK, and
`JACQUELINE T. HARLOW, Administrative Patent Judges.
`
`POLLOCK, Administrative Patent Judge.
`
`JUDGMENT
`Granting Joint Motion to Terminate Proceeding Due to
`Settlement after Institution,
`Granting Joint Motion to Treat Settlement Agreement as
`Business Confidential Information, and
`Denying Joint Motion for Protective Order
`35 U.S.C. § 317 and 37 C.F.R. §§ 42.5, 42.54, 42.72, 42.74
`
`1 IPR2018-00507 has been joined to this proceeding.
`
`
`571-272-7822
`
` Paper 15
`Entered: June 3, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`WEST-WARD PHARMACEUTICALS INTERNATIONAL LIMITED n/k/a
`HIKMA PHARMACEUTICALS INTERNATIONAL LIMITED
`Petitioner,
`
`v.
`
`NOVARTIS PHARMACEUTICALS CORP.,
`Patent Owner.
`____________
`
`Case IPR2017-015921
`Patent 8,410,131 B2
`____________
`
`Before SHERIDAN K. SNEDDEN, ROBERT A. POLLOCK, and
`JACQUELINE T. HARLOW, Administrative Patent Judges.
`
`POLLOCK, Administrative Patent Judge.
`
`JUDGMENT
`Granting Joint Motion to Terminate Proceeding Due to
`Settlement after Institution,
`Granting Joint Motion to Treat Settlement Agreement as
`Business Confidential Information, and
`Denying Joint Motion for Protective Order
`35 U.S.C. § 317 and 37 C.F.R. §§ 42.5, 42.54, 42.72, 42.74
`
`1 IPR2018-00507 has been joined to this proceeding.
`
`
`
`IPR2017-01592
`Patent 8,410,131 B2
`
`
`On May 23, 2019, Petitioner Hikma Pharmaceuticals International Limited
`
`(“Hikma”) and Patent Owner Novartis Pharmaceuticals Corporation (“Novartis”)
`
`filed a Joint Motion to Terminate IPR Pursuant to 35 U.S.C. § 317. Paper 85. The
`
`parties “confirm that the grant of this Joint Motion to Terminate will fully dispose
`
`of IPR2017-01592 and any joined proceedings.” Id. at 2.
`
`The parties filed a copy of their Settlement Agreement, made in connection
`
`with the termination of these proceedings, in accordance with 35 U.S.C. § 317 and
`
`37 C.F.R. § 42.74. Ex. 2116. The parties also filed a Joint Motion to treat the
`
`Settlement Agreement as business confidential information and to 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 86.
`
`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 Joint Motion to Terminate, Patent Owner and Petitioner
`
`aver that they “have settled their dispute.” Paper 85, 2; see also id. at 3 (stating
`
`that and that the pending litigation between Patent Owner and Petitioner regarding
`
`the patent at issue here “has been settled”).
`
`Upon consideration of the facts before us, we determine that it is appropriate
`
`to terminate this proceeding and enter judgment, without rendering a final written
`
`decision. See 37 C.F.R. §§ 42.5(a), 42.71(a), 42.73(a), 42.74. Accordingly, we
`
`grant the 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
`
`2
`
`
`
`IPR2017-01592
`Patent 8,410,131 B2
`
`
`this proceeding. Thus, we grant the Joint Motion to treat the Settlement
`
`Agreement as business confidential and to keep it designated as Board only.
`
`We note that in the Joint Motion to treat the Settlement Agreement as
`
`business confidential, the parties also request that “only parties Novartis and
`
`Hikma and their respective party representatives and in-house counsel shall have
`
`access to confidential information, such as Exhibit 2116” and “[n]either party’s
`
`experts nor employees shall have access to confidential information, including
`
`Exhibit 2116.” Paper 86, 2 (referencing the protective order discussed below). To
`
`the extent that the Joint Motion to treat the Settlement Agreement as business
`
`confidential departs from the provisions of 37 C.F.R. § 42.74(c), we DENY that
`
`portion of the motion.2
`
`Additionally, the parties filed a Joint Motion for Protective Order (Paper 87)
`
`and a copy of the Board’s default protective order with certain proposed
`
`modifications (Ex. 2117).3 Although we might infer that the parties intend that
`
`their proposed protective order apply to the Settlement Agreement, the Joint
`
`
`
`2 See 37 C.F.R. § 42.74(c): Request to keep separate. A party to a settlement may
`request that the settlement be treated as business confidential information and be
`kept separate from the files of an involved patent or application. The request must
`be filed with the settlement. If a timely request is filed, the settlement shall only be
`available:
`(1) To a Government agency on written request to the Board; or
`(2) To any other person upon written request to the Board to make the
`settlement agreement available, along with the fee specified in § 42.15(d)
`and on a showing of good cause.
`3 The parties filed a copy of the default protective order with their proposed
`modifications both as an appendix to the Joint Motion for Protective Order
`(Paper 87, 4–10) and as an Exhibit (Ex. 2117).
`3
`
`
`
`IPR2017-01592
`Patent 8,410,131 B2
`
`
`Motion for Protective Order is not accompanied by a Motion to Seal; nor does it
`
`otherwise identify with particularity any information sought to be kept
`
`confidential.4
`
`There is a strong public policy that favors making information filed in an
`
`inter partes review open to the public. Garmin Int’l v. Cuozzo Speed Techs., LLC,
`
`IPR2012–00001, slip op. at 1–2 (PTAB Mar. 14, 2013) (Paper 34). For this
`
`reason, except as otherwise ordered, the record of an inter partes review trial shall
`
`be made available to the public. See 35 U.S.C. § 316(a)(1); 37 C.F.R. § 42.14.
`
`The standard for granting a motion to seal is good cause. 37 C.F.R. § 42.54.
`
`That standard includes showing that the information addressed in the motion to
`
`seal is truly confidential, and that such confidentiality outweighs the strong public
`
`interest in having the record open to the public. See Garmin, slip op. at 2–3.
`
`Here, the parties have not filed a Motion to Seal and have not shown good
`
`cause that the protections provided by 37 C.F.R. § 42.74 are inadequate to protect
`
`the Settlement Agreement. Accordingly, we deny the Joint Motion for Protective
`
`Order without prejudice. If the parties wish to renew their request, they should
`
`file, within one week of this ORDER, a joint motion to seal, as well as the default
`
`protective order with their proposed modifications. The parties should also file a
`
`copy of their proposed protective order showing all the changes from the default
`
`protective order in redline. See 37 C.F.R. § 42.54.
`
`
`
`4 See 37 C.F.R. § 42.54(a): A party may file a motion to seal where the motion to
`seal contains a proposed protective order, such as the default protective order set
`forth in the Office Patent Trial Practice Guide. The motion must include a
`certification that the moving party has in good faith conferred or attempted to
`confer with other affected parties in an effort to resolve the dispute.
`4
`
`
`
`IPR2017-01592
`Patent 8,410,131 B2
`
`
`Accordingly, it is
`
`ORDER
`
`ORDERED that the joint motion of Patent Owner and Petitioner to treat the
`
`Settlement Agreement as business confidential information and to be kept separate
`
`from the patent file, is GRANTED;
`
`FURTHER ORDERED that we GRANT the joint motion of Patent Owner
`
`and Petitioner to maintain the Settlement Agreement as Board only;
`
`FURTHER ORDERED that the joint motion for entry of a proposed
`
`protective order is DENIED WITHOUT PREJUDICE;
`
`FURTHER ORDERED that, within one week of this Order, the parties my
`
`file a joint motion for entry of a proposed protective order and accompanying
`
`motion to seal;
`
`FURTHER ORDERED that the joint motion to terminate the proceedings is
`
`GRANTED; and
`
`FURTHER ORDERED that the instant proceeding is TERMINATED with
`
`respect to Petitioner and Patent Owner.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`5
`
`
`
`IPR2017-01592
`Patent 8,410,131 B2
`
`
`PETITIONER:
`
`Jennifer Bailey
`jbailey@hoveywilliams.com
`
`Scott Brown
`Sbrown.ptab@hoveywilliams.com
`
`
`
`PATENT OWNER:
`
`John Kasha
`John.kasha@kashalaw.com
`
`Kelly Kasha
`Kelly.kasha@kashalaw.com
`
`
`
`6
`
`
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