`571-272-7822
`
`
`
`
`
` Paper No. 21
`Entered: August 7, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`KASHIV PHARMA, LLC,
`Petitioner
`
`v.
`
`PURDUE PHARMA L.P.
`THE P.F. LABORATORIES, INC., and
`PURDUE PHARMACEUTICALS L.P.
`Patent Owners.
`____________
`
`Case IPR2018-00625 (Patent 9,492,392 B2)
`Case IPR2018-00717 (Patent 9,492,393 B2)
`____________
`
`
`
`
`
`Before CHRISTOPHER G. PAULRAJ, JACQUELINE T. HARLOW, and
`KRISTI L. R. SAWERT, Administrative Patent Judges.
`
`PAULRAJ, Administrative Patent Judge.
`
`
`ORDER AUTHORIZING FILING OF MOTION TO TERMINATE;
`SUSPENDING DEADLINES
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`
`IPR2018-00625 (Patent 9,492,392 B2)
`IPR2018-00717 (Patent 9,492,393 B2)
`
`
`
`In a telephone conference with the panel held on August 6, 2018,
`
`counsel for Petitioner and Patent Owner stated that the parties seek to
`
`terminate these proceedings due to an impending settlement. The parties
`
`also requested that the Board suspend the discovery and supplemental
`
`briefing deadlines set forth in our Decision Granting Patent Owner’s Motion
`
`for Additional Discovery and Authorizing Supplemental Briefing (Paper 20)
`
`in view of the pending settlement and request to terminate.
`
`
`
`The parties are authorized to file a Joint Motion to Terminate this
`
`proceeding. The Joint Motion to Terminate must update the Board
`
`concerning the status of any litigation or proceeding, including, but not
`
`limited to proceedings in the U.S. Patent and Trademark Office, involving
`
`the subject patents. The Joint Motion to Terminate must be filed by
`
`August 9, 2018. The deadlines previously set forth in Paper 20 are also
`
`hereby suspended.
`
`
`
`The parties may agree to settle any issue in a proceeding pursuant to a
`
`written agreement, a copy of which shall be filed with the Board before
`
`termination of the trial. 37 C.F.R. § 42.74(a)-(b). Any agreement or
`
`understanding between the patent owner and a petitioner, including any
`
`collateral agreements referred to in such agreement or understanding made
`
`in connection with, or in contemplation of, the termination of an inter partes
`
`review shall be in writing, and a true copy of such agreement or
`
`understanding shall be filed in the Office before the termination of such
`
`review as between the parties. 35 U.S.C. § 317(b).
`
`
`
`
`
`
`
`2
`
`
`
`IPR2018-00625 (Patent 9,492,392 B2)
`IPR2018-00717 (Patent 9,492,393 B2)
`
`
`
`A party to a settlement may request that any written agreement be
`
`treated as business confidential information and be kept separate from the
`
`files of an involved patent. 35 U.S.C. § 317(b); 37 C.F.R § 42.74(c). The
`
`request must be filed with the settlement. Id.
`
`
`
`
`
`Accordingly, it is:
`
`ORDERED that the parties are authorized to file, by August 9, 2018, a
`
`Joint Motion to Terminate the proceedings in IPR2018-00625 and
`
`IPR2018-00717; and
`
`
`
`FURTHER ORDERED that the parties are authorized to file, by
`
`August 9, 2018, a Joint Request that the Settlement Agreement Be Treated
`
`as Business Confidential Information; and
`
`
`
`FURTHER ORDERED that that the deadlines set forth in our
`
`Decision Granting Patent Owner’s Motion for Additional Discovery and
`
`Authorizing Supplemental Briefing (Paper 20) are suspended pending
`
`resolution of the Joint Motion to Terminate.
`
`
`
`
`
`
`
`3
`
`
`
`IPR2018-00625 (Patent 9,492,392 B2)
`IPR2018-00717 (Patent 9,492,393 B2)
`
`PETITIONER:
`
`Tedd W. Van Buskirk
`Michael H. Teschner
`Nichole M. Valeyko
`Maegan Fuller
`LERNER DAVID LITTENBERG KRUMHOLZ & MENTLIK, LLP
`tvanbuskirk@lernerdavid.com
`mteschner@lernerdavid.com
`nvaleyko@lernerdavid.com
`mfuller.ipr@ldlkm.com
`
`PATENT OWNER:
`
`Gasper J. LaRosa
`Kelsey I. Nix
`Pablo Hendler
`Kenneth S. Canfield
`Sarah A. Geers
`Christopher J. Harnett
`Lisamarie LoGiudice
`JONES DAY
`gjlarose@jonesday.com
`knix@jonesday.com
`phendler@jonesday.com
`kcanfield@jonesday.com
`sgeers@jonesday.com
`charnett@jonesday.com
`llogiudice@jonesday.com
`
`
`
`
`
`4
`
`
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