Trials@uspto.gov
`571-272-7822
`
`
` Paper No. 24
`Entered: August 21, 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)1
`____________
`
`
`Before CHRISTOPHER G. PAULRAJ, JACQUELINE T. HARLOW, and
`KRISTI L. R. SAWERT, Administrative Patent Judges.
`
`PAULRAJ, Administrative Patent Judge.
`
`
`DECISION
`Granting Joint Motions to Terminate and
`Granting Joint Requests to File Settlement Materials as
`Business Confidential Information
`37 C.F.R. §§ 42.5(a), 42.71(a), 42.74
`
`
`
`1 We exercise our discretion to issue one Decision to be filed in both cases.
`The parties are not authorized to use this style heading for any subsequent
`papers.
`
`
`571-272-7822
`
`
` Paper No. 24
`Entered: August 21, 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)1
`____________
`
`
`Before CHRISTOPHER G. PAULRAJ, JACQUELINE T. HARLOW, and
`KRISTI L. R. SAWERT, Administrative Patent Judges.
`
`PAULRAJ, Administrative Patent Judge.
`
`
`DECISION
`Granting Joint Motions to Terminate and
`Granting Joint Requests to File Settlement Materials as
`Business Confidential Information
`37 C.F.R. §§ 42.5(a), 42.71(a), 42.74
`
`
`
`1 We exercise our discretion to issue one Decision to be filed in both cases.
`The parties are not authorized to use this style heading for any subsequent
`papers.
`
`
`
`IPR2018-00625 (Patent 9,492,392 B2)
`IPR2018-00717 (Patent 9,492,393 B2)
`
`
`INTRODUCTION
`I.
`On August 9, 2018, Petitioner and Patent Owner (collectively referred
`to as “the Parties”) filed a Joint Motion to Terminate in each of the above-
`identified inter partes review proceedings, pursuant to a settlement
`agreement. Paper 22 (“Joint Motion”).2 Along with the Joint Motion, the
`Parties filed confidential versions of a Settlement Agreement (Ex. 2030),
`Releases (Ex. 2031 and 2032), a Patent License Agreement (Ex. 2033), and
`a Distribution and Supply Agreement (Ex. 2034) (collectively referred to as
`“the Settlement Materials”), as well as a Joint Request to File the Settlement
`Materials as Business Confidential Information and Maintain the Settlement
`Materials Separate from the Public File pursuant to 35 U.S.C. § 317(b) and
`37 C.F.R. § 42.74(c) (Paper 23 (“Joint Request”)).
`II. DISCUSSION
`In the Joint Motion, the Parties represent that they have reached an
`agreement to jointly seek termination of these inter partes review
`proceedings, and that the filed copies of the Settlement Materials are true
`and complete copies. Joint Motion 2. The Parties further represent that their
`settlement agreement resolves all currently pending Patent Office and
`District Court proceedings between the Parties involving the challenged
`patents. Id at 3.
`These cases are at the preliminary proceeding stage;3 no institution of
`a trial has been made. Based on the facts of this case, we determine that
`
`
`2 For purposes of expediency, we cite to Papers and Exhibits filed in
`IPR2018-00625. Similar Papers and Exhibits were filed in IPR2018-00717.
`3 A preliminary proceeding begins with the filing of a petition for instituting
`a trial and ends with a written decision as to whether a trial will be instituted.
`37 C.F.R. § 42.2.
`
`
`
`2
`
`
`
`IPR2018-00625 (Patent 9,492,392 B2)
`IPR2018-00717 (Patent 9,492,393 B2)
`
`good cause exists to dismiss these proceedings, without rendering a decision
`as to whether a trial will be instituted.
`The Parties also filed a Joint Request that the Settlement Materials be
`treated as business confidential information and be kept separate from the
`publicly available file of the respective patents involved in these inter partes
`proceedings. Joint Request 2. We have reviewed the Settlement Materials
`and find that they contain confidential business information regarding the
`terms of settlement. We determine that good cause exists to treat the
`Settlement Materials between Petitioner and Patent Owner as business
`confidential information pursuant to 35 U.S.C. § 317(b) and 37 C.F.R.
`§ 42.74(c).
`
`III. ORDER
`Accordingly, for the reasons discussed above, it is:
`ORDERED that the Joint Motion to Terminate (IPR2018-00625,
`Paper 22) is granted, and IPR2018-00625 is dismissed;
`FURTHER ORDERED that the Joint Motion to Terminate (IPR2018-
`00717, Paper 22) is granted, and IPR2018-00717 is dismissed;
`
`FURTHER ORDERED that the Joint Request (IPR2018-00625, Paper
`23) for the Settlement Materials (Exhibits 2030–2034) to be treated as
`business confidential information and be kept separate from the file of U.S.
`Patent No. 9,492,392, pursuant to 35 U.S.C. § 317(b) and 37 C.F.R.
`§ 42.74(c), is granted; and
`
`FURTHER ORDERED that the Joint Request (IPR2018-00717, Paper
`23) for the Settlement Materials (Exhibits 2030–2034) to be treated as
`business confidential information and be kept separate from the file of U.S.
`
`
`
`
`3
`
`
`
`IPR2018-00625 (Patent 9,492,392 B2)
`IPR2018-00717 (Patent 9,492,393 B2)
`
`Patent No. 9,492,393, pursuant to 35 U.S.C. § 317(b) and 37 C.F.R.
`§ 42.74(c), is granted.
`
`
`
`
`
`
`
`
`4
`
`
`
`IPR2018-00625 (Patent 9,492,392 B2)
`IPR2018-00717 (Patent 9,492,393 B2)
`
`For PETITIONER:
`Tedd W. Van Buskirk
`Michael H. Teschner
`Maegan A. Fuller
`Nichole M. Valeyko
`LERNER, DAVID, LITTENBERG,
`KRUMHOLZ & MENTLIK, LLP
`tvanbuskirk@lernerdavid.com
`MTeschner.ipr@ldlkm.com
`MFuller.ipr@ldlkm.com
`nvaleyko@lernerdavid.com
`
`For PATENT OWNER:
`Gasper J. LaRosa
`Kelsey I. Nix
`Pablo Hendler
`Kenneth S. Canfield
`Sarah A. Geers
`Christopher Harnett
`Lisamarie LoGiudice
`JONES DAY
`gjlarosa@jonesday.com
`knix@jonesday.com
`phendler@jonesday.com
`kcanfield@jonesday.com
`sgeers@jonesday.com
`charnett@jonesday.com
`llogiudice@jonesday.com
`
`
`
`5
`
`
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