`Trials@uspto.gov
`571-272-7822 Entered: September 10, 2018
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MYLAN TECHNOLOGIES, INC.,
`Petitioner,
`
`v.
`
`NOVEN PHARMACEUTICALS, INC.,
`Patent Owner.
`____________
`
`Case IPR2018-01119
`Patent 9,833,419 B2
`____________
`
`
`
`Before SUSAN L. C. MITCHELL, ZHENYU YANG, and KRISTI L. R.
`SAWERT, Administrative Patent Judges.
`
`SAWERT, Administrative Patent Judge.
`
`
`
`
`
`DECISION
`Granting Joint Motion to Terminate
`Due to Settlement Prior to Institution
`35 U.S.C. § 317; 37 C.F.R. §§ 42.72, 42.74
`
`
`
`
`
`
`
`
`
`
`IPR2018-01119
`Patent 9,833,419 B2
`
`
`
`
`
`
`On September 5, 2018, Mylan Technologies, Inc. (“Petitioner”) and
`Noven Pharmaceuticals, Inc. (“Patent Owner”) filed a joint motion to
`terminate this proceeding pursuant to 35 U.S.C. § 317(a) and 37 C.F.R.
`§ 42.72. Paper 7 (“Motion” or “Mot.”). The motion was accompanied by a
`true, unredacted copy of a binding settlement term sheet (Ex. 2025), and a
`joint request to treat the binding settlement term sheet 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 parties represent in their joint motion that they “have settled their
`dispute and executed a binding term sheet to terminate th[is] inter partes
`review[].” Mot. 1. The parties state that the binding settlement term sheet
`“reflects all essential terms of a settlement agreement between the [p]arties.”
`Id. at 2. Additionally, the parties state that they have filed identical motions
`to terminate the related inter partes review proceedings IPR2018-00173 and
`IPR2018-00174, and that the related district court case between the parties,
`Noven Pharmaceuticals, Inc. v. Mylan Technologies Inc., 1:17-cv-01777
`(D. Del.), and related Federal Circuit Appeal No. 18-2287, have been
`dismissed. Id. at n.1, 3–4.
`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. This proceeding is in a preliminary stage.
`No decision on whether to institute trial has been issued. Under the
`circumstances presented here, we determine that it is appropriate to
`
`
`
`2
`
`
`
`
`
`IPR2018-01119
`Patent 9,833,419 B2
`
`
`
`terminate this preliminary proceeding with respect to 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 binding settlement term
`sheet 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 binding settlement term sheet 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’
`binding settlement term sheet as business confidential information, to be
`kept separate from the patent file, is GRANTED; and
`
`FURTHER ORDERED that the instant proceeding is TERMINATED.
`
`
`
`
`
`
`
`
`
`
`
`3
`
`
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`
`
`
`
`IPR2018-01119
`Patent 9,833,419 B2
`
`
`FOR PETITIONER:
`Steven Parmelee
`sparmelee@wsgr.com
`
`Michael Rosato
`mrosato@wsgr.com
`
`Jad Mills
`jmills@wsgr.com
`
`
`FOR PATENT OWNER:
`
`Courtenay C. Brinckerhoff
`CBrinckerhoff@foley.com
`
`Jason N. Mock
`JMock@foley.com
`
`
`
`
`
`
`
`
`
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`
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`
`
`
`
`4
`
`
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