`571-272-7822 Date: June 12, 2019
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`MERCK SHARP & DOHME CORP.,
`Petitioner,
`
`v.
`
`GLAXOSMITHKLINE BIOLOGICALS SA,
`Patent Owner.
`
`
`
`Case IPR2018-01229 (Patent No. 8,753,645)
`Case IPR2018-01236 (Patent No. 8,753,645)
`Case IPR2018-01234 (Patent No. 9,265,839)
`Case IPR2018-01237 (Patent No. 9,265,839)
`Case IPR2019-00230 (Patent No. 9,422,345)
`Case IPR2019-00241 (Patent No. 9,422,345)
`
`
`
`Before SHERIDAN K. SNEDDEN, JO-ANNE M. KOKOSKI, and
`RICHARD J. SMITH, Administrative Patent Judges.
`
`SNEDDEN, Administrative Patent Judge.
`
`JUDGMENT1
`Granting Joint Motion to Terminate Proceedings Due to
`Settlement after Institution and
`Granting Joint Motion to Treat Settlement Agreement as
`Business Confidential Information
`35 U.S.C. § 317 and 37 C.F.R. §§ 42.5, 42.72, 42.73, 42.74
`
`1 This Order addresses issues that are common to all six cases. We,
`therefore, issue a single Order that has been entered in each case.
`
`
`
`
`IPR2018-01229, -01236 (Patent No. 8,753,645)
`IPR2018-01234, -01237 (Patent No. 9,265,839)
`IPR2019-00230, -00241 (Patent No. 9,422,345)
`
`On May 29, 2019, the parties filed a joint motion to terminate inter
`partes review pursuant to 35 U.S.C. § 317. Paper 26. 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. 1076. 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 patents, under 35 U.S.C. § 317(b) and
`37 C.F.R. § 42.74(c). Paper 27.
`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 disputes and have
`agreed to terminate the proceedings.” Paper 26, 2; see also id. at 3 (stating
`that there are no district court litigations involving any of the patents
`involved in these proceedings).
`Upon consideration of the facts before us, we determine that it is
`appropriate to terminate each 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
`
`
`2 Identical papers were filed in each of the identified cases. Hereinafter,
`reference will be made to papers filed in IPR2018-01229.
`2
`
`
`
`
`
`IPR2018-01229, -01236 (Patent No. 8,753,645)
`IPR2018-01234, -01237 (Patent No. 9,265,839)
`IPR2019-00230, -00241 (Patent No. 9,422,345)
`
`of the patent at issue in this proceeding. Thus, we grant the joint motion to
`treat the settlement agreement as business confidential and to keep it
`designated as Board only.
`
`ORDER
`
`Accordingly, it is
`ORDERED that the joint motion to terminate due to settlement after
`institution (Paper 26) is granted;
`FURTHER ORDERED that the joint motion to treat the settlement
`agreement as business confidential information (Paper 27) is granted; and
`FURTHER ORDERED that the instant proceedings are terminated
`with respect to Petitioner and Patent Owner.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`3
`
`
`
`IPR2018-01229, -01236 (Patent No. 8,753,645)
`IPR2018-01234, -01237 (Patent No. 9,265,839)
`IPR2019-00230, -00241 (Patent No. 9,422,345)
`
`PETITIONER:
`
`Anthony Insogna
`Nikolaos George
`Gasper LaRosa
`Lisamarie LoGiudice
`Catharina Chin Eng
`JONES DAY
`aminsogna@jonesday.com
`ncgeorge@jonesday.com
`gjlarosa@jonesday.com
`llogiudice@jonesday.com
`cjchineng@jonesday.com
`
`Arlene Chow
`Ernest Yakob
`HOGAN LOVELLS US LLP
`arlene.chow@hoganlovells.com
`ernest.yakob@hoganlovells.com
`
`
`PATENT OWNER:
`
`Charles E. Lipsey
`Rich B. Racine
`Joann M. Neth
`Amanda Murphy
`Yieyie Yang
`Trenton Ward
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
`charles.lipsey@finnegan.com
`rich.racine@finnegan.com
`joann.neth@finnegan.com
`amanda.murphy@finnegan.com
`yieyie.yang@finnegan.com
`trenton.ward@finnegan.com
`
`
`
`
`4
`
`
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