`
`Trials@uspto.gov Paper No. 13
`571.272.7822
`
` Entered: July 18, 2019
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`VALERITAS, INC. and VALERITAS HOLDINGS, INC.,
`Petitioners,
`
`v.
`
`ROCHE DIABETES CARE, INC.,
`Patent Owner.
`____________
`
`Case IPR2019-00552 (Patent 6,736,795 B2)
` Case IPR2019-00553 (Patent 6,736,795 B2)1
`____________
`
`
`
`Before JON B. TORNQUIST, WESLEY B. DERRICK, and
`JACQUELINE T. HARLOW, Administrative Patent Judges.
`
`DERRICK, Administrative Patent Judge.
`
`
`ORDER
`Dismissing the Proceedings
`37 C.F.R. § 42.5(a), 37 C.F.R. § 42.71(a)
`
`
`
`
`1 This Order addresses issues that are the same in the above-identified
`proceedings. We exercise our discretion to issue one Order to be entered in
`each proceeding. The Parties are not authorized to use this joint heading and
`filing style in their papers.
`
`
`
`
`
`IPR2019-00552 (Patent 6,736,795 B2)
`IPR2019-00553 (Patent 6,736,795 B2)
`
`
`On July 16, 2019, with Board authorization, the parties filed a Joint
`Motion to Terminate in each of these proceedings (Paper 10 in both
`proceedings). With each motion to terminate, the parties filed a copy of a
`written settlement agreement (Paper 11 in both proceedings2) along with a
`joint motion requesting that the settlement agreement be treated as business
`confidential information and kept separate from the files of the identified
`patents (Paper 12 in both proceedings).
`The parties indicate in the Joint Motion to Terminate that they have
`“settled their dispute and executed a settlement agreement3 . . . to terminate
`all pending inter partes reviews and Parties’ related litigation involving the
`’795 Patent.”4 IPR2019-00552, Paper 10, 1. “The Parties further certify that
`there are no collateral agreements or understandings made in connection
`with, or in contemplation of, the termination of the present inter partes
`review[s].” Id.
`Generally, the Board expects that a proceeding will terminate after the
`filing of a settlement agreement. See, e.g., Office Patent Trial Practice
`Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012). This case is in the
`preliminary proceeding stage, which begins with the filing of a petition for
`instituting a trial—which has occurred in these cases—and ends with a
`
`
`2 While identified as Exhibit 1012 in IPR2019-00552 and Exhibit 1014 in
`IPR2019-00553, both were filed as Paper 11. We accept the written
`settlement agreement filed as a paper in this instance, excusing the
`corresponding mis-citation to Exhibits 1012 and 1014 in the Joint Motion to
`Terminate.
`3 The settlement agreement filed as Paper 11 is identified as “a true copy of
`the [settlement agreement]” by reference to Exhibit 1012 in IPR2019-00552
`(Paper 10, 2) and Exhibit 1014 in IPR2019-00553 (Paper 10, 2).
`4 We cite to the papers filed in IPR2019-00552.
`
`2
`
`
`
`IPR2019-00552 (Patent 6,736,795 B2)
`IPR2019-00553 (Patent 6,736,795 B2)
`
`written decision as to whether a trial will be instituted—which has not yet
`occurred. See 37 C.F.R. § 42.2.
`Based on the facts of these cases, and in view of the Parties’ Joint
`Motion to Terminate in these proceedings, we determine that it is
`appropriate to dismiss the Petition in both of these proceedings without
`rendering either a decision to institute or a final written decision. See
`37 C.F.R. §§ 42.5(a); 42.71(a). We also determine that it is appropriate to
`treat the settlement agreement as business confidential information to be
`kept separate from the files of U.S. Patent No. 6,736,795 B2. See 35 U.S.C.
`§ 317(b).
`This Order does not constitute a final written decision pursuant to
`35 U.S.C. § 318(a).
`In consideration of the foregoing, it is hereby:
`ORDERED that the Joint Motions are granted;
`FURTHER ORDERED that the Petitions for Inter Partes Review of
`the above-referenced patent are dismissed; and
`FURTHER ORDERED that the settlement agreement between the
`parties (Paper 11) shall be treated as business confidential information and
`kept separate from the files of U.S. Patent No. 6,736,795 B2.
`
`
`
`
`
`
`3
`
`
`
`IPR2019-00552 (Patent 6,736,795 B2)
`IPR2019-00553 (Patent 6,736,795 B2)
`
`For PETITIONER:
`Sanjay Murthy
`John Hemmer
`Maria Doukas
`MORGAN, LEWIS & BOCKIUS LLP
`sanjay.murthy@morganlewis.com
`john.hemmer@morganlewis.com
`maria.doukas@morganlewis.com
`
`For PATENT OWNER:
`Michael Hawkins
`Thomas Reger II
`Craig Deutsch
`Sangki Park
`FISH & RICHARDSON P.C.
`hawkins@fr.com
`reger@fr.com
`deutsch@fr.com
`spark@fr.com
`
`
`4
`
`
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