`571-272-7822
`
`
` Paper: 33
`
` Entered: June 23, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FRESENIUS KABI USA, LLC and FRESENIUS KABI
`SWISSBIOSIM GmbH,
`Petitioner,
`
`v.
`
`AMGEN INC.,
`Patent Owner.
`____________
`
`
`
`
`
`IPR2019-01183
`Patent 9,643,997 B2
`____________
`
`Before ZHENYU YANG, CHRISTOPHER G. PAULRAJ, and
`KRISTI L. R. SAWERT, Administrative Patent Judges.
`
`SAWERT, Administrative Patent Judge.
`
`
`
`
`TERMINATION
`Due to Settlement After Institution of Trial
`35 U.S.C. § 317; 37 C.F.R. § 42.74
`
`
`
`
`
`
`IPR2019-01183
`Patent 9,643,997 B2
`
`
`
`
`
`On June 18, 2020, pursuant to the Board’s authorization, Fresenius
`Kabi USA, LLC and Fresenius Kabi SwissBioSim GmbH (“Petitioner”) and
`Amgen Inc. (“Patent Owner”) filed a joint motion to terminate this inter
`partes review pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. § 42.72.
`Paper 30 (“Joint Motion” or “Mot.”). The Joint Motion was accompanied
`by a true, unredacted copy of a Settlement Agreement, a related License
`Agreement, and a Confidentiality Agreement between the parties (Exhibit
`1070), along with a joint request to treat Exhibit 1070 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 31).
`The parties represent in their Joint Motion that they have agreed to
`terminate this inter partes review proceeding. Mot. 1. In particular, the
`parties state that they “have settled their dispute relating to” U.S. Patent
`No. 9,643,997 B2 (“the ’997 patent”), the patent challenged in this
`proceeding. Id. The parties state that, out of the previously-identified
`district-court cases involving the ’997 patent, i.e., Amgen Inc. v. Kashiv
`Biosciences, LLC, No. 2:18-cv-03347 (D.N.J.), Amgen Inc. v. Mylan Inc.,
`No. 2:17-cv-01235 (W.D. Pa.), Amgen Inc. v. Hospira Inc., No. 1:18-cv-
`01064 (D. Del.), and Sandoz Inc. v. Amgen Inc., No. 3:19-cv-00977 (N.D.
`Cal.), “Amgen v. Hospira is the only case currently pending involving the
`’997 patent.” Id. at 3. The parties also state that “[t]he only other inter
`partes review involving the '997 patent, IPR2019-00797, was previously
`terminated.” Id.
`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,
`
`
`
`2
`
`
`
`
`
`IPR2019-01183
`Patent 9,643,997 B2
`
`
`2012); see also 37 C.F.R. § 42.72. Here, although the Board has instituted
`inter partes review of the ’997 patent, neither Petitioner’s Reply nor Patent
`Owner’s Sur-reply have been filed. The Board has not heard oral argument
`and has not decided the merits of the proceeding.
`Under the circumstances presented here, therefore, we determine that
`it is appropriate to terminate this proceeding with respect to both Petitioner
`and Patent Owner. And, after reviewing the Joint Motion to terminate and
`the agreements included in Exhibit 1070, we determine that the parties have
`satisfied the requirements for settlement under 35 U.S.C. § 317(b) and 37
`C.F.R. § 42.74. See DTN, LLC v. Farms Technology, LLC, IPR2018-01412,
`Paper 21 (PTAB June 14, 2019) (precedential) (requiring all collateral
`agreements to be filed as part of a settlement). 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 Settlement Agreement
`treated as business confidential information and kept separate from the files
`of the ’997 patent in this proceeding. Thus, we grant the parties’ request to
`treat the Settlement Agreement as business confidential.
`Accordingly, it is
`ORDERED that the Joint Motion to terminate is GRANTED;
`FURTHER ORDERED that the joint request to treat the parties’
`Settlement Agreement (Exhibit 1070) as business confidential information,
`to be kept separate from the patent file, is GRANTED; and
`FURTHER ORDERED that the instant proceedings are
`TERMINATED.
`
`
`
`
`
`
`3
`
`
`
`
`
`
`
`IPR2019-01183
`Patent 9,643,997 B2
`
`FOR PETITIONER:
`Huiya Wu
`Linnea Cipriano
`Jenny Zhang
`Robert Cerwinski
`GOODWIN PROCTER LLP
`hwu@goodwinlaw.com
`lcipriano@goodwinlaw.com
`jzhang@goodwinlaw.com
`rcerwinski@goodwinlaw.com
`
`Hanna Yoon
`FRESENIUS KABI USA
`hanna.yoon@fresenius-kabi.com
`
`
`FOR PATENT OWNER:
`
`J. Steven Baughman
`Megan Raymond
`PAUL, WEISS, RIFKIND, WHARTON
` & GARRISON LLP
`sbaughman@paulweiss.com
`mraymond@paulweiss.com
`
`
`
`
`
`
`
`
`4
`
`
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