`571-272-7822
`
`Paper 22
` Entered: September 3, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`BAUSCH HEALTH COMPANIES INC., and
`BAUSCH HEALTH US LLC,
`Petitioner,
`v.
`FLOW PHARMA INC.,
`Patent Owner.
`
`IPR2020-00165
`Patent 8,138,157 B2
`
`Before SUSAN L. C. MITCHELL, ROBERT A. POLLACK, and
`JOHN E. SCHNEIDER, Administrative Patent Judges.
`SCHNEIDER, Administrative Patent Judge.
`
`
`
`TERMINATION
`Due to Settlement after Institution of Trial
`35 U.S.C. § 317, 37 C.F.R. §§ 42.72, 42.74
`
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`IPR2020-00165
`Patent 8,138,157 B2
`With our permission, Petitioners Bausch Health Companies Inc. and
`Bausch Health US LLC and Patent Owner Flow Pharma Inc. filed a Joint
`Motion to Terminate this proceeding pursuant to 35 U.S.C. § 317. Paper 20.
`Pursuant to 35 U.S.C. § 317(b), they filed a true and correct copy of a
`settlement agreement, a related license agreement, and a confidentiality
`agreement between the parties. Ex. 1042. In addition, they also jointly
`requested that Exhibit 1042 be filed as business confidential information,
`and be kept separate from the publically available patent files. Paper 21.
`Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under
`this chapter shall be terminated with respect to any petitioner upon the joint
`request of the petitioner and the patent owner, unless the Office has decided
`the merits of the proceeding before the request for termination is filed.” The
`statute also requires:
`Any agreement or understanding between the patent owner and
`a petitioner, including any collateral agreements referred to in
`such agreement or understanding, made in connection with, or
`in contemplation of, the termination of an inter partes review
`under this section shall be in writing and a true copy of such
`agreement or understanding shall be filed in the Office before
`the termination of the inter partes review as between the parties.
`35 U.S.C. § 317(b).
`Under 37 C.F.R. § 42.72, “[t]he Board may terminate a trial without
`rendering a final written decision, where appropriate, including . . . pursuant
`to a joint request under 35 U.S.C. 317(a).” Additionally, 37 C.F.R.
`§ 42.74(b) provides that “[a]ny agreement or understanding between the
`parties made in connection with, or in contemplation of, the termination of a
`proceeding shall be in writing and a true copy shall be filed with the Board
`before the termination of the trial.” After reviewing the Joint Motion to
`Terminate and the agreement included in Exhibit 1042, we determine that
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`2
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`IPR2020-00165
`Patent 8,138,157 B2
`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).
`In this case, the Board has not decided the merits of the proceeding.
`Thus, it is appropriate to terminate the proceeding, and we grant the Joint
`Motion to Terminate.
`Accordingly, it is
`ORDERED that the Joint Motion to Terminate is GRANTED and this
`proceeding is hereby TERMINATED; and
`FURTHER ORDERED that Exhibit 1042 will be treated as business
`confidential information, and will be kept separate from the patent files.
`
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`3
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`IPR2020-00165
`Patent 8,138,157 B2
`FOR PETITIONER:
`Scott K. Reed
`Shannon K. Clark
`VENABLE LLP
`arestin@venable.com
`skclark@venable.com
`
`FOR PATENT OWNER:
`Gary F. Wang
`LAW OFFICES OF GARY F. WANG
`garywand@gfwanglaw.com
`
`Karl Bozicevic
`BOZICEVIC, FIELD & FRANCIS LLP
`bozicevic@bozpat.com
`
`4
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