`571-272-7822
`
`Paper 17
`Entered: June 19, 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. and AMGEN MANUFACTURING LIMITED,
`Patent Owner.
`
`IPR2020-00314
`Patent 9,856,287 B2
`
`
`
`
`
`
`
`
`
`Before ZHENYU YANG, CHRISTOPHER G. PAULRAJ, and
`JOHN E. SCHNEIDER, Administrative Patent Judges.
`SCHNEIDER, Administrative Patent Judge.
`
`
`
`TERMINATION
`Due to Settlement before Institution of Trial
`35 U.S.C. § 317, 37 C.F.R. §§ 42.72, 42.74
`
`
`
`
`
`
`
`
`
`IPR2020-00314
`Patent 9,856,287 B2
`With our permission, Petitioners Fresenius Kabi USA, LLC and
`Fresenius Kabi SwissBioSim GmbH and Patent Owners Amgen, Inc. and
`Amgen Manufacturing, Limited filed a Joint Motion to Terminate this
`proceeding pursuant to 35 U.S.C. § 317. Paper 14. 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. 1048. In addition, they also jointly requested that Exhibit 1048
`be filed as business confidential information, and be kept separate from the
`publically available patent files. Paper 15.
`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
`
`2
`
`
`
`IPR2020-00314
`Patent 9,856,287 B2
`Terminate and the agreements included in Exhibit 1048, 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).
`In this case, the Board has not decided whether to institute inter partes
`review. 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 1048 will be treated as business
`confidential information, and will be kept separate from the patent files.
`
`
`3
`
`
`
`IPR2020-00314
`Patent 9,856,287 B2
`FOR PETITIONER:
`
`Huiya Wu
`Linnea Cipriano
`Robert Cerwinski
`Hanna Yoon
`GOODWIN PROCTER LLP,
`hwu@goodwinlaw.com
`lcipriano@goodwinlaw.com
`rcerwinski@goodwinlaw.com
`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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