`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`__________________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`BIOFRONTERA INCORPORATED,
`
`BIOFRONTERA BIOSCIENCE GMBH,
`
`BIOFRONTERA PHARMA GMBH,
`
`AND
`
`BIOFRONTERA AG
`
`Petitioner
`
`v.
`
`DUSA PHARMACEUTICALS, INC.
`
`Patent Owner
`__________________
`
`
`Inter Partes Review No. IPR2022-00056
`U.S. Patent No. 10,357,567
`
`
`
`
`
`
`
`
`
`
`
`
`UNOPPOSED MOTION TO DISMISS
`PETITION FOR INTER PARTES REVIEW
`
`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`U.S. Patent & Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313–1450
`
`
`
`
`
`I.
`
`INTRODUCTION
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`IPR2022-00056
`10,357,567
`
`
`The Board authorized Petitioner to file a motion to dismiss the present Petition
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`for inter partes review in IPR2022-00056 directed to U.S. Patent No. 10,357,567
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`(“the ’567 Patent”). (Board email dated December 2, 2021.) Petitioner and Patent
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`Owner have conferred via email, and Patent Owner does not oppose the relief
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`requested in this motion. Petitioner now so moves and respectfully requests that the
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`Board dismiss the present Petition in IPR2022-00056, consistent with Board’s
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`precedent allowing petitioners to withdraw IPR petitions pre-institution. This
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`proceeding is in its preliminary phase, Patent Owner has not yet filed a Preliminary
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`Response, and the Board has not yet reached the merits by issuing a decision on
`
`institution.
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`As explained in more detail below, dismissal of the instant inter partes review
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`Petition under 37 C.F.R. § 42.71 is the appropriate mechanism for addressing the
`
`Petition under the circumstances giving rise to this motion, as the Petition is
`
`presently pending and awaiting a decision on institution, and dismissal would
`
`preserve the Board’s and parties’ resources, promote efficiency, and minimize costs,
`
`without prejudicing Patent Owner. See Intel Corp. v. Tela Innovations, Inc.,
`
`IPR2019-01257 Pap. 16, 3 (PTAB Jan. 2, 2020) (granting petitioner’s unopposed
`
`motion to dismiss “to promote efficiency and minimize unnecessary costs”);
`
`Samsung Electronics Co., Ltd. v. Telefonaktiebolaget LM Ericsson, IPR2021-00446
`
`2
`
`
`
`IPR2022-00056
`10,357,567
`
`Pap. 7, 5 (PTAB Aug. 3, 2021) (noting “Petitioner has shown good cause for
`
`dismissal of its Petitions” and granting motion to dismiss without requiring parties
`
`to file settlement agreement); 37 C.F.R. § 42.71(a) (“The Board . . . may grant, deny,
`
`or dismiss any petition or motion . . . .”).
`
`Accordingly, Petitioner hereby moves unopposed for dismissal of the pending
`
`Petition.
`
`II. BACKGROUND AND RELATED IPR PROCEEDINGS
`
`The present petition was filed less than two months ago on October 19, 2021,
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`and Patent Owner has yet to submit its Preliminary Response. The parties have
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`recently entered into a confidential settlement agreement (“Settlement Agreement”)
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`that will resolve the parties’ instant dispute regarding the challenged ’567 Patent, as
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`well as other disputes in the District of Massachusetts in a lawsuit originally
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`captioned as Dusa Pharmaceuticals, Inc. v. Biofrontera Inc. et al. (Civil Action No.
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`1:18-cv-10568) involving U.S. Patent No. 9,723,991 (“the ’991 Patent”) and U.S.
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`Patent No. 8,216,289 (“the ’289 Patent”), neither of which is in the same family as
`
`the ’567 Patent. Pursuant to the terms of the Settlement Agreement, the parties have
`
`filed a Joint Notice of Settlement in the aforementioned civil action, and the parties’
`
`disputes have been dismissed by the court. Pursuant to the terms of the Settlement
`
`Agreement, the parties have also agreed that the filing of the present motion would
`
`not limit Petitioner’s ability to refile a petition for inter partes review of the ’567
`
`3
`
`
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`IPR2022-00056
`10,357,567
`
`Patent at a later date. There are no district court proceedings between the parties
`
`related to the ’567 Patent that is the subject of the Petition, and there are no other
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`currently pending related IPR or district court proceedings between the parties.
`
`III. ARGUMENT
`
`A. PTAB Rules Provide for Dismissal of a Pending Petition for
`Inter Partes Review Before Reaching the Merits
`To request inter partes review of a patent, “a person who is not the owner of
`
`a patent may file with the Office a petition to institute an inter partes review of the
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`patent.”1 35 U.S.C. § 311(a). Thereafter, if it reaches the merits, the Board either
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`grants the petition, which yields institution of an inter partes review, or denies the
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`petition, which results in non-institution of an inter partes review. In rendering its
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`decision on institution, the Board evaluates whether “the information presented in
`
`the petition filed under section 311 and any response filed under section 313 shows
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`that there is a reasonable likelihood that the petitioner would prevail with respect to
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`at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a).
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`Notably, prior to such a decision on institution, no inter partes review has
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`commenced. See, e.g., 35 U.S.C. §§ 311-313. Statutes addressing pre-institution
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`procedures therefore consistently refer to “the petition” rather than an “inter partes
`
`
`1 Unless indicated, emphases in quotes throughout this motion are added.
`
`4
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`
`
`IPR2022-00056
`10,357,567
`
`review” proceeding. Id.; see also Intellectual Ventures II LLC v. JPMorgan Chase
`
`& Co., 781 F.3d 1372, 1376 (“The AIA differentiates between a petition for a CBMR
`
`proceeding (which a party files) and the act of instituting such a proceeding (which
`
`the Director is authorized to do).”). This stands to reason, as its name—institution
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`decision—confirms that inter partes review does not commence until a decision to
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`institute has been rendered. See also Institution, Black’s Law Dictionary (11th ed.
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`2019) (“The commencement of something, such as a civil or criminal action.”).
`
`With respect to a petition, therefore, the PTAB rules provide that the Board
`
`may reach the merits through grant or denial of institution, in the manner noted
`
`above. And importantly, the PTAB rules recognize one more option—dismissal. 37
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`C.F.R. § 42.71(a) (“the Board . . . may grant, deny, or dismiss any petition or
`
`motion”); see also, e.g., 37 CFR § 42.12(b)(8) (describing sanctions including
`
`“dismissal of the petition”); 37 CFR § 42.106(b) (in the case of an incomplete
`
`petition, “the Office will dismiss the petition if the deficiency in the petition is not
`
`corrected within one month from the notice of an incomplete petition.”).
`
`In contrast, no rule or statute authorizes the Board to “dismiss” a trial on an
`
`instituted inter partes review. Instead, “the Board may terminate a trial” or an
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`“instituted” inter partes review. 37 C.F.R. § 42.72; 35 U.S.C. § 317(a); see also, e.g.,
`
`37 C.F.R. § 42.2 (a “[t]rial” is “a contested case instituted by the Board based upon
`
`a petition”). And as noted in section C, infra, no rule or statute authorizes the Board
`
`5
`
`
`
`IPR2022-00056
`10,357,567
`
`to “terminate” a petition. Thus, read together, authority is offered for dismissal (of a
`
`petition) pending decision on the petition’s institution merits (i.e., without granting
`
`or denying it), and for termination (of trial) following a decision on the petition’s
`
`institution merits. See 37 C.F.R. § 42.71(a); 37 C.F.R. § 42.72; 35 U.S.C. § 317(a).
`
`In the present case, a Petition requesting inter partes review awaits a Board
`
`decision on institution. The Board has yet to decide whether to grant the Petition—
`
`and thus institute trial—or deny the Petition. Under the rules, the proper mechanism
`
`for dispatching this pending Petition prior to an institution decision by the Board is
`
`dismissal. See 37 C.F.R. § 42.71(a); Apple Inc. v. Ericsson Inc. et al., IPR2015-
`
`01904 Pap. 7, 2 (PTAB Jan. 29, 2016) (granting petitioner’s unopposed motion to
`
`dismiss twelve petitions where “Patent Owner has not filed a preliminary response,
`
`and we have not considered the merits of the Petitions.”); Samsung Electronics Co.,
`
`Ltd. v. Telefonaktiebolaget LM Ericsson, IPR2021-00446 Pap. 7, 5 (PTAB Aug. 3,
`
`2021) (granting petitioner’s unopposed motion to dismiss thirty petitions at an early
`
`stage).
`
`B. Good Cause Justifies Dismissal of the Present Petition
`Consistent with 37 C.F.R. § 42.71(a), the Board has recognized that dismissal
`
`of pre-institution petitions is available to petitioners upon a showing of good cause,
`
`and the Board has recognized through its decisions various instances of good cause
`
`sufficient to justify dismissal. See, e.g., Intel Corp. v. Tela Innovations, Inc.,
`
`6
`
`
`
`IPR2022-00056
`10,357,567
`
`IPR2019-01257 Pap. 16, 3 (PTAB Jan. 2, 2020); Apple Inc. v. Ericsson Inc. et al.,
`
`IPR2015-01904 Pap. 7, 2 (PTAB Jan. 29, 2016); World Programming LTD. v. SAS
`
`Institute, Inc., IPR2019-01457 Pap. 22, 2-3 (PTAB Dec. 27, 2019) (granting
`
`“unopposed motion to dismiss the Petition and terminate the proceeding more than
`
`two months before the statutory deadline for institution”); Huawei Techs. Co. LTD.
`
`v. Harris Global Communications, Inc., IPR2019-01512 Pap. 8, 1-2 (PTAB Dec. 27,
`
`2019) (granting petitioner’s unopposed motion to dismiss where “[b]oth Petitioner
`
`and Patent Owner contend there is good cause to terminate the proceedings because
`
`it will preserve the resources of the Board and the parties”); Samsung Electronics
`
`Co. et al. v. Nvidia Corp., IPR2015-01270 Pap. 11, 3-4 (PTAB Dec. 9, 2015)
`
`(granting petitioner’s motion to dismiss, despite opposition by patent owner, “to
`
`promote efficiency and minimize unnecessary costs”); Apple Inc. v. Pinn, Inc.,
`
`IPR2021-00220 Pap. 10, 2-3 (PTAB Mar. 19, 2021) (granting a motion to dismiss
`
`because proceedings were “at an early stage, and although the Board has expended
`
`some resources in its initial review of the Petitions,” dismissal would “promote
`
`efficiency and minimize unnecessary costs.”).
`
`In the instant case, good cause exists, consistent with Board precedent. The
`
`parties have settled their disputes, a preliminary response to the Petition has not been
`
`filed, and a decision on institution of IPR2022-00056 has not yet been rendered. As
`
`such, granting Petitioner’s unopposed motion to dismiss the instant Petition at this
`
`7
`
`
`
`IPR2022-00056
`10,357,567
`
`early juncture would serve to preserve the Board’s and parties’ resources, promote
`
`efficiency, and minimize costs. See Samsung v. Nvidia, IPR2015-01270 Pap. 12, 3.
`
`Indeed, dismissing the Petition now, before any decision on the merits, will promote
`
`the Board’s objective of achieving “just, speedy, and inexpensive resolution of every
`
`proceeding.” 37 C.F.R. § 42.1(b); World Programming LTD. v. SAS Institute, Inc.,
`
`IPR2019-01457 Pap. 22, 2. Moreover, withdrawal of the present Petition does not
`
`prejudice the Patent Owner, who does not oppose the filing of this motion.
`
`C. No Statute or Rule Provides a Basis for “Terminating” a
`Petition for Inter Partes Review That Has Not Yet Been
`Instituted
`There is no statutory or rule-based authority for termination prior to institution
`
`of a petition. 37 C.F.R. § 42.74 and 35 U.S.C. § 317(a) relate to termination of
`
`instituted proceedings, rather than pre-institution dismissal of a Petition, as requested
`
`in this motion.
`
`37 C.F.R. § 42.74 refers to “termination of a proceeding” and “termination of
`
`the trial,” and makes no mention of dismissal, let alone dismissal of a petition. 37
`
`C.F.R. § 42.74(b) states: “Any 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.” Further, the PTAB rules state that the board “may terminate a trial without
`
`8
`
`
`
`IPR2022-00056
`10,357,567
`
`rendering a final written decision,” 37 C.F.R. § 42.72, and define a “trial” as “a
`
`contested case instituted by the Board based upon a petition,” 37 C.F.R. § 42.2.
`
`Similarly, 35 U.S.C. § 317(a) refers only to “termination” of inter partes
`
`reviews “instituted under this chapter,” and makes no mention of dismissal (or
`
`dismissal of petitions). 35 U.S.C. § 317(a) states, in relevant part: “An 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 does not describe a mechanism for dismissing a petition for inter partes
`
`review that awaits decision on institution. See id.
`
`Accordingly, the parties have not jointly sought to terminate; rather,
`
`consistent with the Board’s authorization, Petitioner hereby submits this unopposed
`
`motion to dismiss.
`
`D. Because Petitioner Seeks Dismissal of its Petition Pre-
`Institution, the Parties Are Not Obligated to File a Copy of a
`Settlement Agreement
`Because the presently-filed motion is a motion to dismiss a petition prior to
`
`institution rather than a joint motion to terminate a proceeding or trial pursuant to 37
`
`C.F.R. § 42.74(b), 37 C.F.R. § 42.74(b) does not apply. Therefore, Petitioner and
`
`Patent Owner are not required to file a copy of their Settlement Agreement with this
`
`motion. See Samsung Electronics Co., Ltd. v. Telefonaktiebolaget LM Ericsson,
`
`9
`
`
`
`IPR2022-00056
`10,357,567
`
`IPR2021-00446 Pap. 7, 4-5 (PTAB Aug. 3, 2021) (dismissing case pre-institution
`
`without requiring copy of settlement agreement “because there are no explicit
`
`provisions in the statutes or regulations that settlement agreements [] be filed in pre-
`
`institution dismissals”).
`
`To the extent the Board finds that a basis exists in the PTAB rules for
`
`termination of a non-instituted proceeding, such termination would still not obligate
`
`the parties to file a “true and correct copy” of a settlement agreement related to the
`
`termination under 37 C.F.R. § 42.74(b), because § 42.74(b) states that this obligation
`
`must be fulfilled “before the termination of the trial.” 37 C.F.R. § 42.74(b). Since
`
`no “trial” exists for a non-instituted proceeding, such termination will never occur,
`
`and the parties are therefore not obligated to file a copy of the settlement agreement.
`
`See id.; 37 C.F.R. § 42.2 (defining a “trial” as “a contested case instituted by the
`
`Board based upon a petition” that “begins with a written decision notifying the
`
`petitioner and patent owner of the institution of the trial”).
`
`IV. CONCLUSION
`
`For the reasons set forth herein, Petitioner Biofrontera respectfully requests
`
`that the Board grant the Unopposed Motion to Dismiss Petition for Inter Partes
`
`Review in Case Number IPR2022-00056.
`
`
`
`
`
`10
`
`
`
`IPR2022-00056
`10,357,567
`
`
`Respectfully submitted,
`
`Dated: December 3, 2021
`
`By: /s/ Lauren L. Fornarotto
`
`
`
`Lauren L. Fornarotto, Reg. No. 76,470
`
`11
`
`
`
`CERTIFICATE OF SERVICE
`
`I certify that on December 3, 2021, I will cause a copy of the foregoing
`
`IPR2022-00056
`10,357,567
`
`
`document, including any exhibits referred to therein, to be served via electronic mail,
`
`as previously consented to by Patent Owner, upon the following:
`
`W. Karl Renner
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`Email: IPR46697-0005IP1@fr.com
`
`Heather L. Flanagan
`Andrew B. Patrick
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`IPR46697-0005IP1@fr.com
`PTABInbound@fr.com
`axf-ptab@fr.com
`patrick@fr.com
`flanagan@fr.com
`
`Dated: December 3, 2021
`
`
`
`By: /s/ Lauren L. Fornarotto
`Lauren L. Fornarotto
`Reg. No. 76,470
`
`
`
`
`
`12
`
`
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