`Trials@uspto.gov
`571-272-7822 Entered: January 6, 2023
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`RIGEL PHARMACEUTICALS, INC.,
`Petitioner,
`
`v.
`
`SERVIER PHARMACEUTICALS LLC,
`Patent Owner.
`____________
`
`
`
`IPR2022-01423
`Patent 10,610,125 B2
`____________
`
`
`Before GRACE KARAFFA OBERMANN, DONNA M. PRAISS,
`and CHRISTOPHER L. CRUMBLEY, Administrative Patent Judges.
`
`OBERMANN, Administrative Patent Judge.
`
`DECISION
`Settlement Prior to Institution of Trial
`37 C.F.R. § 42.74
`
`
`
`
`
`
`IPR2022-01423
`Patent 10,610,125 B2
`
`
`INTRODUCTION
`I.
`On August 15, 2022, Petitioner filed a Petition requesting a inter
`partes review of claims 1–5 and 9–12 of U.S. Patent No. 10,610,125 B2
`(Ex. 1001). Paper 2. On December 27, 2022, with Board authorization
`(Ex. 3002), the parties filed a “Joint Motion to Terminate” (Paper 9) and,
`under seal, two Settlement Agreements (Ex. 1059; Ex. 1060). The parties
`also filed a “Joint Request to Treat Exhibits 1059 and 1060 as Business
`Confidential Information,” seeking to maintain the Settlement Agreements
`separate from the public file under 37 C.F.R. § 42.74(c). Paper 10.
`
`II. DISCUSSION
`The parties state that they “have reached a settlement that addresses
`this proceeding” and, on that basis, “request that the Board terminate
`IPR2022-01423 with prejudice.” Mot. 1. The parties attest that, aside from
`the Settlement Agreements, “there are no other agreements, oral or written,
`between the [p]arties made in connection with, or in contemplation of, the
`termination of the proceeding.” Paper 9 at 1. The parties also point out that
`the Settlement Agreements, by their express terms, “are to be maintained as
`confidential by the [p]arties and, subject to certain exceptions, may not be
`disclosed to any third parties without the express written consent of the non-
`disclosing party.” Paper 10 at 1; see Ex. 1059 ¶ 8.1; Ex. 1060 ¶ 8.1.
`This proceeding is at an early stage, and we have not yet decided
`whether to institute review of the challenged claims. In view of the early
`stage of the proceeding and the Settlement Agreements, we determine that
`good cause exists to dismiss the petition and terminate the proceeding.
`Based on our review of the Settlement Agreements, including the terms that
`expressly require the parties to maintain those agreements as confidential,
`
`
`
`2
`
`
`
`IPR2022-01423
`Patent 10,610,125 B2
`
`we also determine that good cause exists to treat Exhibits 1059 and 1060 as
`business confidential information pursuant to 37 C.F.R. § 42.74(c).
`This Order does not constitute a final written decision pursuant to
`35 U.S.C. § 318(a).
`
`III. ORDER
`
`It is
`ORDERED that the “Joint Request to Treat Exhibits 1059 and 1060
`as Business Confidential Information” (Paper 10) is granted, and the
`Settlement Agreements (Ex. 1059 and Ex. 1060) shall be kept separate from
`the files of U.S. Patent 10,610,125 B2, and made available only to Federal
`Government agencies on written request, or to any person on a showing of
`good cause, pursuant to 35 U.S.C. § 327(b) and 37 C.F.R. § 42.74(c); and
`FURTHER ORDERED that the “Joint Motion to Dismiss” (Paper 9)
`is granted, the Petition in IPR2022-01423 is dismissed, and the proceeding
`is terminated with respect to Petitioner and Patent Owner, pursuant to 37
`C.F.R. § 42.72.
`
`
`
`
`
`
`
`
`
`
`
`
`3
`
`
`
`IPR2022-01423
`Patent 10,610,125 B2
`
`PETITIONER:
`
`Paul H. Berghoff
`James L. Lovsin
`James V. Suggs
`MCDONNELL BOEHNEN HULBERT AND BERGHOFF LLP
`berghoff@mbhb.com
`lovsin@mbhb.com
`suggs@mbhb.com
`
`
`For PATENT OWNER:
`
`William M. Fink
`Benjamin Haber
`James Li
`O’MELVENY & MYERS LLP
`tfink@omm.com
`bhaber@omm.com
`jli@omm.com
`
`Joseph D. Eng., Jr.
`KING & SPALDING LLP
`jeng@kslaw.com
`
`
`
`4
`
`
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