`571-272-7822
`
`Paper 20
`Entered: December 19, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
` ____________
`
`ALNYLAM PHARMACEUTICALS, INC.,
`Petitioner,
`
`v.
`
`SILENCE THERAPEUTICS GMBH,
`Patent Owner.
`____________
`
`Case PGR2018-00059
`Patent 9,695,423
`____________
`
`Before JEFFREY B. ROBERTSON, RAMA G. ELLURU, and
`MONTÉ T. SQUIRE, Administrative Patent Judges.
`
`SQUIRE, Administrative Patent Judge.
`
`ORDER
`Granting Joint Motion to Terminate Proceeding and
`Granting Joint Request to Treat Settlement Agreement as
`Business Confidential Information
`35 U.S.C. § 327; 37 C.F.R. §§ 42.72, 42.74
`
`
`
`PGR2018-00059
`Patent 9,695,423
`
`I. INTRODUCTION
`On December 18, 2018, Petitioner and Patent Owner (collectively
`referred to as “the Parties”) filed a Joint Motion to Terminate this post-grant
`review proceeding challenging claims 1–25 of U.S. Patent No. 9,695,423
`(“the ’423 patent”). Paper 16 (“Mot.”).1 Along with the Joint Motion, the
`Parties filed a Confidential Settlement and License Agreement (Exhibit
`1064, “Settlement Agreement”), as well as a Joint Request to Treat the
`Settlement Agreement as Business Confidential Information pursuant to 35
`U.S.C. § 327(b) and 37 C.F.R. § 42.74(c) (Paper 17 (“Req.”)). The Parties
`represent that the filed copy of the Settlement Agreement is a true and
`correct copy. Mot. 1–2.
`
`II. DISCUSSION
`Under 35 U.S.C. § 327(a), post-grant review proceedings “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.”
`In the Joint Motion, the Parties represent that they have entered into a
`settlement agreement. Mot. 1. The Parties represent that their settlement
`agreement resolves all currently pending Office and District Court
`proceedings between them involving the ’423 patent, at issue in this
`proceeding. Id. at 1–2. The Parties further represent that they have reached
`an agreement to jointly seek termination of this post-grant review
`proceeding. Id. at 1.
`
`1 Filing of the Joint Motion was authorized via e-mail correspondence from
`Board personnel on December 17, 2018.
`2
`
`
`
`PGR2018-00059
`Patent 9,695,423
`
`
`Although we have issued a Decision Denying Institution of Post-
`Grant Review (Paper No. 9) in this proceeding, Petitioner has filed a
`Request for Rehearing (Paper No. 11) of that decision, which is currently
`pending and we have not yet ruled upon. In view of the stage of this
`proceeding and the settlement between the Parties, we determine that good
`cause exists to terminate this proceeding with respect to the Parties.
`The Parties also filed a Joint Request that the Settlement Agreement
`be treated as business confidential information and be kept separate from the
`file of the patent involved in this post-grant review proceeding. Req. 1.
`After reviewing the Settlement Agreement between Petitioner and Patent
`Owner, we find that the Settlement Agreement contains confidential
`business information regarding the terms of settlement. We determine that
`good cause exists to treat the Settlement Agreement between Petitioner and
`Patent Owner as business confidential information pursuant to 35 U.S.C.
`§ 327(b) and 37 C.F.R. § 42.74(c).
`This paper does not constitute a final written decision pursuant to 35
`U.S.C. § 328(a).
`Accordingly, for the reasons discussed above, it is:
`
`III. ORDER
`ORDERED that the Joint Motion to Terminate (Paper 16) the
`proceeding is granted;
`FURTHER ORDERED that the Joint Request (Paper 17) to Treat the
`Settlement Agreement (Exhibit 1064) as Business Confidential Information
`is granted;
`FURTHER ORDERED that the Settlement Agreement shall be kept
`separate from the file of U.S. Patent No. 9,695,423, and made available only
`
`
`
`
`3
`
`
`
`PGR2018-00059
`Patent 9,695,423
`
`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 post-grant review proceeding PGR2018-
`00059 is hereby terminated.
`
`
`
`
`
`
`4
`
`
`
`PGR2018-00059
`Patent 9,695,423
`
`PETITIONER:
`Scott K. Reed
`Prajakta A. Sonalker
`VENABLE LLP
`sreed@venable.com
`psonalker@venable.com
`AlnylamPTAB@venable.com
`
`
`PATENT OWNER:
`
`Matthew I. Kreeger
`Jian Xiao
`MORRISION & FOERSTER LLP
`MKreeger@mofo.com
`JXiao@mofo.com
`68013-423-PGR@mofo.com
`
`
`
`
`
`
`
`
`5
`
`
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