Trials@uspto.gov
`571-272-7822
`
`Paper 16
`Entered: December 20, 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 PGR2018-000751 (Patent 9,783,802)
`Case PGR2018-00088 (Patent 9,790,505)
`Case PGR2018-00089 (Patent 9,790,501)
`____________
`
`
`Before JO-ANNE M. KOKOSKI, JON B. TORNQUIST, 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
`
`
`1 We exercise our discretion to issue one order to be entered in all three
`cases. The parties are not authorized to use this style heading for subsequent
`papers without prior Board approval.
`
`
`571-272-7822
`
`Paper 16
`Entered: December 20, 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 PGR2018-000751 (Patent 9,783,802)
`Case PGR2018-00088 (Patent 9,790,505)
`Case PGR2018-00089 (Patent 9,790,501)
`____________
`
`
`Before JO-ANNE M. KOKOSKI, JON B. TORNQUIST, 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
`
`
`1 We exercise our discretion to issue one order to be entered in all three
`cases. The parties are not authorized to use this style heading for subsequent
`papers without prior Board approval.
`
`
`
`PGR2018-00075 (Patent 9,783,802)
`PGR2018-00088 (Patent 9,790,505)
`PGR2018-00089 (Patent 9,790,501)
`
`
`I. INTRODUCTION
`On December 18, 2018, with our prior authorization,2 Petitioner and
`Patent Owner (collectively referred to as “the Parties”) filed a joint motion
`to terminate in each of the above-referenced cases (“Joint Motions” or “Joint
`Mot.”). Paper 13.3 Along with the Joint Motions, the Parties filed a
`confidential Settlement and License Agreement (Exhibit 1087, “Settlement
`Agreement”), as well as joint requests 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 14 (“Joint Req.”)). The Parties represent that the
`filed copy of the Settlement Agreement is a true and correct copy. Joint
`Mot. 1.
`
`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 Motions, the Parties represent that they have entered into a
`settlement agreement. Joint Mot. 1. The Parties represent that their
`settlement agreement resolves all currently pending Office and District
`Court proceedings between them involving the patents at issue in these
`proceedings. Id. at 1–2. The Parties further represent that they have reached
`
`
`2 Filing of the Joint Motions was authorized via e-mail correspondence from
`Board personnel on December 17, 2018.
`3 The parties’ filed substantively similar papers and exhibits in each case.
`Unless otherwise noted, we cite to the papers and exhibit filed in PGR2018-
`00075 as representative.
`
`
`
`2
`
`
`
`PGR2018-00075 (Patent 9,783,802)
`PGR2018-00088 (Patent 9,790,505)
`PGR2018-00089 (Patent 9,790,501)
`
`an agreement to jointly seek termination of these post-grant review
`proceedings. Id. at 2.
`These proceedings are at an early stage, and we have not yet decided
`whether to institute trials. In view of the early stage of these proceedings
`and the settlement between the Parties, we determine that good cause exists
`to terminate these proceedings with respect to the Parties.
`The Parties also filed a joint request in each case that the Settlement
`Agreement be treated as business confidential information and be kept
`separate from the file of the patent involved in the respective proceeding.
`Joint 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).
`
`III. ORDER
`Accordingly, for the reasons discussed above, it is:
`ORDERED that the Parties’ joint motion to terminate each case
`(PGR2018-00075 (Paper 13), PGR2018-00088 (Paper 13), and PGR2018-
`00089 (Paper 13)) is granted;
`FURTHER ORDERED that the Parties’ joint request to treat the
`Settlement Agreement as business confidential information in each case is
`granted;
`
`
`
`
`3
`
`
`
`PGR2018-00075 (Patent 9,783,802)
`PGR2018-00088 (Patent 9,790,505)
`PGR2018-00089 (Patent 9,790,501)
`
`
`FURTHER ORDERED that the Settlement Agreement shall be kept
`separate from the files of U.S. Patent Nos. 9,783,802, 9,790,505, and
`9,790,501, respectively, 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 post-grant review proceedings PGR2018-
`00075, PGR2018-00088, and PGR2018-00089 are each hereby terminated.
`
`
`
`
`
`
`4
`
`
`
`PGR2018-00075 (Patent 9,783,802)
`PGR2018-00088 (Patent 9,790,505)
`PGR2018-00089 (Patent 9,790,501)
`
`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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