Antares Pharma, Inc.v.Medac Gesellschaft Fur Klinische

Patent Trial and Appeal Board

Apr 30, 2015

12374528 (P.T.A.B. Apr. 30, 2015)

Trials@uspto.gov Paper 21
Tel: 571-272-7822 Entered: April 30, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

ANTARES PHARM, INC., LEO PHARMA A/S AND
LEO PHARMA INC.,
Petitioner,

v.

MEDAC GESELLSCHAFT FÜERKLINISCHE
SPEZIALPRÄPARATE MBH.,
Patent Owners.
____________

Case IPR2014-01091
Patent 8,664,231 B2
_____________

Before TONI SCHEINER, ERICA A. FRANKLIN, and
JACQUELINE WRIGHT BONILLA, Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

JUDGMENT
Termination of the Proceeding
37 C.F.R. § 42.72
IPR2014-01091
Patent 8,664,231 B2

2

On April 17, 2015, the parties filed a joint motion to terminate the
proceeding pursuant to 35 U.S.C § 317. Paper 17. In addition, and pursuant
to 35 U.S.C § 317 (b) and 37 C.F.R. § 42.74, the parties filed a true copy of
their written settlement agreement, Ex. 1034, and requested in the joint
motion that the settlement agreement be treated as business confidential
information and kept separate from the file of US Patent No. 8,664,231 B2
(“the ’231 patent”), Paper 17, 2. The joint motion and the settlement
agreement were filed so as to limit viewing to the parties and the Board only.
The parties indicated in their joint motion that termination of this
proceeding is appropriate because they have reached an agreement settling
their dispute with respect to the ’231 patent. Id. at 1. The parties indicated
also that they have filed a joint stipulation of dismissal in the related district
court litigation, Medac Pharma, Inc. v. Antares Pharma, Inc, No. 1:14-cv-
01498-JBS-KMW (D.N.J.). Id. at 2.
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 patent owner, unless the Office has decided the
merits of the proceeding before the request for termination is filed.” As the
parties indicated in their joint motion, this proceeding has not yet been
decided on the merits.
Further, under 37 C.F.R. § 42.74(b), “[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 termination of the trial.” As
the parties have filed their written settlement agreement, and have requested
a dismissal of the co-pending district court case, we determine that it is
IPR2014-01091
Patent 8,664,231 B2

3

appropriate to terminate this proceeding without rendering a Final Written
Decision as to the patentability of claims 1–22 of the ’231 patent. See 37
C.F.R. §§ 42.72, 42.73, 42.74.
As requested by the parties, the settlement agreement will be treated
as business confidential information and kept separate from the file of the
’231 patent. 37 C.F.R. § 42.74(c). Although the parties filed the joint
motion so as to limit viewing to the parties and the Board only, a motion to
seal, containing a protective order, was not filed concurrently with the joint
motion, nor would sealing the joint motion be appropriate. Accordingly, the
joint motion (Paper 17), as well as this Judgment, will be made publicly
available. See 37 C.F.R. § 42.14.

Accordingly, it is
ORDERED that the parties’ joint request that the settlement
agreement be treated as business confidential information is GRANTED;
and
FURTHER ORDERED that the joint motion to terminate the
proceeding is GRANTED; and
FURTHER ORDERED that the proceeding is TERMINATED.

IPR2014-01091
Patent 8,664,231 B2

4

PETITIONER:

Sanya Sukduang
Thomas Jenkins
FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP
Sanya.Sukduang@finnegan.com
thomas.jenkins@finnegan.com

PATENT OWNER:

James F. Haley, Jr.
Ching-Lee Fukuda
ROPES & GRAY LLP
james.haley@ropesgray.com
ching-lee.fukuda@ropesgray.com