Bright Pharma Caps, Inc.v.Capsugel USA, LLC

Patent Trial and Appeal Board

Feb 16, 2016

10941182 (P.T.A.B. Feb. 16, 2016)

Trials@uspto.gov Paper No. 24
571-272-7822 February 16, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

BRIGHT PHARMA CAPS, INC.,
Petitioner,

v.

CAPSUGEL BELGIUM NV,
Patent Owner.
____________

Cases IPR2015-01623 (Patent 7,267,718 B2)
IPR2015-01625 (Patent 6,887,307 B1)1
____________

Before GRACE KARAFFA OBERMANN, JON B. TORNQUIST, and
ELIZABETH M. ROESEL, Administrative Patent Judges.

ROESEL, Administrative Patent Judge.

DECISION
Granting Joint Motion to Terminate
35 U.S.C. § 317(a) and 37 C.F.R. §§ 42.72, 42.74

1 This decision addresses what the parties represent is an identical motion
filed in IPR2015-01623 and IPR2015-01625; therefore, we issue a single
decision to be entered in both cases.
IPR2015-01623 (Patent 7,267,718 B2)
IPR2015-01625 (Patent 6,887,307 B1)

2

On February 4, 2016, and pursuant to 35 U.S.C. § 317(a), the parties
filed a joint motion to terminate in each of IPR2015-01623 and IPR2015-
01625. IPR2015-01623, Paper 23; IPR2015-01625, Paper 21. Along with
the joint motion, the parties filed a Stipulated Injunction and Consent
Judgment (Ex. 1014/1019),2 and a Confidential Agreement (Ex. 1015/1020,
“Settlement Agreement”).
The parties represent that the Settlement Agreement fully resolves
their disputes regarding U.S. Patent Nos. 6,887,307 and 7,267,718, including
the inter partes review proceedings and the related litigation, Capsugel
Belgium NV v. Bright Pharma Caps, Inc., No. 3:15-cv-321-PK (D. Or.).
Pursuant to 35 U.S.C. § 317(b), the parties represent that the Settlement
Agreement (Ex. 1015/1020) is a true and complete copy of all agreements
and understandings between the parties, including any collateral agreements,
made in connection with, or in contemplation of, termination of the inter
partes review proceedings.
These proceedings are at an early stage, as the Board has not yet
issued a decision whether to institute inter partes review. In view of the
early stage of these proceedings, the concurrent settlement of the related
district court litigation, and the parties’ representations set forth above, we
determine that it is appropriate to terminate these proceedings. See 37
C.F.R. § 42.72. Therefore, the joint motion to terminate these proceedings is
granted. This paper does not constitute a final written decision pursuant to
35 U.S.C. § 318(a).

2 Citations are to the exhibit number in IPR2015-01623 followed by the
exhibit number in IPR2015-01625.
IPR2015-01623 (Patent 7,267,718 B2)
IPR2015-01625 (Patent 6,887,307 B1)

3

The parties request that the Settlement Agreement (Ex. 1015/1020) be
treated as business confidential and kept separate from the patent files
pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). We grant the
parties’ request.
ORDER
Accordingly, it is:
ORDERED that the parties’ joint request that the Settlement
Agreement be treated as business confidential information and kept separate
from the patent files, is granted; and
FURTHER ORDERED that the joint motion to terminate in each of
IPR2015-01623 and IPR2015-01625 is granted, and each of the proceedings
is terminated.
IPR2015-01623 (Patent 7,267,718 B2)
IPR2015-01625 (Patent 6,887,307 B1)

4

PETITIONER:

Peter Heuser
Devon Zastrow Newman
pheuser@schwabe.com
dnewman@schwabe.com

PATENT OWNER:

Joseph Jakubek
John Vandenberg
Scott Davis
jtj@klarquist.com
john.vandenberg@klarquist.com
scott.davis@klarquist.com