Bright Pharma Caps, Inc.v.Capsugel USA, LLCDownload PDFPatent Trial and Appeal BoardFeb 16, 201610031897 (P.T.A.B. Feb. 16, 2016) Copy Citation Trials@uspto.gov Paper No. 22 571-272-7822 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 Copy with citationCopy as parenthetical citation