Horizon Discovery Group PLCv.Transposagen Biopharmaceuticals, Inc.

Patent Trial and Appeal Board

Nov 24, 2015

12766284 (P.T.A.B. Nov. 24, 2015)

Trials@uspto.gov Paper 10
Tel: 571-272-7822 Entered: November 24, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

HORIZON DISCOVER GROUP PLC,
HORIZON SAGE HOLDING CORP., AND SAGE LABS, INC.,
Petitioner,

v.

TRASPOSAGEN BIOPHARMACEUTICALS, INC.,
Patent Owner.
____________

Case IPR2015-01884 (Patent 8,558,055 B2)
Case IPR2015-01887 (Patent 8,722,964 B2)
1

_____________

Before TONI SCHEINER, ERICA A. FRANKLIN, and
CHRISTOPHER G. PAULRAJ, Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

JUDGMENT
Termination of the Proceeding
37 C.F.R. § 42.72

1
This judgment addresses issues that are identical in the two cases. We,
therefore, exercise our discretion to issue one order to be filed in each case.

IPR2015-01884 (Patent 8,558,055 B2)
IPR2015-01888 (Patent 8,722,964 B2)

2

On November 19, 2015, the parties filed in each proceeding a joint
motion to terminate the proceeding pursuant to 35 U.S.C § 317. Paper 7.
2

In addition, and pursuant to 35 U.S.C § 317 (b) and 37 C.F.R. § 42.74, the
parties filed in each proceeding a true copy of their written settlement
agreement, Ex. 1032, and requested in each joint motion that each
settlement agreement be treated as business confidential information and
kept separate from the file of US Patent No. 8,558,055 B2 and US Patent
No. 8,722,964 B2. Paper 8. The settlement agreements were filed so as to
limit viewing to the parties and the Board only.
The parties indicated in their joint motions that termination of these
proceedings is appropriate because they have reached an agreement settling
their dispute with respect to each patent. Id. at 2. The parties indicated also
that they have filed a Stipulated Dismissal in the related district court
litigation, Sage Labs, Inc. v. Transposagen Biopharmaceuticals, Inc., No.
1:15-cv-00791-SLR (D. Del.). Id. at 3.
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 motions, these proceedings have not yet been
decided on the merits. Each proceeding is in the preliminary stage.
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

2
Paper numbers and Exhibit numbers refer to filings in IPR2015-01884.
Similar papers and exhibits were filed in IPR2015-01887.
IPR2015-01884 (Patent 8,558,055 B2)
IPR2015-01888 (Patent 8,722,964 B2)

3

true copy shall be filed with the Board before termination of the trial.” As
the parties have filed copies of their written settlement agreements, and have
requested a dismissal of the co-pending district court case, we determine that
it is appropriate to terminate this proceeding without rendering a Final
Written Decision as to the patentability of the challenged claims. 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 files of the
file of US Patent No. 8,558,055 B2 and US Patent No. 8,722,964 B2.
37 C.F.R. § 42.74(c).

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

IPR2015-01884 (Patent 8,558,055 B2)
IPR2015-01888 (Patent 8,722,964 B2)

4

PETITIONER:

Sanya Sukduang
Sanya.sukduang@finnegan.com

Rebecca McNeill
Rebecca.mcneill@mcneillbaur.com

PATENT OWNER:

James Brogan
jbrogan@cooley.com

Orion Armon
oarmon@cooley.com