Novozymes A/SDownload PDFPatent Trials and Appeals BoardSep 7, 2021IPR2021-00188 (P.T.A.B. Sep. 7, 2021) Copy Citation Trials@uspto.gov Paper 19 571-272-7822 Entered: September 7, 2021 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ DANISCO US INC. and DUPONT NUTRITION BIOSCIENCES ApS, Petitioner, v. NOVOZYMES A/S, Patent Owner. ____________ IPR2021-00188 (Patent 10,058,107 B2) IPR2021-00189 (Patent 10,555,541 B2)1 ____________ Before JAMES A. WORTH, ROBERT A. POLLOCK, and RYAN H. FLAX, Administrative Patent Judges. PER CURIAM, Administrative Patent Judge. TERMINATION Due to Settlement After Institution of Trial and Granting Joint Request to Treat Settlement Agreement as Business Confidential Information 35 U.S.C. § 317; 37 C.F.R. § 42.74 1 Substantially identical copies of Paper 17, Paper 18, and Exhibit 2002, discussed infra, are of record in both of the above-referenced proceedings and this order applies to both cases. We exercise our discretion to issue one Order to be docketed in each case. The parties, however, are not authorized to use this caption for any subsequent papers. IPR2021-00188, Patent 10,058,107 B2 IPR2021-00189, Patent 10,555,541 B2 2 I. INTRODUCTION Petitioner and Patent Owner (collectively “the Parties”) have requested that the above-identified inter partes review proceedings be terminated pursuant to a settlement. On August 27, 2021, the Parties filed an authorized Joint Motion to Terminate Proceeding (“Joint Motion”). Paper 17. The Parties also filed a copy of a settlement agreement and collateral agreements (Ex. 2002, “Agreements”) and filed a Joint Request to Keep Agreements Confidential and Separate Under 37 C.F.R. § 42.74(c) (Paper 18, “Joint Request”) in the proceeding. II. DISCUSSION 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 the patent owner, unless the Office has decided the merits of the proceeding before the request for termination is filed.” It is also provided in 35 U.S.C. § 317(a) that if no petitioner remains in the inter partes review, the Office may terminate the review. In the Joint Motion, the Parties represent that they have reached an agreement to jointly seek termination of the inter partes review proceedings, that the filed copies of the Agreements are true copies and “there are no other agreements, oral or written, between the parties made in connection with, or in contemplation of, the termination of this proceeding.” Joint Motion 1. We instituted a trial in each proceeding on May 17, 2021. Paper 10 (in each). We have not yet decided the merits of the proceedings, and a final written decision has not been entered in either proceeding. Notwithstanding that the proceedings have moved beyond the preliminary stage, the Parties IPR2021-00188, Patent 10,058,107 B2 IPR2021-00189, Patent 10,555,541 B2 3 have shown adequately that the termination of the proceedings is appropriate. Under these circumstances, we determine that good cause exists to terminate the proceedings with respect to the Parties. The Parties also requested that the Agreements be treated as business confidential information and be kept separate from the file of Patents 10,555,541 and 10,058,107. Joint Request 1–2. After reviewing the Agreements between the Parties, we find that the Agreements contain confidential business information regarding the terms of settlement. We determine that good cause exists to treat the Settlement Agreement (Exhibit 2002 in each proceeding) as business confidential information pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). This Order does not constitute a final written decision pursuant to 35 U.S.C. § 318(a). III. ORDER Accordingly, for the reasons discussed above, it is: ORDERED that the Joint Motion is granted, and IPR2021-00188 and IPR2021-00189 are terminated with respect to Petitioner and Patent Owner, pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. § 42.72; and FURTHER ORDERED that the Joint Request is granted, and the Settlement Agreement (Exhibit 2002) shall be kept separate from the file of Patent 10,555,541 and Patent 10,058,107, 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. § 317(b) and 37 C.F.R. § 42.74(c). IPR2021-00188, Patent 10,058,107 B2 IPR2021-00189, Patent 10,555,541 B2 4 For PETITIONER: Michael J. Flibbert Pier D. DeRoo FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP michael.flibbert@finnegan.com pier.deroo@finnegan.com For PATENT OWNER: Dorothy P. Whelan Robert C. Sullivan, Jr. Michael T. Zoppo Kathryn Grey FISH & RICHARDSON P.C. whelan@fr.com rsullivan@fr.com zoppo@fr.com grey@fr.com Copy with citationCopy as parenthetical citation