Novozymes A/S

Patent Trials and Appeals Board

Sep 7, 2021

IPR2021-00188 (P.T.A.B. Sep. 7, 2021)

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