Prism Pharma Co., Ltd.v.JW Pharmaceutical Corp.

Patent Trial and Appeal Board

Jul 8, 2014

13194428 (P.T.A.B. Jul. 8, 2014)

Trials@uspto.gov Paper 20
571-272-7822 Entered: September 17, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

PRISM PHARMA CO., LTD.,
Petitioner,

v.

CHOONGWAE PHARMA CORPORATION,
Patent Owner.

____________

Case IPR2014-00315
Patent 8,318,738 B2
____________

Before LORA M. GREEN, SHERIDAN K. SNEDDEN, and
ZHENYU YANG, Administrative Patent Judges.

GREEN, Administrative Patent Judge.

JUDGMENT
Termination of the Proceeding
37 C.F.R. § 42.73

On September 10, 2014, and pursuant to 35 U.S.C. § 317(b) and
37 C.F.R. § 42.74, the parties filed a copy of a settlement (Paper 19)1
agreement along with a joint request to treat the settlement agreement as
business confidential, to be separate from the patent file. Paper 18. The

1 We note that the confidential settlement agreement should have been filed
as an exhibit, rather than as a paper.
IPR2014-00315
Patent 8,318,738 B2

2
parties filed also a joint motion to terminate the proceeding pursuant to
35 U.S.C. § 317. Paper17.
We note that we denied institution of inter partes review on July 8,
2014. Paper 14. Petitioner, however, filed a Request for Rehearing
Pursuant to 37 C.F.R. § 42.71 of our decision not to institute trial, and that
Request has not yet been decided. Thus, the possibility that trial may be
instituted still remains. Petitioner also withdraws its Request for Rehearing
in view of the joint motion to terminate. Based on the facts of this case, it is
appropriate to enter judgment.2 Therefore, the joint motion to terminate the
proceeding is GRANTED.
Accordingly, it is
ORDERED that the parties’ request that the settlement agreement be
treated as business confidential information, to be kept separate from the
patent file, is GRANTED;
FURTHER ORDERED that the joint motion to terminate the
proceeding is GRANTED;
FURTHER ORDERED that the proceeding is TERMINATED.

2 A judgment means a final written description by the Board, or a
termination of a proceeding. 37 C.F.R. § 42.2.
IPR2014-00315
Patent 8,318,738 B2

3
For PETITIONER:

William G. James
Michael N. Zachary
KENYON & KENYON LLP
wjames@kenyon.com
mzachary@kenyon.com

For PATENT OWNER:

Karl Hermanns
Qing Lin
SEED IP LAW GROUP PLLC
karlh@seedip.com
beckyl@seedip.com