Sun Pharmaceutical Industries LimitedDownload PDFPatent Trials and Appeals BoardAug 26, 2020IPR2020-00822 (P.T.A.B. Aug. 26, 2020) Copy Citation Trials@uspto.gov Paper 7 571.272.7822 Entered: August 26, 2020 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ UPJOHN US 1 LLC, Petitioner, v. SUN PHARMACEUTICALS INDUSTRIES LIMITED, Patent Owner. ____________ Case IPR2020-00822 Patent 9,393,205 B2 ____________ Before ZHENYU YANG, ROBERT A. POLLOCK, and RICHARD J. SMITH, Administrative Patent Judges. SMITH, Administrative Patent Judge. DECISION Settlement Prior to Institution of Trial 37 C.F.R. § 42.74 IPR2020-00822 Patent 9,393,205 B2 2 On August 25, 2020, the parties filed a joint motion to terminate the above-referenced proceeding pursuant to 35 U.S.C. § 317 and 37 C.F.R. § 42.74. Paper 6. The parties also filed a copy of a settlement and license agreement (Ex. 1032) and, as part of the joint motion to terminate, a request to treat settlement documents as confidential business information pursuant to 37 C.F.R. § 42.74(c). Paper 6. Generally, the Board expects that a proceeding will terminate after the filing of a settlement agreement. Patent Trial and Appeal Board Consolidated Trial Practice Guide1 86. This case is in the preliminary proceeding stage, which begins with the filing of a petition and ends with a written decision as to whether trial will be instituted. See 37 C.F.R. § 42.2. Based on the facts of this case, we determine that it is appropriate to dismiss this case without rendering a decision as to whether a trial will be instituted. Therefore, the joint motion to terminate is GRANTED. Accordingly, in consideration of the foregoing, it is hereby: ORDERED that the joint motion to terminate the above-referenced case is GRANTED; FURTHER ORDERED that the parties’ request that the settlement and license agreement (Ex. 1032) be treated as business confidential information, to be kept separate from the file of US Patent 9,393,205 B2, is GRANTED; and FURTHER ORDERED that the Petition for inter partes review in IPR2020-00822 is DISMISSED. 1 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated. IPR2020-00822 Patent 9,393,205 B2 3 PETITIONER: Jeffrey J. Oelke R.J. Shea FENWICK & WEST LLP joelke@fenwick.com rshea@fenwick.com PATENT OWNER: Stephen P. Benson FREEBORN & PETERS LLP sbenson@freeborn.com Copy with citationCopy as parenthetical citation
