GlaxoSmithKline Biologicals SADownload PDFPatent Trials and Appeals BoardNov 12, 2020IPR2019-01028 (P.T.A.B. Nov. 12, 2020) Copy Citation Trials@uspto.gov Paper 62 571.272.7822 Entered: November 12, 2020 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD PFENEX INC., Petitioner, v. GLAXOSMITHKLINE BIOLOGICALS SA, Patent Owner. IPR2019-01028 Patent No. 9,422,345 B2 Before SHERIDAN K. SNEDDEN, JO-ANNE M. KOKOSKI, and RICHARD J. SMITH, Administrative Patent Judges. SMITH, Administrative Patent Judge. DECISION Due to Settlement After Institution of Trial 35 U.S.C. § 317; 37 C.F.R § 42.74 IPR2019-01028 Patent 9,422,345 B2 2 At the request of the parties, the Board authorized the parties to file a motion to terminate, settlement agreement, and motion to keep the settlement agreement business confidential. Ex. 3005. On October 30, 2020, the parties filed a Joint Motion to Terminate (Paper 57), and a Joint Request to File Settlement Materials as Business Confidential Information and to Maintain said Materials Separate from the Public File (Paper 58). The parties also filed a Confidential Settlement Agreement. Ex. 2049. On November 3, 2020, the Board granted the Joint Request to File Settlement Materials as Business Confidential Information and to Maintain said Materials Separate from the Public File. Paper 60. The Board also denied, without prejudice, the Joint Motion to Terminate, but granted the parties leave to file an Amended Joint Motion to Terminate containing a certification that there are no other agreements or understandings between the parties made in connection with, or in contemplation of, the termination of the above-referenced proceeding.1 Id. The Amended Joint Motion to Terminate, providing the certification, was filed on November 4, 2020.2 Paper 61. 1 Paper 60 contains a typographical error at page 3, and should read “FURTHER ORDERED that the parties are granted leave to file an Amended Joint Motion to Terminate containing a certification that there are no other agreements or understandings no later than November 5, 2020.” Paper 60, 3. 2 The certification in the Amended Joint Motion to Terminate refers to “Confidential Exhibit 1081.” Paper 61, 2–3. Because there is no Exhibit 1081, we understand that reference to be a typographical error that was meant to state “Confidential Exhibit 2049.” IPR2019-01028 Patent 9,422,345 B2 3 Generally, the Board expects that a proceeding will terminate after the filing of a settlement agreement. Patent Trial and Appeal Board Consolidated Trial Practice Guide3 86. An oral hearing was held in the above-referenced case on September 9, 2020, but a final written decision has not been rendered. Based on the facts in this case, we determine that it is appropriate to terminate the above-referenced case without rendering a final written decision. Accordingly, in consideration of the foregoing, it is hereby ORDERED that the Amended Joint Motion to Terminate the above- referenced case (Paper 61) is GRANTED; and FURTHER ORDERED that the inter partes review in IPR2019-01028 is TERMINATED. 3 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated. IPR2019-01028 Patent 9,422,345 B2 4 For PETITIONER: Jeffrey Guise Lora Green Wendy Devine Lorelei Westin WILSON SONSINI GOODRICH & ROSATI jguise@wsgr.com lgreen@wsgr.com wdevine@wsgr.com lwestin@wsgr.com For PATENT OWNER: Charles Lipsey Rich Racine Joann Neth Amanda Murphy Trenton Ward Yieyie Yang FINNNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, LLP Charles.lipsey@finnegan.com Rich.racine@finnegan.com Joan.neth@finnegan.com Amanda.murphy@finnegan.com Trenton.ward@finnegan.com Yieyie.yang@finnegan.com Copy with citationCopy as parenthetical citation