Alexion Pharmaceuticals, Inc.

Patent Trials and Appeals Board

Jun 1, 2020

IPR2019-00740 (P.T.A.B. Jun. 1, 2020)

Trials@uspto.gov Paper 48
Tel: 571-272-7822 Entered: June 1, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________

AMGEN INC.,
Petitioner,

v.

ALEXION PHARMACEUTICALS,
Patent Owner.
____________

Case IPR2019-00739 (Patent 9,725,504 B2)
Case IPR2019-00740 (Patent 9,718,880 B2)
Case IPR2019-00741 (Patent 9,732,149 B2)1
____________

Before TINA E. HULSE, ROBERT A. POLLOCK, and
RYAN H. FLAX, Administrative Patent Judges.

POLLOCK, Administrative Patent Judge.

TERMINATION
Due to Settlement After Institution of Trial
35 U.S.C. § 317 and 37 C.F.R. §§ 42.72, 42.74

1 This Order addresses the same issue for the above-identified proceedings.
Therefore, we exercise our discretion to issue one decision to be filed in each
proceeding. The parties are not authorized to use this style heading in any
subsequent papers.
IPR2019-00739 (Patent 9,725,504 B2)
IPR2019-00740 (Patent 9,718,880 B2)
IPR2019-00741 (Patent 9,732,149 B2)

2

Amgen Inc. (“Petitioner”) filed Petitions for inter partes review of claims 1–
10 of U.S. Patent No. 9,725,504 B2 (“the ’504 patent”), claims 1–3 of U.S. patent
No. 9,718,880 B2 (“the ’880 patent”), and claim 1 of U.S. Patent No. 9,732,149 B2
(“the ’149 patent”). Paper 2.2 In each case, Alexion Pharmaceuticals (“Patent
Owner”) timely filed a Preliminary Response. Paper 10. The parties further
submitted authorized Replies and Sur-Replies to the corresponding Preliminary
Responses. See Papers 13 and 14, respectively.
On August 30, 2019, we granted Amgen’s Petitions to institute inter partes
reviews as to all challenged claims. Paper 15. Also on August 30, 2019, we issued
a Scheduling Order, which set June 1, 2020 as DUE DATE 8, the date for oral
argument, if requested. Paper 16. Patent Owner subsequently filed Responses to
the Petitions. Paper 22. Petitioner filed Replies (Paper 29) and Patent Owner filed
Sur-replies. Paper 38.
On April 17, 2020, the parties requested oral argument (Papers 36, 37),
which we granted (Paper 41). On May 27, 2020, this panel convened a conference
call to discuss the parties’ joint request to postpone the date of oral hearing in light
of on-going settlement negotiations. See Paper 44. To facilitate settlement, we reset
the date of oral hearing to June 16, 2020, and authorized the filing of a motion to
terminate each of the above proceedings. Id.
On May 29, 2020, the parties filed Joint Motions to Terminate. Paper 45. In
accordance with 35 U.S.C. § 317 and 37 C.F.R. § 42.74, the parties also filed, as
Exhibit 1097, a copy of their Settlement Agreement, made in connection with the

2 For simplicity, we refer to the papers filed in IPR2019-00739. Corresponding
papers are filed in IPR2019-00740 and IPR2019-00741.
IPR2019-00739 (Patent 9,725,504 B2)
IPR2019-00740 (Patent 9,718,880 B2)
IPR2019-00741 (Patent 9,732,149 B2)

3

termination of these proceedings. The parties further filed a joint request that the
Settlement Agreement be treated as business confidential information, and be kept
separate from the file of the involved patent, under 35 U.S.C. § 317(b) and
37 C.F.R. § 42.74(c). Paper 46.
The Board generally expects that a case “will terminate after the filing of a
settlement agreement, unless the Board has already decided the merits of the
proceeding.” Consolidated Office Patent Trial Practice Guide (November 2019),3
86 (citing 35 U.S.C. §§ 317(a), 327). In their Joint Motions to Terminate, Patent
Owner and Petitioner aver that they “have executed a settlement agreement that
resolves all of their disputes concerning the ’504[, ’740, and ’149] patent[s].” See
Paper 45, 1. Moreover, the Joint Motions to Terminate were filed before any final
written decision and a decision on the merits.
Upon consideration of the facts before us, we determine that it is appropriate
to terminate the above proceedings and enter judgment, without rendering a final
written decision. See 37 C.F.R. §§ 42.5(a), 42.71(a), 42.73(a), 42.74. Accordingly,
we grant the Joint Motions to Terminate.
We also determine that the parties have complied with the requirements of
37 C.F.R. § 42.74(c) to have the Settlement Agreement treated as business
confidential information and kept separate from the files of the patent at issue in
this proceeding. Thus, we grant the Joint Request to treat the Settlement
Agreement as business confidential and, thus, remain designated as Board only.

3 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
IPR2019-00739 (Patent 9,725,504 B2)
IPR2019-00740 (Patent 9,718,880 B2)
IPR2019-00741 (Patent 9,732,149 B2)

4

ORDER
Accordingly, it is
ORDERED that the joint request of Patent Owner and Petitioner to treat the
Settlement Agreement (Ex. 1097) as business confidential information, to be kept
separate from the patent file, is GRANTED;
FURTHER ORDERED the Settlement Agreement shall remain designated
as Board only; and
FURTHER ORDERED that the joint motion to terminate the proceedings is
GRANTED.

For PETITIONER:

Deborah Sterling
David Holman
Scott Schaller
David Roadcap
STERNE, KESSLER, GOLDSTEIN & FOX PLLC
dsterling-ptab@sternekessler.com
dholman-ptab@sternekessler.com
sschalle-ptab@sternekessler.com
droadcap-ptab@sternekessler.com

For PATENT OWNER:

Gerald Flattmann, Jr.
Lori Gordon
KING & SPALDING LLP
gflattmann@kslaw.com
lgordon@kslaw.com