Apotex Corp.v.Alcon Research, Ltd.

Patent Trial and Appeal Board

Jul 21, 2014

11858781 (P.T.A.B. Jul. 21, 2014)

Trials@uspto.gov Paper 60
571-272-7822 Entered: July 21, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

APOTEX CORP.
Petitioner

v.

ALCON RESEARCH, LTD
Patent Owner.
____________

Cases IPR2013-00428 (Patent 8,268,299 B2)
IPR2013-00429 (Patent 8,323,630 B2)
IPR2013-00430 (Patent 8,388,941 B2)
1

____________

Before LORA M. GREEN, FRANCISCO C. PRATS, and
RAMA G. ELLURU, Administrative Patent Judges.

GREEN, Administrative Patent Judge.

JUDGEMENT
Termination of the Proceedings
37 C.F.R. § 42.73
The parties have requested that these trial proceedings be terminated
pursuant to a settlement. On July 10, 2014, we authorized the parties to file
joint requests to terminate and to file the settlement agreement as business

1
We exercise our discretion to issue one order to be filed in each case. The
parties, however, are not authorized to use this style heading in subsequent
papers
IPR2013-00428 (Patent 8,268,299 B2)
IPR2013-00429 (Patent 8,323,630 B2)
IPR2013-00430 (Patent 8,388,941 B2)

2
confidential information under 37 C.F.R. § 42.74(c). Papers 56, 54, and 54.
2

On July 14, 2014, the parties filed a joint motion to terminate, as well as a
joint motion requesting that the joint settlement agreement be treated as
business confidential information and sealed. Papers 57, 58; 55, 56; and 55,
56; see also 35 U.S.C. § 317; 37 C.F.R. § 42.72. With their motion to
terminate and seal, the parties also filed a copy of a written settlement
agreement. Exs. 1020, 1020, and 1020.
A decision by the Board to institute a trial was entered on January 2,
2014. Papers 9, 8, and 9. The briefing and discovery processes have not
been completed in these proceedings, and the panel has not yet decided the
merits of the proceedings. The parties have identified other related matters
involving the patents at issue between Alcon Research, Ltd. (“Alcon”), and
other parties, but indicate that there are no other related proceedings between
the Patent Owner, Alcon, and Petitioner, Apotex Corp., and the patents at
issue in these proceedings. Papers 57, 2; 55, 2; and 55, 2. Under these
circumstances, we determine that it is appropriate to enter judgment
3
and
terminate the trials without rendering a final written decision. 37 C.F.R.
§ 42.72.
It is, therefore,
ORDERED that the joint motions to terminate the proceedings are
GRANTED and the proceedings are hereby terminated;

2
The listed paper numbers refer to the paper numbers of the proceedings in
numerical order, that is, the first paper number is the paper number in
IPR2013-00428, the second paper number is the paper number in IPR2013-
00429, and the third paper number is the paper number in IPR2013-00430.
3
A judgment means a final written decision by the Board, or a termination of
a proceeding. 37 C.F.R. § 42.2
IPR2013-00428 (Patent 8,268,299 B2)
IPR2013-00429 (Patent 8,323,630 B2)
IPR2013-00430 (Patent 8,388,941 B2)

3
FURTHER ORDERED that the parties’ joint requests that the
settlement agreement be treated as business confidential information and
shall be kept separate from the file of the involved patents under the
provisions of 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), are GRANTED.

For PETITIONER:
Eldora Ellison
eellison-PTAB@skgf.com

Ralph Powers
tpowers-PTAB@skgf.com

David Holman
dholman-PTAB@skgf.com

H. Keeto Sabharwal
keetos-PTAB@skgf.com

Paul Ainsworth
painsworth@skgf.com

For PATENT OWNER:

Stanley Fisher
sfisher@wc.com

Barry Copeland
barry.copeland@alcon.com

David Krinsky
dkrinsky@wc.com

Adam Perlman
aperlman@wc.com