Impax Laboratories, Inc.v.Meda Pharmaceuticals Inc.

Patent Trials and Appeals Board

Jul 29, 2014

11284109 - (D) (P.T.A.B. Jul. 29, 2014)

Trials@uspto.gov Paper 12
571-272-7822 Entered: August 4, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

IMPAX LABORATORIES, INC.
Petitioner

v.

MEDA PHARMACEUTICALS INC.
Patent Owner

____________

Case IPR2014-00731
Patent 8,071,073 B2
____________

Before JACQUELINE WRIGHT BONILLA, GRACE KARAFFA OBERMANN,
and DONNA M. PRAISS, Administrative Patent Judges.

BONILLA, Administrative Patent Judge.

ORDER
Termination of Proceeding
37 C.F.R. § 42.72

IPR2014-00731
Patent 8,071,073 B2

2
On June 26, 2014, the parties filed a Joint Motion to Terminate this
proceeding under 35 U.S.C. § 317(a) with respect to both Petitioner, Impax
Laboratories, Inc., and Patent Owner, Meda Pharmaceuticals Inc. Paper 9. On the
same day, the parties filed a copy of their written settlement agreement relating to
U.S. Patent No. 8,071,073 B2 involved in this proceeding. Ex. 1020. In addition,
the parties filed a Joint Request to have their settlement agreement treated as
confidential business information under 35 U.S.C. § 317(b) and 37 C.F.R.
§ 42.74(c). Paper 10. The parties represent that the settlement agreement filed as
Exhibit 1020 is a true and accurate copy of their settlement agreement. Paper 9, 2.
This case is in the preliminary proceeding
1
stage; no decision whether to
institute a trial has been made. The Joint Motion to Terminate indicates that the
parties have “executed a settlement agreement to terminate this proceeding and the
parties’ related district court litigation: Meda Pharmaceuticals Inc. v. Apotex Inc.,
Apotex Corp., Perrigo Israel Pharmaceutical Ltd., Perrigo Company., L. Perrigo
Company., and Impax Laboratories, Inc., C.A. No. 12-361 (JAP) (TJB) (D.N.J.).”
Paper 9, 2; see also Paper 2, 1; Paper 5, 1-2. The Joint Motion to Terminate states
that “the parties are unaware of any other matter before the USPTO that would be
affected by the outcome of this proceeding. Id. at 3. The parties also filed a copy
of a Findings of Fact and Consent Judgment and Order in the related district court
case. Ex. 1019.
The Board generally expects that a proceeding will terminate after the filing
of a settlement agreement. See, e.g., Office Patent Trial Practice Guide, 77 Fed.
Reg. 48,756, 48,768 (Aug. 14, 2012). Considering the facts and early stage of this

1
A preliminary proceeding begins with the filing of a petition for instituting a trial
and ends with a written decision as to whether trial will be instituted. 37 C.F.R.
§ 42.2.
IPR2014-00731
Patent 8,071,073 B2

3
proceeding, we agree with the parties that it is appropriate to terminate this
proceeding.
Accordingly, it is
ORDERED that the joint motion to terminate the proceeding is granted;
FURTHER ORDERED that the parties’ joint request that the settlement
agreement be treated as business confidential information, kept separate from the
files of the involved patent, and made available only to the persons identified in 37
C.F.R. § 42.74(c), is granted; and
FURTHER ORDERED that the proceeding is terminated.

IPR2014-00731
Patent 8,071,073 B2

4

For PETITIONER:

Herbert D. Hart III
Aaron F. Barkoff
MCANDREWS, HELD & MALLOY, LTD.
hhart@mcandrews-ip.com
abarkoff@mcandrews-ip.com

For PATENT OWNER:

Eldora L. Ellison
Peter A. Jackman
STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
Eellison-PTAB@skgf.com
Pjackman-PTAB@skgf.com