Merck Sharp & Dohme Corp.

Patent Trials and Appeals Board

Dec 8, 2020

IPR2020-01045 (P.T.A.B. Dec. 8, 2020)

Trials@uspto.gov Paper 25
571-272-7822 Date: December 8, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

TEVA PHARMACEUTICALS USA, INC. AND WATSON
LABORATORIES, INC.,
Petitioner

v.

MERCK SHARP & DOHME CORP.,
Patent Owner.
____________

IPR2020-01045
Patent 7,326,708 B2
____________

Before SHERIDAN K. SNEDDEN, ROBERT A. POLLOCK, and
TIMOTHY G. MAJORS, Administrative Patent Judges.

MAJORS, Administrative Patent Judge.

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

IPR2020-01045
Patent 7,326,708 B2
2

DISCUSSION
Pursuant to authorization by the Board, the parties filed the following:
(1) a Joint Motion to Terminate IPR (Paper 22); (2) a true copy of the
parties’ settlement agreement (Ex. 1023); and (3) a joint motion to treat the
settlement agreement as business confidential information, and to keep
separate from the file of the involved patent, under 37 C.F.R. § 42.74(c)
(Paper 23).
Oral argument has not been held, and a final written decision has not
been entered. In the Joint Motion to Terminate IPR, the parties indicate that
they have settled all their disputes in this proceeding, and have agreed to
terminate the proceeding. Paper 22, 1. The parties represent that “there are
no other agreements, oral or written, between the parties made in connection
with, or in contemplation of, the termination of the proceeding, beyond the
written agreements submitted as Ex. 1023.” Id. Under these particular
circumstances, we determine that it is appropriate to terminate the
proceeding without rendering a final written decision. See 35 U.S.C. § 317;
37 C.F.R. § 42.72. We also have reviewed the copy of the parties’
settlement agreement (Ex. 1023), and we determine that good cause exists to
treat this settlement agreement as business confidential information, and
keep it separate from the file of U.S Patent No. 7,326,708 B2 (Ex. 1001, “the
’708 patent”), under 37 C.F.R. § 42.74(c).
IPR2020-01045
Patent 7,326,708 B2
3

ORDER
In consideration of the foregoing, it is hereby:
ORDERED that the parties’ request (Paper 23) to treat the true copy
of their settlement agreement (Ex. 1023) as business confidential
information, and to keep separate from the file of the involved patent, under
37 C.F.R. § 42.74(c) is granted;
FURTHER ORDERED that the settlement agreement (Ex. 1023) shall
be treated as business confidential information, kept separate from the file of
the ’708 patent, and made available only to Federal Government agencies on
written request to the Board, or to any person on a showing of good cause,
under the provisions of 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c); and
FURTHER ORDERED that the parties’ Joint Motion to Terminate
Proceeding (Paper 22) is granted, and the proceeding (IPR2020-01045) is
terminated;
FURTHER ORDERED that, within 10 days, the parties shall file in
the IPR2020-00040 proceeding a Joint Motion to Withdraw Joinder as to
Petitioners Teva Pharmaceuticals USA, Inc. and Watson Laboratories, Inc.
Before filing the Joint Motion to Withdraw Joinder, the moving parties are
also instructed to confer with the other parties in IPR2020-00040, such that
the moving parties are in a position to indicate to the Board upon filing of
the motion whether the Joint Motion to Withdraw Joinder is unopposed.

IPR2020-01045
Patent 7,326,708 B2
4

PETITIONER:
Keith Zullow
kzullow@goodwinprocter.com

Sarah Fischer
sfischer@goodwinprocter.com

PATENT OWNER:

Stanley Fisher
sfisher@wc.com

Jessamyn Berniker
jberniker@wc.com

Shaun Mahaffy
smahaffy@wc.com

Anthony Sheh
asheh@wc.com