Pfizer Inc.

Patent Trials and Appeals Board

Oct 29, 2021

IPR2021-01132 (P.T.A.B. Oct. 29, 2021)

Trials@uspto.gov Paper 9
571-272-7822 Date: October 29, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

APOTEX INC.,
Petitioner,
v.
PFIZER INC.,
Patent Owner.

IPR2021-01132
Patent US 6,890,927 B2

Before JOHN G. NEW, SUSAN L.C. MITCHELL, and
CHRISTOPHER G. PAULRAJ, Administrative Patent Judges.
NEW, Administrative Patent Judge.

DECISION
Settlement Prior to Institution of Trial
37 C.F.R. § 42.74

IPR2021-01132
Patent US 6,890,927 B2

2
On October 21, 2021, with authorization of the Board, Petitioner
Apotex Inc. (“Petitioner”) and Patent Owner Pfizer Inc. (“Patent Owner”)
filed a joint motion to dismiss the petition and to terminate the proceeding.
Paper 8.
In the motion, the parties explain that dismissal of the petition and
termination of the proceeding is appropriate because the motion has been
filed prior to institution. Paper 8 at 3. Specifically, the parties state that they
have settled all of their disputes involving the challenged U.S. Patent No.
6,890,927 (“the ’927 patent”). Id. at 2.
The parties also represent that, pursuant to 37 C.F.R. § 42.74(b), the
Parties’ settlement agreement made in contemplation of termination of this
proceeding is in writing, and that a copy of the settlement agreement has
been filed as Petitioner’s Exhibit 1025. Id. The parties jointly request that
the settlement agreement, filed as Petitioner’s Exhibit 1025, be treated as
business confidential information, and be kept separate from the files of the
above captioned IPR pursuant to 35 U.S.C. § 317(b) and 37 C.F.R.
§ 42.74(c). Id. at 4.
As Petitioner correctly asserts, this case is in the preliminary proceeding
stage, and a decision whether to institute trial has not been entered. Under
the circumstances, we conclude that it is appropriate to grant Petitioner’s
unopposed motion to terminate the proceeding. Furthermore, we grant the
parties joint request to treat the parties’ settlement agreement as business
confidential information. The settlement agreement will be kept separate
from the file of the ’927 patent, but will be part of the record in this
proceeding and shall be made available only to Federal Government
IPR2021-01132
Patent US 6,890,927 B2

3
agencies on written request, or to any other person on a showing of good
cause. See 35 U.S.C. § 317(b); 37 C.F.R. § 42.74(c).

ORDER
Accordingly, it is hereby:
ORDERED that the parties’ motion is granted with respect to the
request to terminate the proceeding in IPR2021-01132; and
FURTHER ORDERED that the joint request that Exhibit 1025 be
treated as business confidential information and kept separate from the file
of U.S. Patent 9,056,289 B2, pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. §
42.74(c).

IPR2021-01132
Patent US 6,890,927 B2

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FOR PETITIONER:
Deanne M. Mazzochi
Paul J. Molino
Jeffrey A. Marx
Mazzochi Siwik LLP
dmazzochi@rmmslegal.com
paul@rmmslegal.com
jmarx@rmmslegal.com

FOR PATENT OWNER:
Andrew V. Trask
Michael Xun Liu
Williams & Connolly LLP
atrask@wc.com
mliu@wc.com