Apotex Corp.v.Alcon Research, Ltd.

Patent Trial and Appeal BoardJul 21, 2014

12441995 (P.T.A.B. Jul. 21, 2014)

Trials@uspto.gov Paper 58 571-272-7822 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

Apotex Corp. v. Alcon Research, Ltd.