BLEPHEX, LLC

Patent Trials and Appeals BoardMar 3, 2021

IPR2020-01738 (P.T.A.B. Mar. 3, 2021)

Trials@uspto.gov Paper 11 571-272-7822 Date: March 3, 2021 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD MYCO INDUSTRIES, INC., Petitioner, v. BLEPHEX, LLC, Patent Owner. IPR2020-01738 Patent 10,449,087 B2 Before MEREDITH C. PETRAVICK, SCOTT A. DANIELS, and SCOTT C. MOORE, Administrative Patent Judges. PETRAVICK, Administrative Patent Judge. DECISION Settlement Prior to Institution of Trial 37 C.F.R. § 42.74 Case IPR2020-01738 Patent 10,449,087 B2 2 I. INTRODUCTION Petitioner and Patent Owner jointly request that the above-referenced inter partes review proceeding be terminated pursuant to a settlement. On March 2, 2021, with our authorization1, Petitioner filed a Joint Motion to Terminate Proceeding (Paper 9), a copy of a Confidential Settlement Agreement (Ex. 1058), and a Joint Motion to Treat as Confidential (Paper 10). II. DISCUSSION In the Joint Motion to Terminate Proceeding, the parties represent that they “have reached an agreement to terminate IPR2020-01738.” Paper 9, 1. The parties also represent that the Settlement Agreement has been made in writing, and that they filed a true copy of the same as Exhibit 1058. Id. at 2. This proceeding is at an early stage, and we have not yet decided whether to institute an inter partes review. In view of the early stage of the proceeding and the agreement between the parties to terminate the proceeding, we determine that good cause exists to end the proceeding. With respect to the parties’ Joint Motion to Treat as Confidential, we have reviewed the Settlement Agreement, and find the Settlement Agreement contains confidential business information regarding the terms of settlement. We determine that good cause exists to treat the Settlement Agreement as business confidential information pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). 1 We authorized the filing of this joint motion via email on February 25, 2021. Case IPR2020-01738 Patent 10,449,087 B2 3 III. CONCLUSION For the foregoing reasons, we grant the parties’ Joint Motion to Terminate Proceeding and Joint Motion to Treat as Confidential. This determination does not constitute a final written decision pursuant to 35 U.S.C. § 318(a). IV. ORDER Accordingly, it is: ORDERED that the Joint Motion to Terminate Proceeding is granted, and IPR2020-01738 is terminated due to settlement prior to institution of trial with respect to Petitioner and Patent Owner pursuant to 37 C.F.R. § 42.74; and FURTHER ORDERED that the Joint Motion to Treat as Confidential is granted, and the Settlement Agreement shall be kept separate from the file of U.S. Patent No. 10,449,087 B2, and made available only to Federal Government agencies on written request, or to any person on a showing of good cause, pursuant to 37 C.F.R. § 42.74(c). IPR2020-01738 Patent 10,449,087 B2 4 FOR PETITIONER: Thomas A. Lewry Christopher C. Smith Andrew B. Turner Rebecca J. Cantor BROOKS KUSHMAN P.C. tlewry@brookskushman.com csmith@brookskushman.com aturner@brookskushman.com rcantor@brookskushman.com FOR PATENT OWNER: James M. Glass Peter J. Armenio Sean Gloth QUINN EMANUEL URQUHART, & SULLIVAN, LLP jimglass@quinnemanuel.com peterarmenio@quinnemanuel.com seangloth@quinnemanuel.com