Metrics, Inc. c/o Duane Morris LLPv.Senju Pharmaceutical Co., Ltd.

Patent Trial and Appeal Board

Jul 8, 2015

10525006 (P.T.A.B. Jul. 8, 2015)

Trials@uspto.gov Paper 39
571-272-7822 Entered: July 8, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

METRICS, INC., MAYNE PHARMA, and JOHNSON MATTHEY, INC.,
Petitioner,

v.

SENJU PHARMACEUTICAL CO., LTD., BAUSCH & LOMB, INC., and
BAUSCH & LOMB PHARMA HOLDINGS CORP.,
Patent Owner.
____________________

Case IPR2014-01041 (Patent 8,129,431 B2)
Case IPR2014-01043 (Patent 8,669,290 B2)
1

____________________

Before FRANCISCO C. PRATS, ERICA A. FRANKLIN, and
GRACE KARAFFA OBERMANN, Administrative Patent Judges.

OBERMANN, Administrative Patent Judge.

JUDGMENT
Granting Joint Motion to Terminate and
Granting Joint Request to Treat Settlement Agreement as Confidential
37 C.F.R. §§ 42.73, 42.74

1
This order addresses issues common to both cases; therefore, we issue a
single order to be entered in each case. The parties are authorized to use this
style heading when filing an identical paper in both proceedings, provided
that such heading includes a footnote attesting that “the word-for-word
identical paper is filed in each proceeding identified in the heading.”

IPR2014-01041 (Patent 8,129,431 B2)
IPR2014-01043 (Patent 8,669,290 B2)

2

On July 1, 2015, pursuant to Board authorization, the parties filed a
joint motion to terminate each proceeding identified in the caption.
Paper 37.
2
With each joint motion, the parties filed a copy of their written
settlement agreement, covering various matters involving the patents under
review. Ex. 2027. The parties concurrently filed a joint request in each
proceeding to treat their written settlement agreement as business
confidential information, to be kept separate from the patent file pursuant to
35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). Paper 38.
The parties advance Exhibit 2027 as a true copy of the parties’ written
settlement agreement, Paper 37, 1, and “certify that there are no collateral
agreements or understandings made in connection with, or in contemplation
of, the termination of the inter partes review.” Id. at 2. The parties attest
that their agreement “ends all patent disputes between the parties, including”
these inter partes reviews. Paper 37, 7. The parties also submit a copy of a
stipulated consent judgment and injunction entered on June 30, 2015, which
terminated their related district court litigation. Ex. 2028; see Paper 37, 3.
The Board generally expects that a trial will terminate after the filing of a
settlement agreement. See Office Patent Trial Practice Guide, 77 Fed. Reg.
48756, 48768 (Aug. 14, 2012).

2
Paper and Exhibit numbers are identical in IPR2014-01041 and IPR2014-
01043. Substantially similar joint motions to terminate were filed in each
proceeding.
IPR2014-01041 (Patent 8,129,431 B2)
IPR2014-01043 (Patent 8,669,290 B2)

3

The relatively early stage of these inter partes reviews counsels
against proceeding to a final written decision. The reviews were instituted
on February 19, 2015. Paper 19. Patent Owner has not yet filed a Response,
which is due on July 27, 2015. Paper 36. As such, the record is incomplete
and, lacking Patent Owner’s Response, is tilted towards Petitioner. We are
not inclined to move forward to a final decision on this record.
The parties identify a number of ongoing district court actions, and
inter partes reviews, involving Patent Owner and entities other than
Petitioner. Id. at 2–6. Most significantly, on March 19, 2015, an unrelated
entity filed petitions challenging the patents under review and, concurrently
therewith, filed motions to join with these proceedings; motions that
Petitioner here has opposed. See Paper 34 (Petitioner’s opposition to
joinder). One factor, informing our decision to grant the parties’ joint
motion to terminate the instant proceedings, is that the unrelated petitioner in
those other cases is not facing a time bar in the absence of joinder. See
IPR2015-00902, Paper 3, 2; IPR2015-00903, Exhibit 0, 2 (motions for
joinder, stating that underlying litigation was filed November 3, 2014); see
also Exhibit 2001, 8 (hearing transcript in related cases, in which counsel for
both parties confirm that the petitions in the related proceedings will not be
time-barred in the absence of joinder); 35 U.S.C. § 315(b), (c) (explaining
statutory bar, and the exception that applies to joinder).
Taking account of all of the circumstances, including the
incompleteness of the record and the fact that Petitioner and Patent Owner
have resolved all of their outstanding patent disputes, the Board determinates
IPR2014-01041 (Patent 8,129,431 B2)
IPR2014-01043 (Patent 8,669,290 B2)

4

that it is appropriate to terminate the proceedings without rendering a final
written decision. 37 C.F.R. § 42.72.

It is
ORDERED that the joint motion to terminate the proceedings is
granted in each proceeding;
FURTHER ORDERED that the joint request that the settlement
agreement be treated as business confidential information, to be kept
separate from the patent file, is granted in each proceeding; and
FURTHER ORDERED that each proceeding is terminated.

IPR2014-01041 (Patent 8,129,431 B2)
IPR2014-01043 (Patent 8,669,290 B2)

5

PETITIONER:

Patrick McPherson
Vincent Capuano
Duane Morris LLP
pdmcpherson@duanemorris.com
VCapuano@duanemorris.com

PATENT OWNER:

Bryan Diner
M. Andrew Holtman
Justin Hasford
Jonathan R. Stroud
Finnegan, Henderson, Farabow,
Garrett & Dunner, LLP
bryan.diner@finnegan.com
andy.holtman@finnegan.com
justin.hasford@finnegan.com
jonathan.stroud@finnegan.com