Pamarope Pty Limited

Patent Trials and Appeals Board

Mar 28, 2022

IPR2021-01437 (P.T.A.B. Mar. 28, 2022)

Trials@uspto.gov Paper 9 571-272-7822 Date: March 28, 2022 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD COLOPLAST A/S, Petitioner, v. PAMAROPE PTY LTD., Patent Owner. IPR2021-01437 Patent 10,925,715 B2 Before LYNNE H. BROWNE, CHRISTOPHER G. PAULRAJ, and RYAN H. FLAX, Administrative Patent Judges. BROWNE, Administrative Patent Judge. TERMINATION Due to Settlement After Institution of Trial 35 U.S.C. § 317; 37 C.F.R. § 42.74 IPR2021-01437 Patent 10,925,715 B2 2 I. INTRODUCTION Pamarope Pty Ltd. (“Patent Owner”) is the owner of U.S. Patent 10,925,715 (“the ’715 patent”). Coloplast A/S (“Petitioner”) filed a petition seeking inter partes review of and challenging the patentability of claims 1- 4, 6, 7, 9-14, 16, 17, 19, and 20 of the ’715 patent. Paper 2. On March 4, 2022, we instituted trial in this proceeding. Paper 6. With the Board’s authorization, Petitioner and Patent Owner (collectively referred to as “the Parties”) filed a Joint Motion to Terminate the above-identified proceeding due to settlement. Paper 7 (“Joint Motion”). In support of the Joint Motion, the Parties filed a copy of a Settlement and License Agreement (Ex. 1023 (“Settlement Agreement”)), as well as a Joint Request to File Settlement Agreement as Confidential Business Information pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) (Paper 8 (“Joint Request”)). II. DISCUSSION Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under this chapter shall be terminated with respect to any petitioner upon the joint request of the petitioner and the patent owner, unless the Office has decided the merits of the proceeding before the request for termination is filed.” Section 35 U.S.C. § 317(a) also provides that if no petitioner remains in the inter partes review, the Office may terminate the review. In the Joint Motion, the Parties represent that they have reached an agreement that “resolves all of their disputes concerning the ’715 Patent- expressly including the present IPR.” Joint Motion 2. The Parties further represent that the filed copy of the Settlement Agreement is “a true and IPR2021-01437 Patent 10,925,715 B2 3 correct copy,” and that it “represents all agreements made in connection with, or in contemplation of, the termination of this proceeding.” Id. at 3. Although we instituted trial in this , we have not yet decided the merits of the proceeding, and a final written decision has not been entered. Notwithstanding that the proceeding has moved beyond the preliminary stage, the Parties have adequately shown that termination of the proceeding is appropriate. Under these circumstances, we determine that good cause exists to terminate the proceeding with respect to the Parties. In the Joint Request, the Parties request that the Settlement Agreement be treated as business confidential information and be kept separate from the file of the patent involved in this proceeding. Joint Request 2. After reviewing the Settlement Agreement between Petitioner and Patent Owner, we find that the Settlement Agreement contains business confidential information regarding the terms of settlement. We determine that good cause exists to treat the Settlement Agreement between Petitioner and Patent Owner as business confidential information pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). This Order does not constitute a final written decision pursuant to 35 U.S.C. § 318(a). III. ORDER Accordingly, for the reasons discussed above, it is: ORDERED that the Joint Motion to Terminate (Paper 7) is granted, and IPR2021-01473 is terminated with respect to Petitioner and Patent Owner pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. § 42.72; and IPR2021-01437 Patent 10,925,715 B2 4 FURTHER ORDERED that the Joint Request to File Settlement Agreement as Confidential Business Information (Paper 8) is granted, and the Settlement Agreement (Ex. 1023) shall be kept separate from the file of Patent 10,925,715 B2, and be made available only to Federal Government agencies on written request, or to any person on a showing of good cause, pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). IPR2021-01437 Patent 10,925,715 B2 5 FOR PETITIONER: Stuart Nelson Grace Kim Fish & Richardson P.C. snelson@fr.com gkim@fr.com Nicholas Baumann Coloplast Corp. usnrb@coloplast.com FOR PATENT OWNER: Michael Furmanek Marshall, Gerstein & Borun LLP mfurmanek@marshallip.com