From:
`Sent:
`To:
`
`Cc:
`
`Subject:
`
`Trials <Trials@USPTO.GOV>
`
`
`Tuesday, June 9, 2020 8:26 AM
`Chow, Arlene L.
`Amgen/ Apotex IPR; Yakob, Ernest; jengordon@paulweiss.com;
`
`
`
`cnyarady@paulweiss.com; Rea, Terry (External); dyellin@crowell.com;
`
`
`vqalluzzo@crowell.com; mjacobs@crowell.com; slentz@crowell.com
`
`
`
`RE: Apotex v. Amgen (IPR2016-01542) I Request for Authorization to File Motion to
`
`Terminate Proceeding
`
`Follow Up Flag:
`Flag Status:
`
`Follow up
`Flagged
`
`Counsel,
`
`The parties are authorized to file a joint motion to terminate this IPR. The joint motion to terminate should
`
`
`
`
`
`
`
`
`
`
`
`explain why termination is appropriate and provide the status of any related district court cases or USPTO
`
`
`
`
`
`proceedings with respect to all parties. The parties should be mindful of the requirements set forth in 35
`
`U.S.C. § 317(b) and 37 C.F.R. § 42.74(b), that any agreement, including
`
`
`any collateral agreement, between the
`
`
`
`
`
`parties made in connection with the termination of the proceeding must be in writing and a fully executed
`
`
`copy must be filed with the Board as an exhibit to the motion. The joint motion to terminate shall include a
`
`
`
`
`
`
`representation that the parties have complied with this requirement. The parties also are authorized to file a
`
`
`
`
`
`request to treat the settlement agreement as business confidential information and to file the settlement
`
`
`
`agreement as "Parties and Board Only." Please refer to the procedures set forth in 37 C.F.R. § 42.74(c).
`
`Regards,
`Eric W. Hawthorne
`
`Supervisory Paralegal Specialist
`Patent Trial and Appeal Board
`
`From: Chow, Arlene L. <arlene.chow@hoganlovells.com>
`Sent: Friday, May 15, 2020 2:56 PM
`
`
`To: Trials <Trials@USPTO.GOV>
`Cc: Amgen/Apotex IPR <Amgen_ApotexlPR@hoganlovells.com>; Yakob, Ernest <ernest.yakob@hoganlovells.com>;
`
`
`
`
`
`
`jengordon@paulweiss.com; cnyarady@paulweiss.com; Rea, Terry (External) <TRea@crowell.com>;
`
`
`
`
`dyellin@crowell.com; vgalluzzo@crowell.com; mjacobs@crowell.com; slentz@crowell.com; Chow, Arlene L.
`
`<arlene.chow@hoganlovells.com>
`
`
`
`
`
`
`
`
`Proceeding to File Motion to Terminate Subject: Apotex v. Amgen (IPR2016-01542) for Authorization I Request
`
`Dear Board,
`
`I am Lead Counsel for Patent Owners Amgen Inc. and Amgen Manufacturing Limited ("Amgen") in the IPR2016-01542
`
`
`
`
`
`
`
`
`proceeding regarding U.S. Patent No. 8,952,138. On March 24, 2020, the Federal Circuit vacated the Board's decisions in
`Amgen
`Exhibit 2064
`Apotex Inc., et al. v. Amgen Inc., et al.
`IPR2016-01542
`
`1
`
`Ex. 2064-001
`
`

`

`the IPR and remanded for further proceedings consistent with Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 (Fed.
`Cir. 2019). The Federal Circuit issued its mandate today.
`
`Amgen requests authorization to move to terminate this proceeding pursuant to 35 U.S.C. § 317(a). The sole Petitioners
`in this case, Apotex Inc. and Apotex Corp. (“Petitioners” – whose counsel are copied on this email), withdrew from this
`case during the appeal and have indicated that they do not oppose termination of the IPR. Although the Board recently
`placed this and other Arthrex-related remands “in administrative abeyance until the Supreme Court acts on a petition
`for certiorari or the time for filing such petitions expires” (General Order, Paper No. 70, at 1-2), such an abeyance is
`unnecessary and unwarranted in this case, where there are no petitioners remaining in the proceeding.
`
`Should the Board wish to schedule a teleconference to discuss Amgen’s request, counsel for Amgen is available for a call
`anytime between 12-3 PM EST on May 21, 22, or 26th.
`
`Regards,
`
`Arlene Chow
`Reg. No. 47,489
`
`Arlene L. Chow
`Partner
`
`Hogan Lovells US LLP
`390 Madison Avenue
`New York, NY 10017
`Tel:
`+1 212 918 3000
`+1 212 918 3545
`Direct:
`+1 212 918 3100
`Fax:
`Email:
`arlene.chow@hoganlovells.com
`www.hoganlovells.com
`
`If you would l ke to know more about how we are managing the impact of the COVID-19 pandemic on our firm then take a look at our brief Q&A. If you
`would like to know more about how to handle the COVID-19 issues facing your business then take a look at our information hub.
`
`About Hogan Lovells
`Hogan Lovells is an international legal practice that includes Hogan Lovells US LLP and Hogan Lovells International LLP. For more information, see
`www.hoganlovells.com.
`
`CONFIDENTIALITY. This email and any attachments are confidential, except where the email states it can be disclosed; it may also be privileged. If
`received in error, please do not disclose the contents to anyone, but notify the sender by return email and delete this email (and any attachments) from
`your system.
`
`Ex. 2064-002
`
`2
`
`Ex. 2064-002
`
`