`_____________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
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`ARGENTUM PHARMACEUTICALS LLC
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`Petitioner
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`v.
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`CIPLA LIMITED
`
`Patent Owner
`
`_____________________
`
`Case No. IPR2017-00807
`
`U.S. Patent No. 8,168,620
`_____________________
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`JOINT MOTION TO LIMIT PETITION UNDER 37 C.F.R. § 42.71
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`
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`
`
`
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`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`
`
`
`
`
`
`
`IPR2017-00807
`U.S. Patent No. 8,168,620
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`STATEMENT OF RELIEF REQUESTED
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`I.
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`Pursuant to 37 C.F.R. § 42.71 and an email communication authorizing this
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`motion,1 Petitioner Argentum Pharmaceuticals LLC and Patent Owner Cipla Ltd.
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`jointly request limiting the Petition (Paper 1) in this proceeding to Grounds 2 and 3
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`only. The parties respectfully request that the Board remove Ground 1 from this
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`proceeding.
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`II.
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`STATEMENT OF FACTS
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`Petitioner filed this Petition on February 2, 2017 presenting three grounds
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`challenging the patentability of U.S. Patent No. 8,168,620 (“the ’620 patent”): (1)
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`Ground 1 alleging unpatentability of claims 1 and 25 under 35 U.S.C. § 102(b)
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`over Segal; (2) Ground 2 alleging unpatentability of claims 1, 4-6, 24-26, and 29
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`under 35 U.S.C. § 103 over Hettche, Phillipps, and Segal; and (3) Ground 3
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`alleging unpatentability of claims 42-44 under 35 U.S.C. § 103 over Hettche,
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`Phillipps, Segal, and Flonase Label. See Paper 1, at 2. The Board, however,
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`instituted review on Grounds 2 and 3 only. See Paper 11, at 26-27. Subsequently,
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`the Board entered an order on April 26, 2018 modifying the Decision on Institution
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`to “include review of all challenged claims and all grounds presented in the
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`1 See Email from Andrew Kellogg, Supervisory Paralegal, Patent Trial and Appeal
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`Board, to counsel (dated May 4, 2018, 4:46 PM EST) (authorizing counsel to file a
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`joint Motion to Limit Petition under 37 C.F.R. § 42.71).
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`- 1 -
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`Petition,” including the Ground 1 which was not initially instituted. See Paper 51,
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`
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`IPR2017-00807
`U.S. Patent No. 8,168,620
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`at 2.
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`III.
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`ARGUMENT
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`Limiting the Petition is appropriate here for at least the following reasons.
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`First, both Petitioner and Patent Owner file this joint request to limit the
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`Petition in connection with their stipulation to limit the disputes between the
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`parties to Grounds 2 and 3 (as presented in the Petition) only. This stipulation has
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`been made in writing, and a true and accurate copy is filed herewith as Exhibit
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`CIP2182.
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`Second, the parties have agreed to remove Ground 1 from this proceeding,
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`which is directed to claims 1 and 25 only. The Board has already instituted review
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`of claims 1 and 25 in connection with Ground 2. Thus, even without Ground 1 this
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`proceeding complies with the Supreme Court’s admonition in SAS Instit., Inc. v.
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`Iancu, 2018 WL 1914661, at *10 (U.S. Apr. 24, 2018) to decide the patentability
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`of all claims challenged in the petition.
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`Third, because the patentability of all challenged claims in the Petition will
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`already be decided in the final written decision, reducing the number of grounds by
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`removing Ground 1 from this proceeding promotes efficient use of the resources of
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`the Board and saves expenses for the parties.
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`IV.
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`CONCLUSION
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`- 2 -
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`IPR2017-00807
`U.S. Patent No. 8,168,620
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`For the foregoing reasons, Petitioner and Patent Owner respectfully request
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`
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`that the Board remove Ground 1 from this trial and limit the Petition to Grounds 2
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`and 3 only.
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`Date: May 11, 2018
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`Date: May 11, 2018
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`Respectfully submitted,
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`
`/Michael Houston/
`Michael R. Houston
`Reg. No. 58,486
`Lead Attorney for Petitioner
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`Respectfully submitted,
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`
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`/Dennies Varughese/
`Dennies Varughese
`Registration No. 61,868
`Lead Attorney for Patent Owner
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`- 3 -
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`CERTIFICATE OF SERVICE (37 C.F.R. § 42.6(e))
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`The undersigned hereby certifies
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`that
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`the above-captioned “JOINT
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`MOTION TO LIMIT PETITION UNDER 37 C.F.R. § 42.71” was served in its
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`entirety on May 11, 2018, upon the following parties via electronic mail upon the
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`following counsel of record for the Petitioner:
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`Michael R. Houston: mhouston@foley.com
`Joseph P. Meara: jmeara@foley.com
`James P. McParland: jmcparland@foley.com
`ARG-dymista@foley.com
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`FOLEY & LARDNER LLP
`321 North Clark Street
`Suite 2800
`Chicago, IL 60654
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`
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`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
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`Dennies Varughese
`Registration No. 61,868
`Lead Attorney for Patent Owner
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`
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`Date: May 11, 2018
`1100 New York Avenue, N.W.
`Washington, D.C. 20005
`(202) 371-2600
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`9181915.1
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`
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`
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