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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________
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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
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`Patent Owner
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`_____________________
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`Case No. IPR2017-00807
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`U.S. Patent No. 8,168,620
`_____________________
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`JOINT MOTION TO TERMINATE PROCEEDINGS
`PURSUANT TO 35 U.S.C. § 317
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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
`Joint Motion to Terminate
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`As authorized in the Patent Trial and Appeal Board’s e-mail dated May 16,
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`2018, and pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. §§ 42.72 and 42.74, Patent
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`Owner and Petitioner jointly and respectfully request that the inter partes review
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`(“IPR”) of U.S. Patent No. 8,168,620 be terminated.
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`I.
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`Statement of Relief Requested
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`Pursuant to 35 U.S.C. § 317, 37 C.F.R. § 42.72, and 37 C.F.R. § 42.74, and
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`pursuant to the authorization to file this motion provided by the Board with the
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`parties on May 16, 2018, Petitioner Argentum Pharmaceuticals LLC (“Argentum”)
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`and Patent Owner Cipla Limited (“Cipla”) jointly request the termination of this
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`inter partes review of U.S. Patent No. 8,168,620 in its entirety as a result of
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`settlement between Petitioner and Patent Owner.
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`The parties have settled their dispute and executed a settlement agreement to
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`terminate this inter partes review.
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`The parties’ settlement agreement has been made in writing, and a true and
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`correct copy is being filed concurrently herewith as Exhibit 2183. The parties are
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`also filing concurrently herewith a joint request to treat the settlement agreement as
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`business confidential information and keep it separate from the files of the IPR and
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`the involved patent pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b) and
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`(c).
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`- 1 -
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`II.
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`Statement of Facts
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`IPR2017-00807
`Joint Motion to Terminate
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`Petitioner filed this IPR petition on February 2, 2017. On August 21, 2017,
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`the Board instituted inter partes review of claims 1, 4-6, 24-26, 29, and 42-44 of
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`the ’620 patent. On May 15, 2018, Petitioner and Patent Owner entered into a
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`settlement agreement. See CIP2183 (Confidential). Argentum agrees to terminate
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`this IPR proceeding.
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`The Board has not yet decided the merits of the pending IPR proceeding.
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`III. Argument
`35 U.S.C. § 317(a) provides: “An inter partes review instituted under this
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`chapter shall be terminated with respect to any petitioner upon the joint request of
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`the petitioner and the patent owner, unless the Office has decided the merits of the
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`proceeding before the request for termination is filed.” 35 U.S.C. § 317(a).
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`Similarly, 37 C.F.R. § 42.72 provides that “[t]he Board may terminate a trial
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`without rendering a final written decision, where appropriate, including where the
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`trial is consolidated with another proceeding or pursuant to a joint request under 35
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`U.S.C. 317(a).”
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`The Trial Practice Guide additionally counsels that “[t]here are strong public
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`policy reasons to favor settlement between the parties to proceeding” and that the
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`Board “expects that a proceeding will terminate after the filing of a settlement
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`agreement, unless the Board has already decided the merits of the proceeding. 35
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`- 2 -
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`U.S.C. 317(a), as amended, and 35 U.S.C. 327.” Office Patent Trial Practice
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`IPR2017-00807
`Joint Motion to Terminate
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`Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012).
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`A.
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` Termination of this proceeding is proper.
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`As noted in the Statement of Facts, oral argument has not yet occurred.
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`Thus, the Board has not yet “decided the merits of the proceeding before the
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`request for termination is filed.” 35 U.S.C. § 317(a); 77 Fed. Reg. 48768 (“The
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`Board expects that a proceeding will terminate after the filing of a settlement
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`agreement, unless the Board has already decided the merits of the proceeding.”).
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`The Board has already cancelled the oral hearing that was scheduled to take place
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`in this proceeding. Further, the parties are unaware of any other matter before the
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`Board that would be affected by the outcome of this proceeding. Accordingly, the
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`parties respectfully request that the Board terminate the inter partes review of U.S.
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`Patent No. 8,168,620.
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`In the past, the Board has terminated the entire proceedings based on joint
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`motions to terminate even after the merits had been fully briefed and the matter
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`was ready for oral argument, or even after oral argument. See Toyota Motor Corp.
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`v. Blitzsafe Tex. LLC, IPR2016-00421, Paper 28 (Feb. 21, 2017) (granting motion
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`to terminate even after all substantive papers were filed, “particularly in light of the
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`fact that a final written decision is not due until more than four months from
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`now”); Plaid Techs., Inc. v. Yodlee, Inc., IPR2016-00273, Paper 29 (Feb. 8, 2017)
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`(granting motion to terminate because “the parties’ joint motions to terminate were
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`IPR2017-00807
`Joint Motion to Terminate
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`filed prior to the oral hearings in these cases”); Apex v. Resmed, IPR2013-00512,
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`Paper 39 (Sept. 12, 2014) (granting joint motion to terminate after the parties had
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`fully briefed the matter); Rackspace Hosting, Inc. v. Clouding IP, LLC, CBM2014-
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`00034, Paper 28 (Dec. 9, 2014) (granting motion to terminate after close of
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`evidentiary record and less than ten days before trial); Volution v. Versata
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`Software, CBM2013-00018, Paper 52 (June 17, 2014) (granting motion to
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`terminate after oral argument).
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`Further, because the Board has yet to conduct an oral hearing and issue a
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`decision on the merits, termination of the entire proceeding would save the Board
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`significant administrative resources. Termination would also further AIA’s purpose
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`of providing an efficient and less costly alternative forum for patent disputes and
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`its encouragement for settlement.
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`IV. Related Litigations Involving The Patent At Issue
`Litigations involving the patent at issue in this proceeding are set forth
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`below. As shown below, none of these litigations is currently pending as each has
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`been resolved.
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`Case
`Meda Pharmaceuticals Inc. et al v. Apotex
`Inc. et al., 14-1453-LPS (D. Del.) (filed Dec.
`2, 2014; settled May 17, 2017)
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`Defendant(s)
`Apotex Inc.
`Apotex Corp.
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`- 4 -
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`IPR2017-00807
`Joint Motion to Terminate
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`Meda Pharmaceuticals Inc. et al v. Teva
`Pharmaceuticals USA, Inc., 15-785-LPS (D.
`Del.) (filed Sept. 8, 2015; settled July 28,
`2017)
`Meda Pharmaceuticals Inc. et al v. Perrigo
`UK FINCO Limited Partnership et al., 16-
`794 (D. Del.) (filed Sept. 9, 2016; settled July
`7, 2017)
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`V. Related Inter Partes Review Proceedings Currently Before The Office
`There are no other inter partes review proceedings currently before the
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`Teva Pharmaceuticals USA,
`Inc.
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`Perrigo UK FINCO Limited
`Partnership; Perrigo Company;
`Perrigo Pharmaceuticals Co.
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`Office involving the patent at issue.
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`VI. Written Settlement Statement
`Pursuant to 37 C.F.R. § 42.74(c), the parties are filing herewith as CIP2183
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`a true copy of the settlement agreement entered between the parties on May 16,
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`2018. The settlement agreement was entered into in contemplation of termination
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`of this proceeding.
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`Petitioner and Patent Owner respectfully request that the Board grant the
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`parties’ Joint Motion to Terminate this proceeding in its entirety and grant the
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`request to treat the settlement agreement between the parties as business
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`confidential information.
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`Respectfully submitted,
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`/Michael Houston/
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`Date: May 17, 2018
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`Date: May 17, 2018
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`IPR2017-00807
`Joint Motion to Terminate
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`Michael R. Houston
`Reg. No. 58,486
`Lead Attorney for Petitioner
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`Respectfully submitted,
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`/Dennies Varughese/
`Dennies Varughese
`Registration No. 61,868
`Lead Attorney for Patent Owner
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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 TERMINATE PROCEEDINGS PURSUANT TO 35 U.S.C. § 317”
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`was served in its entirety on May 17, 2018, upon the following parties via
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`electronic mail upon the 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
`Tyler C. Liu: TLiu@agpharm@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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`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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`Date: May 17, 2018
`1100 New York Avenue, N.W.
`Washington, D.C. 20005
`(202) 371-2600
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`9355960.1
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