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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`___________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`___________________
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`MYLAN PHARMACEUTICALS INC.,
`Petitioner,
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`v.
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`COSMO TECHNOLOGIES LIMITED,
`Patent Owner.
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`U.S. Patent No. 8,784,888 to Villa et al.
`Issue Date: June 22, 2014
`Title: Controlled Release and Taste Masking Oral Pharmaceutical Compositions
`___________________
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`Inter Partes Review No.: IPR2017-01034
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`___________________
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`JOINT MOTION TO TERMINATE PROCEEDINGS
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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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`10167053
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`I.
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`II.
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`Statement of Relief Requested
`Pursuant to 35 U.S.C. § 317(a), 37 C.F.R. § 42.72, and 37 C.F.R. § 42.74, and
`the Board’s authorization email dated September 20, 2017, Petitioner Mylan
`Pharmaceuticals, Inc. and Patent Owner Cosmo Technologies, Inc. jointly move that
`the Board terminate the above captioned inter partes review (IPR) proceeding in its
`entirety as a result of settlement between Petitioner and Patent Owner.
`The parties are filing concurrently herewith a separate request that the
`settlement agreement being filed herewith be treated as business confidential
`information and be kept separate from the files of the involved patent, pursuant to
`37 C.F.R. § 42.74(c).
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`Statement of Facts
`Patent Owner brought a suit against Petitioner in the District Court for
`Delaware (No. 16-cv-00152), asserting that Petitioner infringed one or more claims
`of U.S. Patent No. 8,784,888.
`Petitioner filed this IPR petition on March 9, 2017. The Board has not yet
`determined whether trial will be instituted for this IPR.
`On September 20, 2017, Petitioner, Defendants, and Patent Owner entered
`into a settlement agreement. See Ex. 2001 (Confidential). Under the terms of the
`settlement agreement, Patent Owner agrees to dismiss its infringement claim of U.S.
`Patent No. 8,784,888 against Petitioner following termination of this IPR
`proceeding.
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`III. Related District Court Litigation
`U.S. Patent No. 8,784,888 is currently the subject of the following ongoing
`litigations: Cosmo Technologies Limited, Valeant Pharmaceuticals International,
`and Valeant Pharmaceuticals Luxembourg S.A. R.L. v. Mylan Pharmaceuticals Inc.,
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`16-cv-00152 (D. Del.) (“Mylan Action”); Cosmo Technologies Limited, Valeant
`Pharmaceuticals International, and Valeant Pharmaceuticals Luxembourg S.A. R.L.
`v. Alvogen Pine Brook, Inc., 15-cv-00193 (D. Del.) (“Alvogen Action”); and Cosmo
`Technologies Limited, Valeant Pharmaceuticals International, and Valeant
`Pharmaceuticals Luxembourg S.A. R.L. v Actavis Laboratories FL, Inc., 15-cv-
`00164 (D. Del.) (“Actavis Action”). The parties are identified in the case captions.
`The Alvogen Action and Actavis Action had a bench trial on May 22-23,
`2017 before Judge Leonard Stark in the District of Delaware concerning
`infringement of the ‘888 patent. A transcript of Judge Stark’s findings and rulings
`from the bench were submitted to the PTAB as Exhibit 2025 in related IPR No.
`IPR2017-01035. The Court has not yet made final, written findings of fact or
`conclusions of law in these two actions.
`The Mylan Action is scheduled for a bench trial in late November in the same
`district court as the Alvogen and Actavis Actions. Patent Owner Cosmo and
`co-plaintiffs Valeant Pharmaceuticals International and Valeant Pharmaceutical
`Luxembourg S.A. R.L. originally asserted infringement of the ‘888 patent and other
`patents, but are proceeding only with claims under related U.S. Patent No.
`9,320,716. Petitioner Mylan has counterclaims of non-infringement and invalidity.
`Because the claims regarding the ’888 patent have not yet been dismissed, the
`settlement agreement, Exhibit 2001, would resolve the dispute for the ‘888 patent
`and certain other patents in that litigation.
`IV. Related Inter Partes Review
`Concurrently with the filing of this IPR No. IPR2017-01034 concerning the
`‘888 patent, Mylan also filed IPR No. IPR2017-01035 concerning U.S. Pat.
`No. 9,320,716. The ‘716 patent is related to the ‘888 patent.
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`V. Argument
`Section 317(a) provides: “An 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.” 35 U.S.C. § 317(a). It further
`provides: “If no petitioner remains in the inter partes review, the Office may
`terminate the review or proceed to a final written decision under section 318(a).” Id.
`Similarly, 37 C.F.R. § 42.72 provides that “[t]he Board may terminate a trial
`without rendering a final written decision, where appropriate, including where the
`trial is consolidated with another proceeding or pursuant to a joint request under 35
`U.S.C. 317(a).”
`A. The Board Should Terminate This IPR Proceeding In Its Entirety
`As noted in the statement of facts, the Board has not yet determined whether
`trial will be instituted. As such, the Board has not decided the merits of the pending
`IPR proceeding, and the parties have since settled. Thus, the Board should terminate
`the review in its entirety under 35 U.S.C. § 317, and 37 C.F.R. §§ 42.72, 42.74.
`In the past, the Board has terminated the entire proceedings based on joint
`motions to terminate that were filed before the Board instituted any proceedings.
`See, e.g., Unified Patents Inc. v. Advanced Silicon Techs. LLC, IPR2016-01026,
`Paper No. 11 (Oct. 11, 2016) (granting motion to terminate, where “trial has not yet
`been instituted, and the merits of the proceedings have not been decided”); Sony
`Corp. v. Straight Path IP Group Inc., IPR2014-00230, Paper No. 13 (May 2, 2014)
`(“agree[ing] with the parties that terminating the instant proceedings with respect to
`both Petitioner and Patent Owner, at this early juncture, promotes efficiency and
`minimizes unnecessary costs”).
`Termination of the entire proceedings, at this early stage, would save the
`Board significant administrative resources. Termination would also further the
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`AIA’s purpose of providing an efficient and less costly alternative forum for patent
`dispute and its encouragement for settlement.
`Termination of the entire proceedings would also save the parties costs related
`to this inter partes review and also the related district court litigation involving
`infringement and invalidity claims concerning U.S. Patent No. 8,784,888.
`The parties understand that if the Board terminates this IPR with respect to
`Petitioner under 35 U.S.C. § 317(a), no estoppel under § 315(e) will attach to
`Petitioner, or Petitioner’s privy, based on Petitioner seeking this IPR. The parties
`also understand that if the Board terminates this IPR with respect to Petitioner
`before a final written decision on patentability, no estoppel will attach to Petitioner,
`or Petitioner’s privy, under 37 C.F.R. § 42.73(d)(1). The parties understand that if
`the Board terminates this IPR before a final written decision on patentability, no
`preclusion will attach to Patent Owner under 37 C.F.R. § 42.73(d)(3).
`B. Written Settlement Statement
`Pursuant to 37 C.F.R. § 42.74(c), the parties are filing herewith as
`Exhibit 2001 a true copy of the settlement agreement entered between the parties on
`September 20, 2017. The settlement agreement was entered into in contemplation of
`termination of this proceeding.
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`VI. Conclusion
`Petitioner and Patent Owner respectfully request that the Board grant the
`parties’ Joint Motion to Terminate this proceeding in its entirety and grant the
`request to treat the settlement agreement between the parties as business confidential
`information.
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`Dated: September 20, 2017
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`Respectfully submitted,
`/s/ Gary Frischling
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`Gary N. Frischling, Reg. No. 35,515
`Yite John Lu, Reg. No. 63,158
`Irell & Manella LLP
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`Attorneys for Patent Owner
`Cosmo Technologies Limited
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6, the undersigned certifies that on September 20,
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`2017, a copy of the foregoing document was served upon the following, by email to:
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`Jitendra Malik, Ph.D.
`Reg. No. 55,823
`jitty.malik@alston.com
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`H. James Abe
`Reg. No. 61,182
`james.abe@alston.com
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`Lance Soderstrom
`Reg. No. 65,405
`lance.soderstrom@alston.com
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`Joseph M. Janusz
`Reg. No. 70,396
`joe.janusz@alston.com
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`ALSTON & BIRD LLP
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`/s/ Susan Langworthy
`Susan M. Langworthy
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