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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________________
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`PAR PHARMACEUTICAL, INC.,
`Petitioner
`
`v.
`
`SUMITOMO DAINIPPON PHARMA CO., LTD.,
`Patent Owner
`_______________________
`
`Case IPR2017-01292
`U.S. Patent No. 9,555,027
`_______________________
`
`JOINT MOTION TO TERMINATE PROCEEDING
`PURSUANT TO 35 U.S.C. § 317 AND 37 C.F.R. § 42.74
`
`
`
`IPR2017-01292
`U.S. Patent No. 9,555,027
`Pursuant to 35 U.S.C. § 317, 37 C.F.R. § 42.74, and the Board’s e-mail of
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`July 27, 2017, Petitioner Par Pharmaceutical, Inc. (“Par”) and Patent Owner
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`Sumitomo Dainippon Pharma Co., Ltd. (“Sumitomo”) jointly move to terminate
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`the present inter partes review proceeding in light of the parties’ resolution of their
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`dispute relating to U.S. Patent No. 9,555,027 (“the ’027 Patent”).
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`As required by 35 U.S.C. § 317(b), the parties are concurrently filing a true
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`copy of the parties’ agreement (executed on May 31, 2017) as Exhibit 2002.1 The
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`parties are also concurrently filing a motion to seal pursuant to 35 U.S.C. § 327(b)
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`and 37 C.F.R. § 42.74(c), requesting that the agreement (Ex. 2002) be treated as
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`confidential business information and kept separate from the files of the involved
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`patent.
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`Because the agreement resolves the current dispute between the parties, the
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`parties jointly request that this proceeding be terminated under 35 U.S.C. § 317(a)
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`and 37 C.F.R. § 42.74. See Fandango, LLC et al. v. Ameranth, Inc., CBM2014-
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`00013, Paper 22 at 5-6 (March 24, 2014). There are no additional collateral
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`agreements or understandings made in connection with, or in contemplation of,
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`termination of the inter partes review.
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`1 This agreement was filed via E2E for “Parties and Board Only” to preserve
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`confidentiality.
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`1
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`IPR2017-01292
`U.S. Patent No. 9,555,027
`“An inter partes review instituted under this chapter shall be terminated with
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`respect to any petitioner upon the joint request of the petitioner and the patent
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`owner, unless the Office has decided the merits of the proceeding before the
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`request for termination is filed.” 35 U.S.C. § 317(a); see also Office Patent Trial
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`Practice Guide, 77 Fed. Reg. 48, 756, 46,768 (Aug. 14, 2012) (“The Board expects
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`that a proceeding will terminate after the filing of a settlement agreement, unless
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`the Board has already decided the merits of the proceeding.”).
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`Because trial has not been instituted and the Board has not decided the
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`merits of the proceeding, terminating this proceeding is appropriate, conserving the
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`resources of the Board and the parties. In fact, Patent Owner has not yet filed a
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`preliminary response, and the Board has not decided whether to institute. Further,
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`strong public policy considerations favor agreement between the parties to an inter
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`partes review proceeding. See Bergh v. Dept. of Transp., 794 F.2d 1575, 1577
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`(Fed. Cir. 1986) (“The law favors settlement of cases.”); see also Office Trial
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`Practice Guide, 77 Fed. Reg. at 48,768. No public interest or other factors weigh
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`against termination of this proceeding.
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`In its e-mail of July 27, 2017, the Board also indicated that this motion must
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`“identify all parties in any related district court litigation involving the patent(s) in
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`dispute and discuss the current status of each such related litigation with respect to
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`each party to the litigation” and “identify the case numbers of any pending, related
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`2
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`IPR2017-01292
`U.S. Patent No. 9,555,027
`inter partes review proceedings.” There are no such related district court litigations
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`or inter partes review proceedings.
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`For the foregoing reasons, the parties jointly and respectfully request that the
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`instant proceeding be terminated.
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`3
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`IPR2017-01292
`U.S. Patent No. 9,555,027
`Date: August 1, 2017
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`
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` By: /Daniel G. Brown/
`
`Daniel G. Brown (Reg. No. 54,005)
`Latham & Watkins LLP
`885 Third Avenue
`New York, NY 10022-4834
`Tel: (212) 906-1200
`Fax: (212) 751-4864
`daniel.brown@lw.com
`
`Lead Counsel for Petitioner Par
`Pharmaceutical, Inc.
`
`
`By: /Preston K. Ratliff II/
`Preston K. Ratliff II (Reg. No. 43,034)
`Paul Hastings LLP
`200 Park Avenue
`New York, NY 10166
`Telephone: (212) 318-6055
`Facsimile: (212) 230-7742
`PH-Par-SunovionIPR@paulhastings.com
`
`Lead Counsel for Patent Owner
`Sumitomo Dainippon Pharma Co., Ltd.
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`4
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`IPR2017-01292
`U.S. Patent No. 9,555,027
`
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), I certify that on this 1st day of August,
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`2017, a copy of Joint Motion to Terminate Proceeding was served by electronic
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`mail on Petitioner’s lead and backup counsel at the following email addresses:
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`daniel.brown@lw.com
`jonathan.strang@lw.com
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`By: /Preston K. Ratliff II/
`Preston K. Ratliff II (Reg. No. 43,034)
`Paul Hastings LLP
`200 Park Avenue
`New York, NY 10166
`Telephone: (212) 318-6055
`Facsimile: (212) 230-7742
`PH-Par-SunovionIPR@paulhastings.com
`
`Lead Counsel for Patent Owner
`Sumitomo Dainippon Pharma Co., Ltd.
`
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