UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`SAWAI USA, INC. and SAWAI PHARMACEUTICAL CO., LTD.,
`Petitioners,
`v.
`ASTELLAS PHARMA INC.,
`Patent Owner
`
`
`
`
`
`Case No. IPR2018-00079
`Patent No. 6,346,532
`
`
`
`JOINT MOTION TO TERMINATE PROCEEDING
`PURSUANT TO 35 U.S.C. 317(a) AND 37 C.F.R. 42.72
`
`
`Filed on behalf of:
`
`Sawai USA, Inc. and Sawai Pharmaceutical Co., Ltd., Petitioners
`AND
`Astellas Pharma Inc., Patent Owner
`
`
`
`
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`SAWAI USA, INC. and SAWAI PHARMACEUTICAL CO., LTD.,
`Petitioners,
`v.
`ASTELLAS PHARMA INC.,
`Patent Owner
`
`
`
`
`
`Case No. IPR2018-00079
`Patent No. 6,346,532
`
`
`
`JOINT MOTION TO TERMINATE PROCEEDING
`PURSUANT TO 35 U.S.C. 317(a) AND 37 C.F.R. 42.72
`
`
`Filed on behalf of:
`
`Sawai USA, Inc. and Sawai Pharmaceutical Co., Ltd., Petitioners
`AND
`Astellas Pharma Inc., Patent Owner
`
`
`
`
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`Pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. 42.72, Patent Owner Astellas
`
`Pharma Inc. and Petitioners Sawai USA, Inc. and Sawai Pharmaceutical Co., Ltd.
`
`(collectively “the Parties”) jointly request termination of IPR2018-00079 regarding
`
`U.S. Patent No. 6,346,532 (“the ’532 patent”). The Board authorized the parties to
`
`file this Joint Motion, including the request to keep the settlement and license
`
`agreement confidential, during the May 21, 2018 conference call between the
`
`Board and the Parties.
`
`The Parties have settled their disputes involving the ’532 patent. They have
`
`agreed to settle the claims and counterclaims related to the ’532 patent in the
`
`related district court litigation (Astellas Pharma Inc. v. Sawai Pharmaceutical Co.,
`
`Ltd., Civil Action No. 16-cv-954 (D. Del.)), and the dismissal has been entered by
`
`the Court. The Parties are not aware of additional proceedings regarding the ’532
`
`patent, with the exception that the ’532 patent is involved in a district court
`
`litigation which is currently stayed (Astellas Pharma Inc. v. Actavis Elizabeth LLC,
`
`Civil Action No. 16-cv-905 (D. Del.)).
`
`Pursuant to 37 C.F.R. 42.74(b), the Parties’ settlement and license agreement
`
`and any collateral agreements made in contemplation of termination of the
`
`proceeding are in writing, and true and correct copies of such documents are being
`
`filed herewith as Exhibit 1026. No other such agreements, written or oral, exist
`
`between or among the Parties. The Parties jointly request that the settlement and
`
`
`
`
`
`license agreement be treated as business confidential information and be kept
`
`separate from the files of the above captioned IPR, pursuant to 35 U.S.C. § 317(b)
`
`and 37 C.F.R. § 42.74(c).
`
`I. Background.
`
`
`
`On October 16, 2017, Petitioners filed a request for inter partes review of
`
`claims 1, 3-6, 9, 11, 12, 15, 16 of the ’532 patent. Paper 1. On May 4, 2018, the
`
`Board denied institution of inter partes review. Paper 7.
`
`The Parties have agreed to settle their disputes involving the ’532 patent.
`
`On May 14, 2018, the Parties informed the Board of the settlement and requested
`
`authorization to file a joint motion to terminate the proceeding. On May 21, 2018,
`
`the Board authorized the filing of the requested joint motion to terminate this
`
`proceeding. The Board additionally authorized the parties to include with the joint
`
`motion to terminate a request to treat the settlement and license agreement as
`
`business confidential information
`
`II. Termination Is Appropriate.
`
`Termination of this IPR is appropriate as no dispute remains between the
`
`Patent Owner and Petitioners involving the ’532 patent. Termination would finally
`
`resolve these IPR proceedings between the Parties.1
`
`
`1 The Parties note that the deadline to file a request for rehearing is 30 days from May 4, 2018, which has not passed
`as of the filing of this Joint Motion. See 37 C.F.R. 42.71(d).
`
`
`
`
`
`Motions to terminate are routinely granted in view of settlements. See, e.g.,
`
`Nike, Inc. v. Point 3 Basketball, LLC, Case No. IPR2016-00396 (Paper 20 at 3).
`
`Furthermore, the Board has found that a motion to terminate a petition in view of
`
`settlement, and post-denial of institution, is also appropriate. See, e.g., Nokia
`
`Solutions and Networks US LLC v. Hua Wei Technologies, Case No. IPR2017-
`
`00591 (Paper 17 at 2-3) (granting joint motion to terminate in view of settlement,
`
`after denying institution of inter partes review).
`
`III. Status of Related Litigation.
`
`As noted above, the related district court action between Patent Owner and
`
`Petitioners has been settled with respect to the ’532 patent, and the Court has
`
`ordered dismissal on the claims and counterclaims related thereto.
`
`IV. Treat Settlement Agreement as Business Confidential Information.
`
`Patent Owner and Petitioners concurrently request that the settlement and
`
`license agreement (including any related attachments) filed herewith as Exhibit
`
`1026 be treated as business confidential information, be kept separate from the file
`
`of the above captioned IPR, and be made available only to Federal Government
`
`agencies on written request, or to any person on a showing of good cause pursuant
`
`to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c). In view of that request the
`
`settlement and license agreement has been filed for access by the “Parties and
`
`Board Only.”
`
`
`
`
`
`V. Conclusion.
`
`For the foregoing reasons, Patent Owner and Petitioners jointly request that
`
`the Board terminate IPR2018-00079, and treat the settlement and license
`
`agreement filed herewith as business confidential information and keep the
`
`agreement separate from the file of the above captioned IPR.
`
`
`
`Respectfully submitted,
`
`/s/ Martin S. Masar III
`
`Brian J. Sodikoff
`Reg. No. 54,697
`Martin S. Masar III
`Reg. No. 62,007
`Counsel for Petitioner
`KATTEN MUCHIN ROSENMAN LLP
`
`/s/ Robert L. Baechtold
`
`Robert L. Baechtold
`Registration No. 20,860
`Counsel for Patent Owner
`FITZPATRICK, CELLA, HARPER & SCINTO
`
`
`
`
`
`
`
`Dated: May 29, 2018
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`Pursuant to 37 C.F.R. § 42.6(e)(4), I certify that, on the 25th day of May,
`
`2018, I caused to be served a true and correct copy of the foregoing JOINT
`
`MOTION TO TERMINATE PROCEEDING PURSUANT TO 35 U.S.C.
`
`317(a) AND 37 C.F.R. 42.72 (and accompanying Exhibit 1026) by e-mail to the
`
`Patent Owner at:
`
`Robert L. Baechtold
`Simon Roberts
`FITZPATRICK, CELLA, HARPER & SCINTO
`1290 Avenue of the Americas
`New York, NY 10104-3800
`(212) 218-2213
`RBaechtold@fchs.com
`SRoberts@fchs.com
`
`
`
`Dated: May 29, 2018
`
`
`
`
`
`Respectfully submitted,
`
`/s/ Martin S. Masar III
`
`
`
`
`
`133614513
`
`
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