Paper No. ____
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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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`MYLAN TECHNOLOGIES, INC.
`Petitioner
`v.
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`NOVEN PHARMACEUTICALS, INC.
`Patent Owner.
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`_______________
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`Case No. IPR2018-01119
`U.S. Patent No. 9,833,419
`____________________________________________________________
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`JOINT MOTION TO TERMINATE PROCEEDINGS
`PURSUANT TO 35 U.S.C. § 3171
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`1 Identical documents are being filed in IPR2018-00173 and IPR2018-00174.
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`
`MYLAN TECHNOLOGIES, INC.
`Petitioner
`v.
`
`NOVEN PHARMACEUTICALS, INC.
`Patent Owner.
`
`_______________
`
`Case No. IPR2018-01119
`U.S. Patent No. 9,833,419
`____________________________________________________________
`
`JOINT MOTION TO TERMINATE PROCEEDINGS
`PURSUANT TO 35 U.S.C. § 3171
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`
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`1 Identical documents are being filed in IPR2018-00173 and IPR2018-00174.
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`
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`U.S. Patent No. 9,833,419
`IPR2018-01119
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`As authorized in the Patent Trial and Appeal Board’s email dated August 24,
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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 reviews
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`of U.S. Patent No. 9,724,310 (“the ’310 Patent”) (IPR2018-00173), U.S. Patent
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`No. 9,730,900 (“the ’900 Patent”) (IPR2018-00174), and U.S. Patent No.
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`9,833,419 (“the ’419 Patent”) (IPR2018-0119) be terminated. In accordance with
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`the Board’s email, this motion includes (1) a brief explanation why termination is
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`appropriate and (2) identifies all parties in pending district court litigation
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`involving the patents and the current status of each such litigation. There are no
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`other pending inter partes review proceedings involving the patents.
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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’s email to
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`the parties on August 24, 2018, Petitioner Mylan Technologies, Inc. and Patent
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`Owner Noven Pharmaceuticals, Inc. (collectively, the “Parties”) jointly request the
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`termination of the inter partes reviews of the ’310 Patent (IPR2018-00173), the
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`’900 Patent (IPR2018-00174), and the ’419 Patent (IPR2018-0119) in their entirety
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`as a result of settlement between the Parties.
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`The Parties have settled their dispute and executed a binding term sheet to
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`terminate these inter partes reviews. The Parties’ binding term sheet has been
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`1
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`U.S. Patent No. 9,833,419
`IPR2018-01119
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`made in writing, and a true and correct copy is being filed concurrently herewith as
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`Exhibit 2025 (“Binding Term Sheet”). The Parties are also filing concurrently
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`herewith a joint request to treat the Binding Term Sheet as business confidential
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`information and keep it separate from the files of the inter partes reviews and the
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`involved patents pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b) and (c).
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`The Binding Term Sheet reflects all essential terms of a settlement agreement
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`between the Parties. At the Board’s request, the Parties will provide the Board
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`with a copy of the settlement agreement once it has been duly executed.
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`II.
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`Statement of Facts
`A.
`IPR2018-00173 and IPR2018-00174
`Petitioner filed petitions requesting inter partes reviews of the ’310 Patent
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`and the ’900 Patent on December 4, 2017. Patent Owner filed preliminary
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`responses on March 13, 2018, and on June 12, 2018, the Board denied institution
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`in both IPR2018-00173 and IPR2018-00174. Thereafter, Petitioner filed requests
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`for rehearing on July 12, 2018, and Patent Owner filed oppositions to the requests
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`for rehearing on July 20, 2018. The Board has not yet issued decisions on the
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`requests for rehearing in IPR2018-00173 and IPR2018-00174.
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`IPR2018-01119
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`B.
`Petitioner filed a petition requesting inter partes review of the ’419 Patent (a
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`related continuation of the ’310 and ’900 Patents) on May 18, 2018. Patent Owner
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`2
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`U.S. Patent No. 9,833,419
`IPR2018-01119
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`filed a preliminary response on August 22, 2018. The Board has not yet issued an
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`institution decision in IPR2018-01119.
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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).” The Trial Practice Guide additionally counsels that “[t]here are
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`strong public policy reasons to favor settlement between the parties to proceeding”
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`and that the Board “expects that a proceeding will terminate after the filing of a
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`settlement agreement, unless the Board has already decided the merits of the
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`proceeding. 35 U.S.C. 317(a), as amended, and 35 U.S.C. 327.” Office Patent
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`Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012).
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`A. Explanation Why Termination Is Appropriate
`In accordance with the Binding Term Sheet, the Parties are seeking to
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`terminate these inter partes reviews. The other proceedings related to the
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`challenged patents involving the Parties, i.e., Noven Pharmaceuticals, Inc. v.
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`3
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`U.S. Patent No. 9,833,419
`IPR2018-01119
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`Mylan Technologies Inc., et al., C.A. No. 1:17-cv-01777-LPS (D. Del.), and
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`related Federal Circuit Appeal No. 18-2287, have been dismissed. Thus, no
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`dispute remains between the Parties involving the ’310 Patent, the ’900 Patent, or
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`the ’419 Patent.
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`As noted in the Statement of Facts, the Board has not yet issued decisions on
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`the requests for rehearing in IPR2018-00173 and IPR2018-00174 and has not yet
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`decided whether to institute in IPR2018-01119. Thus, the Board has not yet
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`“decided the merits of the proceeding[s] before the request for termination is
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`filed.” 35 U.S.C. § 317(a); 77 Fed. Reg. at 48,768.
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`The Parties are unaware of any other matters before the Board that would be
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`affected by the outcome of these proceedings. There are no other pending inter
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`partes review proceedings involving the patents.
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`Further, because the Board has yet to issue a final decision on the merits,
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`termination of the proceedings would save the Board significant administrative
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`resources and limit unnecessary and counterproductive costs. Termination also
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`would further the AIA’s purpose of providing an efficient and less costly
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`alternative forum for patent disputes and its encouragement for settlement.
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`Pending District Court Litigation Involving The Patents
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`B.
`In addition to the litigation dismissed by the Parties, the following district
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`court proceedings involving the patents are pending:
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`4
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`(1) Noven Pharmaceuticals, Inc. v. Alvogen Pine Brook LLC, et al., C.A.
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`U.S. Patent No. 9,833,419
`IPR2018-01119
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`No. 1:17-cv-01429-LPS (D. Del.).
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`Plaintiff: Noven Pharmaceuticals, Inc.
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`Defendants: Alvogen Pine Brook LLC; Alvogen, Inc.; 3M Company
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`Status: In discovery phase; bench trial scheduled for December 2018
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`(2) Noven Pharmaceuticals, Inc. v. Amneal Pharmaceuticals LLC, C.A. No.
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`1:18-cv-00699-LPS (D. Del.)
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`Plaintiff: Noven Pharmaceuticals, Inc.
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`Defendant / Third Party Plaintiff: Amneal Pharmaceuticals LLC
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`Third Party Defendant: Hisamitsu Pharmaceutical Co., Inc.
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`Status: In discovery phase; the court has not yet set a trial date
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`(3) Noven Pharmaceuticals, Inc. v. Actavis Laboratories UT, Inc., C.A. No.
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`1:18-cv-00758-LPS (D. Del.).
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`Plaintiff: Noven Pharmaceuticals, Inc.
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`Defendant: Actavis Laboratories UT, Inc.
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`Status: In pleadings phase; the court has not yet set a trial date
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`* * * * *
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`5
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`U.S. Patent No. 9,833,419
`IPR2018-01119
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`For the foregoing reasons, the Parties respectfully request that the Board
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`terminate the inter partes reviews of the ’310 Patent (IPR2018-00173), the ’900
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`Patent (IPR2018-00174), and the ’419 Patent (IPR2018-0119) in their entirety.
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`Respectfully submitted,
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`/ Courtenay C. Brinckerhoff /
`Courtenay C. Brinckerhoff
`Registration No. 37,288
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`Jason N. Mock
`Registration No. 69,186
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`Counsel for Patent Owner
`Foley & Lardner LLP
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`6
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`Dated: September 5, 2018
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` /
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` Steven W. Parmelee /
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`Steven W. Parmelee
`Registration No. 31,990
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`Michael T. Rosato
`Registration No. 52,182
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`Jad A. Mills
`Registration No. 63,344
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`Counsel for Petitioner
`Wilson, Sonsini, Goodrich, & Rosati
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`U.S. Patent No. 9,833,419
`IPR2018-01119
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a copy of the foregoing Joint Motion
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`to Terminate Proceedings Pursuant to 35 U.S.C. § 317 and accompanying
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`Exhibit 2025 are being served on September 5, 2018, by filing them through the
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`PTAB E2E System as well as by email directed to the attorneys of record for the
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`Petitioner at the following addresses:
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`sparmelee@wsgr.com
`mrosato@wsgr.com
`jmills@wsgr.com
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`By: / Courtenay C. Brinckerhoff /
`Courtenay C. Brinckerhoff
`Registration No. 37,288
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`Jason N. Mock
`Registration No. 69,186
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`Counsel for Patent Owner
`Foley & Lardner LLP
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