`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`BAUSCH HEALTH COMPANIES INC. AND
`BAUSCH HEALTH US LLC
`Petitioners
`
`v.
`
`FLOW PHARMA INC.,
`Patent Owner.
`
`Case No. IPR2020-00165
`Patent 8,138,157
`
`JOINT MOTION TO TERMINATE PROCEEDING PURSUANT TO 35
`U.S.C. 317(a) AND 37 C.F.R. §§ 42.72 AND 42.74
`
`
`
`Pursuant to 35 U.S.C. § 317(a), 37 C.F.R. §§ 42.72 and 42.74, and the Board’s
`
`authorization on September 1, 2020, Patent Owner Flow Pharma Inc. and Petitioners
`
`Bausch Health Companies Inc. and Bausch Health U.S., LLC (collectively, “the
`
`Parties”) jointly request termination of IPR2020-00165 regarding U.S. Patent No.
`
`8,138,157 (“the ’157 patent”).
`
`The Parties have settled their disputes involving the ’157 patent. They have
`
`agreed to settle the claims related to the ’157 patent in the related district court
`
`litigation (Flow Pharma, Inc. v. Bausch Health Companies Inc. et al., Case No. 4:18-
`
`cv-05769-JST (N.D.Cal.)). The Parties have filed a stipulation to dismiss the
`
`district court litigation with prejudice. The Parties are not aware of additional
`
`proceedings regarding the ’157 patent.
`
` The Parties are concurrently filing a true and correct copy of their written
`
`Settlement Agreement in connection with this matter, as required by statute, as
`
`Confidential Exhibit 1042. The Parties jointly certify that, aside from the
`
`Settlement Agreement, there are no other agreements or understandings, oral or
`
`written, between the Parties, including any collateral agreements or understandings,
`
`made in connection with, or in contemplation of, the termination of the present
`
`proceeding. A joint request to treat the Settlement Agreement as business
`
`2
`
`
`
`confidential information kept separate from the file of the involved patent pursuant
`
`to 35 U.S.C. § 317(b) and 37 C.F.R. §42.74(c) is being filed concurrently.
`
`I.
`
`Legal Standard
`
`An AIA trial proceeding “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); § 327(a). A joint motion to terminate generally “must (1) include
`
`a brief explanation as to why termination is appropriate; (2) identify all parties in
`
`any related litigation involving the patents at issue; (3) identify any related
`
`proceedings currently before the Office, and (4) discuss specifically the current
`
`status of each such related litigation or proceeding with respect to each party to the
`
`litigation or proceeding.” Heartland Tanning, Inc. v. Sunless, Inc., IPR2014-
`
`00018, Paper No. 26, at *2 (P.T.A.B. July 28, 2014).
`
`II.
`
`Dismissal of District Court Matter and Issuance of Settlement
`Agreement Warrants Termination
`
`Termination of this IPR is appropriate as the Board has not yet decided the
`
`merits of the proceeding, the related litigation between the Parties has been
`
`dismissed with prejudice, and the Parties have agreed that it is appropriate to
`
`terminate this proceeding. “Generally, the Board expects that a proceeding will
`
`terminate after the filing of a settlement agreement.” DTN LLC v. Farms
`
`3
`
`
`
`Technology, LLC, IPR2018-01412, Paper No. 21 (June 14, 2019) (precedential).
`
`Terminating this proceeding promotes the Congressional goal of establishing a more
`
`efficient and streamlined patent system that, inter alia, limits unnecessary and
`
`counterproductive litigation costs. See Patent Office Trial Practice Guide, 77 Fed.
`
`Reg. 48756, 48768 (Aug. 14, 2012). Given the dismissal with prejudice of the
`
`subject patent from the litigation between the Parties, the absence of any other
`
`pending litigation involving this patent, or any public interest or other factors
`
`militating against termination, termination of this proceeding is justified.
`
`III. Related Proceedings
`
`As stated above, the related district court action between Patent Owner and
`
`Petitioners has been settled.
`
`IV. Conclusion
`
`For the foregoing reasons, Patent Owner and Petitioners jointly request that
`
`the Board terminate IPR2020-00165.
`
`4
`
`
`
`Dated: September 1, 2020
`
`Respectfully submitted,
`
`/s/ Scott K. Reed
`Scott K. Reed (Reg. No. 32,433)
`VENABLE LLP
`1290 Avenue of the Americas, 20th Floor
`New York, NY 10104
`Tel: (212) 218-2227
`
`Counsel for Petitioners,
`Bausch Health Companies Inc. and
`Bausch Health U.S., LLC
`
`___________________
`Karl Bozicevic (Reg. No. 28,807)
`BOZICEVIC, FIELD AND FRANCIS LLP
`201 Redwood Shores Parkway, Suite 200
`Redwood City, CA 94065
`Telephone: (650) 327-3400
`
`Counsel for Patent Owner,
`Flow Pharma Inc.
`
`5
`
`
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