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`UNITED STATES PATENT AND TRADEMARK OFFICE
`______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`______________________
`
`FRESENIUS KABI USA, LLC AND FRESENIUS KABI SWISSSBIOSIM
`GmbH.,
`Petitioners
`
`v.
`AMGEN INC. and AMGEN MANUFACTURING, LIMITED,
`Patent Owners
`______________________
`
`Case IPR2020-00314
`Patent 9,856,287
`
`______________________
`
`
`
`JOINT MOTION TO TERMINATE PURSUANT TO 35 U.S.C. § 317
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`I.
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`STATEMENT OF RELIEF REQUESTED
`Pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. § 42.72, the parties jointly
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`request termination of IPR2020-00314 concerning U.S. Patent No. 9,856,287 ("the
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`'287 patent").
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`The parties notified the Board of the parties' settlement on June 12, 2020 and
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`received authorization to file this Motion to Terminate on June 15, 2020.
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`II.
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`STATEMENT OF FACTS
`In support of the Motion to Terminate Proceeding, the parties state as
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`follows:
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`Petitioners filed their petition for inter partes review on December 20, 2019.
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`No institution decision has issued.
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`Petitioners and Patent Owner have settled their dispute relating to the '287
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`patent. The parties also agreed to move to terminate this inter partes review.
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`The parties' Settlement Agreement has been made in writing, and a true and
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`correct copy will be concurrently filed with this Office as business confidential
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`information pursuant to 35 U.S.C. § 317(b) as Exhibit 1048. Except to the extent
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`specifically referenced and filed with, or reduced to writing in, the Settlement
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`Agreement, there are no collateral agreements. Because the settlement agreement
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`is confidential, Petitioners and Patent Owner respectfully request that it be treated
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`as business confidential information, be kept separate from the underlying patent
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`file, and be made available only as provided in 35 U.S.C. § 317(b) and 37 C.F.R. §
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`42.74(c), and have filed herewith a separate paper setting forth this request.
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`III. RELATED LITIGATION
`There are no currently pending litigations involving the '287 patent. The
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`past litigation involving the '287 patent is as follows: Amgen Inc. et al. v. Accord
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`Biopharma, Case No. 0:18-cv-61828-WPD (S.D. Fla.) (stipulated dismissal
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`approved Nov. 15, 2019); Amgen Inc. et al. v. Kashiv BioSciences, LLC et al.,
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`Case No. 2:18-cv-03347-CCC-MF (D.N.J.) (stipulated dismissal so-ordered Nov.
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`25, 2019); and Amgen Inc. et al. v. Tanvex BioPharma USA, Inc. et al., Case No.
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`3:19-cv-01374-H-AHG (S.D. Cal.) (joint motion to dismiss granted Dec. 19,
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`2019).
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`An IPR and a PGR were previously filed against the '287 patent, but neither
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`is currently pending. The first (PGR2019-00001) was terminated on December 6,
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`2019 and the second (IPR2019-00971) was not instituted.
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`IV. ARGUMENT
`The statutory provision on a settlement relating to inter partes reviews
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`provides that an inter partes review "shall be terminated with respect to any
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`petitioner upon the joint request of the petitioner and the patent owner, unless the
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`Office has decided the merits of the proceeding before the request for termination
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`is filed." 35 U.S.C. § 317. Because the Board has not decided the merits of this
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`3
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`inter partes review proceeding, and because the parties here are jointly requesting
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`termination, the Board should terminate the Petitioners under § 317(a).
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`Section 317(a) also provides that, "[i]f no petitioner remains in the inter
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`partes review, the Office may terminate the review or proceed to a final written
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`decision under section 318(a)." Id. This proceeding has not been instituted, and
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`termination would save additional expenditure of resources by the Board, as well
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`as by Patent Owner, and would further the purpose of inter partes review
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`proceedings to provide an efficient and less costly alternative forum for patent
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`disputes (including by encouraging settlement). The Board has routinely
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`terminated proceedings at the request of settling parties in cases that have
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`progressed much further than the present proceeding. See, e.g., Apex Med. Corp. v.
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`Resmed Ltd., IPR2013-00512, Pap. 39, 2 (Sept. 12, 2014) (granting motion to
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`terminate in its entirety notwithstanding that instituted proceeding was fully
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`briefed); Volusion, Inc. v. Versata Software, Inc., CBM2013-00018, Pap. 52, 2-3
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`(June 17, 2014) (granting motion to terminate instituted proceeding in its entirety
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`after final oral hearing); see also ARM, Ltd. v. Godo Kaisha IP Bridge 1, IPR2017-
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`00527, Pap. 10, 2-3 (May 12, 2017) (granting motion to terminate in its entirety
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`after preliminary response but prior to institution). Indeed, the Board has stated an
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`expectation that proceedings such as this will be terminated after the filing of a
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`settlement agreement: "[t]here are strong public policy reasons to favor settlement
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`4
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`between the parties to a proceeding . . . . The Board expects that a proceeding will
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`terminate after the filing of a settlement agreement, unless the Board has already
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`decided the merits of the proceeding. 35 U.S.C. § 317(a), as amended. . . ." Office
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`Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48768 (Aug. 14, 2012) (emphasis
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`added). For at least the reasons noted above, the Board's expectation that such
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`proceedings should be terminated is proper and well justified here.
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`V. CONCLUSION
`For the foregoing reasons, Petitioners and Patent Owner respectfully request
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`that the Board grant the parties' Joint Motion to Terminate IPR2020-00314.
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`
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`Dated: June 18, 2020
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`Respectfully submitted by:
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`
`
`
`
`/Huiya Wu/
`
`/Megan Raymond/
`
`Megan Raymond (Reg. No. 72,997)
`J. Steven Baughman (Reg. No. 47,414)
`PAUL, WEISS, RIFKIND, WHARTON
`& GARRISON LLP
`2001 K Street, NW
`Washington, DC 20006-1047
`mraymond@paulweiss.com
`sbaughman@paulweiss.com
`
`Attorneys For Patent Owner
`
`Huiya Wu (Reg. No. 44,411)
`Robert V. Cerwinski
`Linnea Cipriano
`James Breen
`GOODWIN PROCTER LLP
`620 Eighth Avenue
`New York, NY 10018
`hwu@goodwinlaw.com
`DG-FK287@goodwinlaw.com
`rcerwinski@goodwinlaw.com
`lcipriano@goodwinlaw.com
`jamesbreen@goodwinlaw.com
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`5
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`Joshua Weinger
`Daryl L. Wiesen
`Goodwin Procter LLP
`100 Northern Avenue
`Boston, MA 02210
`jweinger@goodwinlaw.com
`dwiesen@goodwinlaw.com
`
`Hanna H. Yoon
`Fresenius Kabi USA
`Three Corporate Drive
`Lake Zurich, Illinois 60047
`hanna.yoon@fresenius-kabi.com
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`Attorneys For Petitioners
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`6
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a copy of JOINT MOTION TO
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`TERMINATE has been served in its entirety by causing the aforementioned
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`document to be electronically mailed to the following attorneys of record for the
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`Patent Owner listed below:
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`Patent Owner's Counsel of Record:
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`Megan Raymond (Reg. No. 72,997)
`mraymond@paulweiss.com
`
`J. Steven Baughman (Reg. No. 47,414)
`sbaughman@paulweiss.com
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`Respectfully Submitted,
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`Dated: June 18, 2020
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`By:
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`/Huiya Wu/
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