`571-272-7822
`
` Paper 29
` Entered: July 31, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`AMNEAL PHARMACEUTICALS LLC,
`Petitioner,
`
`v.
`
`ALKERMES PHARMA IRELAND LIMITED,
`Patent Owner.
`____________
`
`Case IPR2018-00943
`Patent 7,919,499 B2
`____________
`
`Before CHRISTOPHER M. KAISER, JACQUELINE T. HARLOW, and
`KRISTI L. R. SAWERT, Administrative Patent Judges.
`
`SAWERT, Administrative Patent Judge.
`
`DECISION
`Granting Joint Motion to Terminate
`35 U.S.C. § 317(a) and 37 C.F.R. § 42.74
`
`APOTEX EXHIBIT 1059
`Apotex v. Alkermes
`IPR2025-00514
`
`
`
`IPR2018-00943
`Patent 7,919,499 B2
`
`
`
`
`
`On July 30, 2019, pursuant to the Board’s authorization, Amneal
`Pharmaceuticals LLC (“Petitioner”) and Alkermes Pharma Ireland Limited
`(“Patent Owner”) filed a joint motion to terminate this inter partes review
`pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. § 42.74. Paper 27 (“Motion”
`or “Mot.”). The motion was accompanied by a true, unredacted copy of a
`Settlement and License Agreement (Ex. 2058), and a joint request to treat
`the Settlement and License Agreement as business confidential information,
`to be kept separate from the patent file, pursuant to 35 U.S.C. § 317(b) and
`37 C.F.R. § 42.74(c) (Paper 28).
`The parties represent in their joint motion that they “have settled their
`disputes” and have “executed a Settlement and License Agreement that
`authorizes the Parties to seek termination of this inter partes review.”
`Mot. 2. Additionally, the parties state that the patent-at-issue in this
`proceeding, U.S. Patent No. 7,919,499 B2 (“the ’499 patent”), is not
`involved in any related district court litigations, or in any related inter partes
`review proceedings. Id.
`The Board generally expects that a case “will terminate after the filing
`of a settlement agreement, unless the Board has already decided the merits.”
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14,
`2012); see also 37 C.F.R. § 42.72. Here, although the Board has instituted
`an inter partes review of claims 1–13 of the ’499 patent, the Board has not
`heard oral argument and has not decided the merits of the proceeding.
`Under the circumstances presented here, therefore, we determine that
`it is appropriate to terminate this proceeding with respect to both Petitioner
`and Patent Owner. Accordingly, we grant the parties’ joint motion to
`terminate.
`
`
`
`2
`
`
`
`IPR2018-00943
`Patent 7,919,499 B2
`
`
`
`
`
`We also determine that the parties have complied with the
`requirements of 37 C.F.R. § 42.74(c) to have the Settlement and License
`Agreement treated as business confidential information and kept separate
`from the files of the patent-at-issue in this proceeding. Thus, we grant the
`joint request to treat the Settlement and License Agreement as business
`confidential.
`Accordingly, it is
`ORDERED that the joint motion to terminate the proceeding is
`GRANTED;
`FURTHER ORDERED that the joint request to treat the parties’
`Settlement and License Agreement as business confidential information, to
`be kept separate from the patent file, is GRANTED; and
`FURTHER ORDERED that the instant proceeding is TERMINATED.
`
`
`
`
`
`
`3
`
`
`
`
`
`
`
`IPR2018-00943
`Patent 7,919,499 B2
`
`FOR PETITIONER:
`Tedd W. Van Buskirk
`Michael H. Teschner
`Kendall K. Gurule
`LERNER, DAVID, LITTENBERG,
`KRUMHOLZ & MENTLIK, LLP
`litigation@lernerdavid.com
`tvanbuskirk@lernerdavid.com
`mteschner.ipr@ldlkm.com
`kgurule@lernerdavid.com
`
`FOR PATENT OWNER:
`
`Naveen Modi
`Bruce M. Wexler
`Michael Stramiello
`Joseph M. O’Malley Jr.
`Gerard A. Salvatore
`PAUL HASTINGS LLP
`PH-Amneal-Alkermes-IPR@paulhastings .com
`naveenmodi@paulhastings.com
`brucewexler@paulhastings.com
`michaelstramiello@paulhastings.com
`josephomalley@paulhastings.com
`gerardsalvatore@paulhastings.com
`
`
`
`
`
`
`
`
`
`
`
`4
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
