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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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`ADELLO BIOLOGICS, LLC,
`Petitioner,
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`v.
`AMGEN INC. and AMGEN MANUFACTURING, LIMITED,
`Patent Owners.
`______________________
`
`Case PGR2019-00001
`Patent 9,856,287
`______________________
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`
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`PETITIONER ADELLO BIOLOGICS, LLC’S AND PATENT OWNERS’
`JOINT MOTION TO TERMINATE PURSUANT TO 35 U.S.C. § 327
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`I.
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`STATEMENT OF RELIEF REQUESTED
`Pursuant to 35 U.S.C. §327(a) and 37 C.F.R. §42.72, Petitioner Adello
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`Biologics, LLC (“Petitioner Adello”) and Patent Owners Amgen Inc. and Amgen
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`Manufacturing Limited (together, “Patent Owners”) jointly request termination of
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`Petitioner Adello from PGR2019-00001 concerning U.S. Patent No. 9,856,287 (the
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`’287 patent”). In addition, the parties request that this proceeding be terminated in
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`its entirety.
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`Petitioner Adello and Patent Owners notified the Board of their settlement
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`on November 22, 2019 and received authorization to file this joint motion to
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`terminate on November 25, 2019.
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`II.
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`STATEMENT OF FACTS
`In support of the Motion to Terminate Proceeding, Petitioner Adello and
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`Patent Owners state as follows:
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`Petitioner Adello together with co-petitioner Apotex filed a petition for post-
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`grant review on October 1, 2018. Patent Owners filed a preliminary response on
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`January 23, 2019. On April 19, 2019, the Board instituted this post-grant review.
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`Pap. 13. Patent Owners filed a Patent Owner Response on July 26, 2019. Co-
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`petitioner Apotex filed an unopposed motion for adverse judgment August 8, 2019
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`against itself. Pap. 21. As noted in that motion, Petitioner Adello was to remain as
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`the sole Petitioner in the proceeding. Id. That motion was granted on October 4,
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`2019. Pap. 23.
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`Petitioner Adello and Patent Owners have settled their dispute and all
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`litigation relating to the ’287 patent. Petitioner Adello and Patent Owners also
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`agreed to move to terminate this post-grant 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. §327(b) as Exhibit 1052. 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, Petitioner Adello and Patent Owners respectfully request that it be
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`treated as business confidential information, be kept separate from the underlying
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`patent file, and be made available only as provided in 35 U.S.C. §327(b) and 37
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`C.F.R. §42.74(c), and have filed herewith a separate paper setting forth this
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`request.
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`III. RELATED LITIGATION
`The following currently pending district court litigations involve the ’287
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`patent: Amgen Inc. and Amgen Manufacturing, Limited v. Tanvex BioPharma
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`USA, Inc., Tanvex BioPharma, Inc., and Tanvex Biologics Corp., Case No. 3:19-
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`cv-01374-H-AHG (Southern District of California), which was filed July 23, 2019
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`and remains pending as to all parties.
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`The following concluded district court litigations involved the ’287 patent:
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`Amgen Inc. and Amgen Manufacturing, Limited v. Accord BioPharma, Case No.
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`0:18-cv-61828-WPD (Southern District of Florida), which was filed August 7,
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`2018 and dismissed on November 14, 2019; and Amgen Inc. and Amgen
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`Manufacturing, Limited. v. Kashiv BioSciences, LLC, Amneal Pharmaceuticals
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`LLC, and Amneal Pharmaceuticals, Inc., Case No. 2:18-cv-03347 (District of New
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`Jersey), which was filed March 8, 2018, and dismissed on November 26, 2019.
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`There is one other PTAB proceeding involving this patent, IPR2019-00971,
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`which was denied institution on October 16, 2019. IPR2019-00971, Paper 13.
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`IV. ARGUMENT
`This proceeding should be terminated with respect to Petitioner Adello.
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`The statutory provision on a settlement relating to post-grant reviews provides that
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`a post-grant review “shall be terminated with respect to any petitioner upon the
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`joint request of the petitioner and the patent owner, unless the Office has decided
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`the merits of the proceeding before the request for termination is filed.” 35 U.S.C.
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`§ 327(a). Because the Board has not decided the merits of this post grant review
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`proceeding, and because Petitioner Adello and Patent Owners are jointly
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`requesting termination, the Board should terminate Petitioner Adello under
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`§327(a).
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`Petitioner Adello and Patent Owners request this proceeding be terminated
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`in its entirety. Section 327(a) provides that, “[i]f no petitioner remains in the post-
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`grant review, the Office may terminate the review or proceed to a final written
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`decision under section 328(a).” Id. This proceeding was recently 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 post-grant proceedings to
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`provide an efficient and less costly alternative forum for patent disputes (including
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`by encouraging settlement). The Board has routinely terminated proceedings at the
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`request of settling parties in cases that have progressed much further than the
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`present proceeding. See, e.g., Apex Med. Corp. v. Resmed Ltd., IPR2013-00512,
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`Pap. 39, 2 (Sept. 12, 2014) (granting motion to terminate in its entirety
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`notwithstanding that instituted proceeding was fully briefed); Volusion, Inc. v.
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`Versata Software, Inc., CBM2013-00018, Pap. 52, 2-3 (June 17, 2014) (granting
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`motion to terminate instituted proceeding in its entirety after final oral hearing).
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`Indeed, the Board has stated an expectation that proceedings such as this will
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`be terminated after the filing of a settlement agreement: “[t]here are strong public
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`policy reasons to favor settlement between the parties to a proceeding . . . . The
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`Board expects that a proceeding will terminate after the filing of a settlement
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`agreement, unless the Board has already decided the merits of the proceeding.”
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`Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48768 (Aug. 14, 2012)
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`(emphasis added).
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`Petitioner Adello further states that it will not file any subsequent petitions
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`for inter partes review concerning the ’287 patent.
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`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, Petitioner Adello and Patent Owners respectfully
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`request that the Board terminate Petitioner Adello, and grant this joint motion to
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`terminate PGR2019-00001 in its entirety.
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`
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`Dated: December 3, 2019
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`
`/Teresa Stanek Rea/
`
`Teresa Stanek Rea (Reg. No. 30,427)
`Deborah H. Yellin (Reg. No. 45,904)
`Shannon Lentz (Reg. No. 65,382)
`CROWELL & MORING LLP
`Intellectual Property Group
`1001 Pennsylvania Avenue, N.W.
`Washington, DC 20004-2595
`TRea@Crowell.com
`DYellin@Crowell.com
`SLentz@Crowell.com
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`Attorneys For Petitioner
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`Respectfully submitted by:
`
`
`/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
`P: 202-223-7340/F: 202-403-3740
`mraymond@paulweiss.com
`sbaughman@paulweiss.com
`
`Attorneys For Patent Owner
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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
`Megan Raymond (Reg. No. 72,997)
`mraymond@paulweiss.com
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`J. Steven Baughman (Reg. No. 47,414)
`sbaughman@paulweiss.com
`GRP-AmgenPGR@paulweiss.com
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`Catherine Nyarady
`cnyarady@paulweiss.com
`
`Jennifer Wu
`jwu@paulweiss.com
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`
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`Dated: December 3, 2019
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`Respectfully Submitted,
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`
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`By:
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`/Shannon Lentz/
`
`Shannon Lentz
`Reg. No. 65,382
`CROWELL & MORING LLP
`Intellectual Property Group
`1001 Pennsylvania Ave, NW
`Washington, DC 20004-2595
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