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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APOTEX CORP.
`Petitioner
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`v.
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`ALCON RESEARCH, LTD.
`Patent Owner
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`Case IPR2013-00428
`Patent No. 8,268,299
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`JOINT MOTION TO TERMINATE PROCEEDING
`PURSUANT TO 35 U.S.C. § 317
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`Case IPR2013-00428
`U.S. Patent No. 8,268,299
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`Pursuant to 35 U.S.C. § 317 and 37 C.F.R. § 42.74, and pursuant to the
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`authorization to file this motion provided by the Board during a conference call
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`with the parties on July 10, 2014, Petitioner Apotex Corp. (“Apotex”) and Patent
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`Owner Alcon Research, Ltd. (“Alcon”) jointly request the termination of this inter
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`partes review of U.S. Patent No. 8,268,299.
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`The parties have settled their dispute and executed a settlement agreement to
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`terminate this inter partes review and the parties’ co-pending inter partes review
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`proceedings 2013-00429 and 2013-00430.
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`The parties’ settlement agreement has been made in writing, and a true and
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`correct copy is being filed concurrently herewith as Exhibit 1020. The parties are
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`also filing concurrently herewith a joint request to treat the settlement agreement as
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`business confidential information and keep it separate from the files of the IPR and
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`the involved patent pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b).
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`Termination of this inter partes review is proper under 35 U.S.C. § 317(a)
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`because the Board has not yet decided the merits of the proceeding. Indeed, the
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`briefing and discovery process in this proceeding has not yet been completed.
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`Alcon has filed a Patent Owner’s Response to the Petition, but Alcon’s declarants
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`have not been deposed, and Apotex has not filed a Reply or any evidence in Reply.
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`Alcon did not file a Motion to Amend and thus no such motion is pending.
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`1
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`Case IPR2013-00428
`U.S. Patent No. 8,268,299
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`No other party’s rights will be prejudiced by the termination of this inter
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`partes review. While there is no litigation pending between Alcon and Apotex
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`relating to the patent that is the subject of this inter partes review, there is pending
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`litigation relating to this patent between Alcon and other parties in the following
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`actions: (1) Alcon Research, Ltd. v. Mylan Pharmaceuticals Inc. & Mylan Inc., No.
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`1:13-cv-01332 (SLR) (D. Del.), (2) Alcon Research, Ltd. v. Wockhardt Ltd.,
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`Wockhardt Bio AG, & Wockhardt USA, LLC, No. 1:13-cv-02040 (SLR) (D. Del.),
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`(3) Alcon Research, Ltd. v. Micro Labs Ltd. & Micro Labs USA Inc., No. 1:14-cv-
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`00014 (SLR) (D. Del.), and (4) Alcon Research, Ltd. v. Watson Labs., Inc.,
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`Actavis, Inc. and Actavis Pharma, Inc., No. 1:14-cv-00647 (SLR) (D. Del.). Each
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`of these litigations is at an early stage. The Mylan action is the fact discovery
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`period. The Wockhardt action is also in the fact discovery period, albeit at an
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`earlier stage than the Mylan action. The Micro action has been stayed pending the
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`outcome of the Mylan or Wockhardt actions. The Watson action has just begun, as
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`Watson has not yet filed an Answer. None of these other parties’ rights will be
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`impacted by the termination of this inter partes review.
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`There are no other proceedings pending before the Patent and Trademark
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`Office relating to the patent at issue in this inter partes review.
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`2
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`Case IPR2013-00428
`U.S. Patent No. 8,268,299
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`Accordingly, Apotex and Alcon respectfully request that this inter partes
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` Respectfully submitted,
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`/Eldora L. Ellison/
`Eldora L. Ellison, Ph.D.
`Reg. No. 39,967
`Sterne, Kessler, Goldstein & Fox
`P.L.L.C.
`1100 New York Avenue, N.W.
`Washington, DC 20005
`Phone: 202-371-2600
`1877177.1
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`review proceeding be terminated.
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`Dated: July 14, 2014
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`/Stanley E. Fisher/
`Stanley E. Fisher
`Reg. No. 55,820
`Williams & Connolly LLP
`725 Twelfth Street NW
`Washington, D.C. 20005
`Phone: 202-434-5289
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`3
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`CERTIFICATE OF SERVICE (37 C.F.R. §§ 42.6(e))
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`The undersigned hereby certifies that a copy of the foregoing “Joint Motion
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`to Terminate Proceeding Pursuant to 35 U.S.C. § 317,” along with Exhibit 1020,
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`were served in their entirety on July 14, 2014, via email upon the following
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`counsel of record for the Patent Owner:
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`Stanley E. Fisher
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`David M. Krinsky
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`Adam L. Perlman
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`Dov P. Grossman
`Christopher J. Mandernach
`David M. Horniak
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`Barry L. Copeland
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`sfisher@wc.com
`dkrinsky@wc.com
`aperlman@wc.com
`dgrossman@wc.com
`cmandernach@wc.com
`dhorniak@wc.com
`barry.copeland@alcon.com
`patent.docketing@alcon.com
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` STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
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` /Eldora L. Ellison/
` Eldora L. Ellison, Ph.D.
`Date: July 14, 2014
` Lead Attorney for Petitioner Apotex Corp.
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`1100 New York Avenue, N.W. Registration No. 39,967
`Washington, D.C.20005-3934
`(202) 371-2600
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