Paper No.
`Filed: July 1, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
`
`
`
`METRICS, INC., MAYNE PHARMA, and JOHNSON MATTHEY, INC.,
`Petitioner
`v.
`
` SENJU PHARMACEUTICAL CO., LTD, BAUSCH & LOMB, INC. and
`BAUSCH & LOMB PHARMA HOLDINGS CORP.
`Patent Owner
`________________
`
`Case IPR2014-01041
`Patent No. 8,129,431
`________________
`
`
`
`JOINT MOTION TO TERMINATE PROCEEDING
`
`
`
`
`
`
`
`
`
`
`Filed: July 1, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
`
`
`
`METRICS, INC., MAYNE PHARMA, and JOHNSON MATTHEY, INC.,
`Petitioner
`v.
`
` SENJU PHARMACEUTICAL CO., LTD, BAUSCH & LOMB, INC. and
`BAUSCH & LOMB PHARMA HOLDINGS CORP.
`Patent Owner
`________________
`
`Case IPR2014-01041
`Patent No. 8,129,431
`________________
`
`
`
`JOINT MOTION TO TERMINATE PROCEEDING
`
`
`
`
`
`
`
`
`
`
`
`INTRODUCTION
`
`Case IPR2014-01041
`Patent No. 8,129,431
`
`Petitioner Metrics, Inc., Mayne Pharma, and Johnson Matthey, Inc.
`
`(collectively, “Metrics”), and Patent Owner Senju Pharmaceutical Co., Ltd.,
`
`Bausch & Lomb, Inc., and Bausch & Lomb Pharma Holdings Corp. (collectively,
`
`“Senju”) have entered into a settlement agreement that resolves all underlying
`
`disputes between the parties, including the inter partes review proceeding
`
`IPR2014-01041, against U.S. Patent No. 8,129,431, currently before the Board.
`
`The Board authorized the parties to file a joint motion to terminate this
`
`proceeding in an email sent to the parties on June 30, 2015. Accordingly, the
`
`parties jointly move to terminate this proceeding pursuant to 35 U.S.C. § 317 and
`
`37 C.F.R. § 42.74.
`
`The Board requested that the parties update the Board concerning the status
`
`of any litigation or proceeding, including, but not limited to proceedings in the
`
`U.S. Patent and Trademark Office, involving the subject patents, and advise the
`
`Board whether any litigation or proceeding involving the subject patents is
`
`contemplated in the foreseeable future. The Board also requested submission of a
`
`true copy of the parties’ agreement. The Parties consider the agreement Highly
`
`Confidential Business Information. In the June 30, 2015 e-mail, the Board also
`
`authorized filing of a motion to hold the agreement confidential pursuant to 37
`
`C.F.R. § 42.74(c).
`
`–1–
`
`
`
`Case IPR2014-01041
`Patent No. 8,129,431
`THE SETTLEMENT AGREEMENT
`
`The parties have entered into a Confidential Settlement Agreement (the
`
`“Agreement”) settling their dispute involving two U.S. Patents, including U.S.
`
`Patent No. 8,129,431. The parties are filing a copy of the Agreement with this
`
`Joint Motion to Terminate Proceeding in IPR2014-01041, as Exhibit 2027. In
`
`addition, the parties have filed a request to treat the Agreement as Confidential
`
`Business Information under 37 C.F.R. § 42.74(c). As part of the Agreement, a
`
`Stipulated Consent Judgment and Injunction has been entered in the related district
`
`court litigation. (Exhibit 2028). As requested by the Board, the parties certify that
`
`there are no collateral agreements or understandings made in connection with, or in
`
`contemplation of, the termination of the inter partes review.
`
`The parties also agreed to jointly request termination of all pending inter
`
`partes reviews filed by Petitioner Metrics against patents owned by Senju.
`
`STATUS OF RELATED PROCEEDINGS
`
`A. District Court Proceeding
`
`The following are the related proceedings:
`
`District Court Case
`
`U.S. Patent Nos.
`
`Status
`
`
`
`–2–
`
`
`
`8,129,431
`
`Case IPR2014-01041
`Patent No. 8,129,431
`Claim construction phase.
`
`
`8,129,431
`8,669,290
`8,754,131
`
`
`Stipulated Consent Judgment
`and Injunction entered on July 1,
`2015.
`
`
`8,129,431
`8,669,290
`8,754,131
`
`
`Stipulation and Order of
`dismissal on May 4, 2015.
`
`
`Dismissed without prejudice on
`May 6, 2015.
`
`8,129,431
`8,669,290
`8,754,131
`
`
`Senju Pharm. Co. Ltd.,
`Bausch & Lomb. Inc. and
`Bausch & Lomb Pharma
`Holdings Corp. v. Lupin
`Ltd. and Lupin Pharms.,
`Inc., No. 14-cv-00667
`(D.N.J.)
`Senju Pharm. Co., Ltd.,
`Bausch & Lomb, Inc. and
`Bausch & Lomb Pharma
`Holdings Corp. v.
`Metrics, Inc., Coastal
`Pharms., Inc., Mayne
`Pharma Group Ltd., and
`Mayne Pharma (USA),
`Inc., No. 14-cv-03962
`(D.N.J.)
`Senju Pharm. Co., Ltd.,
`Bausch & Lomb, Inc. and
`Bausch & Lomb Pharma
`Holdings Corp. v.
`Metrics, Inc., Coastal
`Pharms., Inc., Mayne
`Pharma Group Ltd., and
`Mayne Pharma (USA),
`Inc., No. 14-cv-04964
`(D.N.J.).
`Senju Pharm. Co., Ltd.,
`Bausch & Lomb, Inc. and
`Bausch & Lomb Pharma
`Holdings Corp. v.
`Metrics, Inc., Coastal
`Pharms., Inc., Mayne
`Pharma Group Limited,
`
`
`
`–3–
`
`
`
`Case IPR2014-01041
`Patent No. 8,129,431
`
`Claim construction phase.
`
`Stipulated Consent Judgment
`and Injunction entered on May
`18, 2015.
`
`Stipulated Consent Judgment
`and Injunction entered on June 5,
`2015.
`
`Dismissed without prejudice on
`June 8, 2015.
`
`
`and Mayne Pharma
`(USA), Inc., No. 14-cv-
`00141 (E.D.N.C.)
`Senju Pharm. Co., Ltd.,
`Bausch & Lomb, Inc. and
`Bausch & Lomb Pharma
`Holdings Corp. v.
`Innopharma Licensing,
`Inc., Innopharma
`Licensing, LLC,
`Innopharma, Inc., and
`Innopharma LLC, No. 14-
`cv-06893 (D.N.J.)
`Senju Pharm. Co., Ltd.,
`Bausch & Lomb Inc. and
`Bausch & Lomb Pharma
`Holdings Corp. v. Apotex
`Inc. and Apotex Corp.,
`15-cv-00336 (D.N.J.)
`Senju Pharm. Co. Ltd.,
`Bausch & Lomb Inc. and
`Bausch & Lomb Pharma
`Holdings Corp. v.
`Paddock Labs., LLC, L.
`Perrigo Co., and Perrigo
`Co., 15-cv-00337 (D.N.J.)
`Senju Pharm. Co. Ltd.,
`Bausch & Lomb Inc. and
`Bausch & Lomb Pharma
`Holdings Corp. v.
`Paddock Laboratories,
`LLC, L. Perrigo Co., and
`Perrigo Co., 15-cv-00087
`(D. Del.)
`
`8,129,431
`8,669,290
`8,754,131
`8,871,813
`
`8,129,431
`8,669,290
`8,754,131
`8,871,813
`8,927,606
`
`8,129,431
`8,669,290
`8,754,131
`8,871,813
`8,927,606
`
`8,129,431
`8,669,290
`8,754,131
`8,871,813
`8,927,606
`
`
`
`–4–
`
`
`
`Case IPR2014-01041
`Patent No. 8,129,431
`Awaiting Answer to Complaint
`from Defendants.
`
`8,129,431
`8,669,290
`8,754,131
`8,871,813
`8,927,606
`
`Senju Pharm. Co. Ltd.,
`Bausch & Lomb Inc. and
`Bausch & Lomb Pharma
`Holdings Corp. v.
`InnoPharma Licensing,
`Inc., Innopharma
`Licensing, LLC,
`Innopharma, Inc.,
`Innopharma, LLC, Mylan
`Pharms., Inc., and Mylan
`Inc., 15-cv-03240
`(D.N.J.)
`
`There are no other district court proceedings related to U.S. Patent No.
`
`8,129,431. Senju, however, received a notice letter of Paragraph IV Certifications
`
`to the U.S. Patent Nos. 8,129,431, 8,669,290, 8,754,131, 8,871,813, and 8,927,606
`
`from Watson Laboratories, Inc. on June 1, 2015, and anticipates filing suit against
`
`Watson Laboratories, Inc. during the month of July 2015.
`
`B. United States Patent Office Proceedings
`
`The following related inter partes review proceedings are currently before
`
`the United States Patent and Trademark Office:
`
`Patent
`U.S.
`Number
`8,129,431
`
`Case
`
`IPR
`Number
`IPR2014-01041 Metrics
`
`Petitioner
`
`8,669,290
`
`IPR2014-01043 Metrics
`
`
`
`–5–
`
`Status
`
`Joint Request to
`Terminate filed
`concurrently.
`Joint Request to
`Terminate filed
`concurrently.
`
`
`
`8,129,431
`
`IPR2015-00903
`
`8,669,290
`
`IPR2015-00902
`
`8,669,290
`
`IPR2015-01099
`
`8,754,131
`
`IPR2015-01097
`
`8,871,813
`
`IPR2015-01105
`
`8,927,606
`
`IPR2015-01100
`
`Case IPR2014-01041
`Patent No. 8,129,431
`Patent Owner filed
`Patent Owner’s
`Preliminary Response
`and Opposition to
`Motion for Joinder on
`May 26, 2015.
`Petitioner filed Reply
`Brief in Support of
`Motion for Joinder on
`June 9, 2015.
`Patent Owner filed
`Patent Owner’s
`Preliminary Response
`and Opposition to
`Motion for Joinder on
`May 26, 2015.
`Petitioner filed Reply
`Brief in Support of
`Motion for Joinder on
`June 9, 2015.
`Petition filed on April
`23, 2015.
`
`Petition filed on April
`23, 2015.
`
`Petition filed on April
`23, 2015.
`
`Petition filed on April
`23, 2015.
`
`InnoPharma
`Licensing, Inc.,
`Innopharma
`Licensing, LLC,
`Innopharma, Inc.,
`Innopharma, LLC,
`Mylan Pharms.,
`Inc., and Mylan
`Inc.
`
`InnoPharma
`Licensing, Inc.,
`Innopharma
`Licensing, LLC,
`Innopharma, Inc.,
`Innopharma, LLC,
`Mylan Pharms.,
`Inc., and Mylan
`Inc.
`
`Lupin Ltd. and
`Lupin Pharms.,
`Inc.
`Lupin Ltd. and
`Lupin Pharms.,
`Inc.
`Lupin Ltd. and
`Lupin Pharms.,
`Inc.
`Lupin Ltd. and
`Lupin Pharms.,
`Inc.
`
`
`
`–6–
`
`
`
`Case IPR2014-01041
`Patent No. 8,129,431
`As noted above, the parties have concurrently filed a joint request to
`
`terminate in the IPR2014-01041 and IPR2014-01043 inter partes reviews.
`
`C. Foreign Proceedings
`
`There are no foreign proceedings related to U.S. Patent No. 8,129,431
`
`between the parties.
`
`WHY TERMINATION IS APPROPRIATE
`
`Termination of this proceeding is appropriate at this stage in the proceeding
`
`in view of the Agreement. The Agreement ends all patent disputes between the
`
`parties, including this proceeding. Moreover, as shown above, the Agreement
`
`resulted in the dismissal of the underlying civil action.
`
`Both Congress and the federal courts have expressed a strong interest in
`
`encouraging settlement in litigation. See, e.g., Delta Air Lines, Inc. v. August, 450
`
`U.S. 346, 352 (1981) (“The purpose of [Fed. R. Civ. P.] 68 is to encourage the
`
`settlement of litigation.”); Bergh v. Dept. of Transp., 794 F.2d 1575, 1577 (Fed.
`
`Cir. 1986) (“The law favors settlement of cases.”), cert. denied, 479 U.S. 950
`
`(1986). The U.S. Court of Appeals for the Federal Circuit also places a particularly
`
`strong emphasis on settlement. See Cheyenne River Sioux Tribe v. U.S., 806 F.2d
`
`1046, 1050 (Fed. Cir. 1986) (noting that the law favors settlement to reduce
`
`antagonism and hostility between parties). Moreover, the Board generally expects
`
`
`
`–7–
`
`
`
`Case IPR2014-01041
`Patent No. 8,129,431
`that a proceeding will terminate after the filing of a settlement. See, e.g., Office
`
`Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 46,768 (Aug. 14, 2012).
`
`Maintaining this proceeding after Petitioner Metrics’ settlement with Patent
`
`Owner Senju would discourage future settlements by removing a primary
`
`motivation for settlement: eliminating litigation risk by resolving the parties’
`
`disputes and ending the pending proceedings between them. For patent owners,
`
`litigation risks include the potential for an invalidity ruling against their patents. If
`
`a patent owner knows that an inter partes review will likely continue regardless of
`
`settlement, it creates a strong disincentive for the patent owner to settle.
`
`
`
`CONCLUSION
`
`For the foregoing reasons, the Petitioner Metrics and Patent Owner Senju
`
`jointly and respectfully request that the Board terminate this proceeding in its
`
`entirety.
`
`Date: July 1, 2015
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`
`
`Patrick D. McPherson
`Registration No. 46,255
`Duane Morris LLP
`505 9th Street, Suite 1000
`Washington, DC 2004
`
`Vincent L. Capuano
`Registration No. 42,385
`100 High Street, Suite 2400
`Boston, MA 02110
`
`
`–8–
`
`
`
`Case IPR2014-01041
`Patent No. 8,129,431
`Attorneys for Petitioner
`Metrics, Inc., Mayne Pharma, and
`Johnson Matthey, Inc.
`
`
`
`
`
`
`/Bryan C. Diner/_____________
` Bryan C. Diner, Lead Counsel
`Reg. No. 32,409
`M. Andrew Holtman, Back-up Counsel
`Reg. No. 53,032
`Justin J. Hasford, Back-up Counsel
`Reg. No. 62,180
`Joshua L. Goldberg, Back-up Counsel
`Reg. No. 59,369
`Finnegan, Henderson, Farabow,
`Garrett & Dunner, L.L.P.
`901 New York Ave. NW
`Washington, DC
`
`Attorneys for Patent Owner
`Senju Pharmaceutical Co., Ltd., Bausch
`& Lomb, Inc., and Bausch & Lomb
`Pharma Holdings Corp.
`
`
`
`–9–
`
`
`
`
`
`
`
`
`
`
`Date: July 1, 2015
`
`
`
`
`
`
`Case IPR2014-01041
`Patent No. 8,129,431
`
`PATENT OWNER’S UPDATED EXHIBIT LIST
`
`
`
`July 1, 2015
`
`Description
`Exhibits
`Exhibit 2001 Coastal’s Paragraph IV Certification Notice Letter
`challenging the ’431 patent and the ’290 patent
`Exhibit 2002 Metrics’ March 13, 2014 Letter to Senju
`Exhibit 2003 Coastal’s Reply Brief to Plaintiff’s Opposition to
`Defendant’s Motion to Dismiss the Complaint, Senju
`Pharm. Co. v. Metrics, Inc., No. 1:14-CV-03962-JBS-KMW
`(D.N.J. filed June 20, 2014) (No. 51).
`Exhibit 2004 Transcript of Oral Hearing, Senju Pharm. Co. v. Metrics,
`Inc., No. 1:14-CV-03962-JBS-KMW (D.N.J. filed June 20,
`2014) (No. 63).
`Exhibit 2005 Excerpts of the ’431 patent’s prosecution history
`Exhibit 2006 Excerpts of the ’290 patent’s prosecution history
`Exhibit 2007 Yanni et al., U.S. Patent No. 5,475,034, “Topically
`Administrable Compositions Containing 3-
`Benzoylphenylacetic Acid Derivatives For Treatment of
`Ophthalmic Inflammatory Disorders”
`Exhibit 2008 Gamache et al., WO 0115677 A2, “Use of 5-HTIB/ID
`Agonists to Treat Otic Pain”
`Exhibit 2009 Original Copy of Clinics & Drug Therapy, 19:10
`Exhibit 2010 The FDA’s Approval of Prolensa®
`Exhibit 2011 The Medical Community’s Appraisal of Prolensa®
`Exhibit 2012 The FDA’s Required Package Label for Prolensa®
`Exhibit 2013 The structure of octoxynol 9
`Exhibit 2014 The structure of octoxynol 40
`Exhibit 2015 The structure of tyloxapol
`Exhibit 2016 Brief of Plaintiff in Support of Motion for Order Enjoining
`Defendants From Prosecuting Parallel Inter Partes Review
`Proceedings, Senju Pharm. Co. v. Metrics, Inc., No. 1:14-
`CV-03962-JBS-KMW (D.N.J. filed June 20, 2014) (No. 10-
`1).
`
`–10–
`
`
`
`
`
`
`
`
`
`Case IPR2014-01041
`Patent No. 8,129,431
`Exhibit 2017 Complaint, Senju Pharm. Co. v. Metrics, Inc., No. 1:14-CV-
`03962-JBS-KMW (D.N.J. filed June 20, 2014) (No. 1).
`Exhibit 2018 Lupin’s Paragraph IV Certification Notice Letter
`challenging the ’290 patent
`Exhibit 2019 Lupin’s Paragraph IV Certification Letter challenging the
`’431 patent
`Exhibit 2020 Reply Brief of Plaintiff in support of its Motion for Order
`Enjoining Defendants from Prosecuting Parallel Inter Partes
`Review Proceedings, Senju Pharm. Co. v. Metrics, Inc., No.
`1:14-CV-03962-JBS-KMW (D.N.J. filed June 20, 2014)
`(No. 49).
`Exhibit 2021 Resume of Stephanie Box,
`http://cdn.proz.com/profile_resources/060862_r47b495b817
`2cc.pdf (last visited Nov. 18, 2014).
`Exhibit 2022 Orange Book listing of patents covering Prolensa®
`Exhibit 2023 Orange Book listing of Coastal Pharmaceuticals’ Filing of
`Generic Drug Products,
`http://www.accessdata.fda.gov/scripts/cder/ob/docs/tempah.
`cfm (last visited January 26, 2015).
`Exhibit 2024 Coastal Pharmaceuticals’ Articles of Incorporation
`Exhibit 2025 Teleconference Transcript of Initial Conference Call, dated
`March 17, 2015
`Exhibit 2026 Teleconference Transcript, dated April 15, 2015
`Exhibit 2027 Confidential Settlement Agreement between Senju and
`Metrics
`Exhibit 2028 Stipulated Consent Judgment and Injunction Order, Senju
`Pharm. Co. v. Metrics, Inc., No. 1:14-CV-03962-JBS-KMW
`(D.N.J. ordered July 1, 2015) (No. 108).
`
`
`
`
`
`
`–11–
`
`
`
`
`
`
`
`Case IPR2014-01041
`Patent No. 8,129,431
`
`
`CERTIFICATE OF SERVICE
`
`
`
`The undersigned certifies a copy of the foregoing JOINT MOTION TO
`
`TERMINATE, PATENT OWNER’S EXHIBIT LIST OF JULY 1, 2015, and
`
`EXHIBITS 2027 and 2028 were served on July 1, 2015 via electronic mail
`
`directed to the counsel of record for the Petitioner at the following:
`
`
`
`
`Dated: July 1, 2015
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Patrick D. McPherson
`PDMcPherson@duanemorris.com
`
`Vincent L. Capuano
`VCapuano@duanemorris.com
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`/Ashley F. Cheung/
`Ashley F. Cheung
`Case Manager
`
`
`
`
`
`FINNEGAN, HENDERSON,
`FARABOW, GARRETT &
`DUNNER LLP
`
`
`
`
`
`
`
`
`
`
`
`
`–12–
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