UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`MYLAN PHARMACEUTICALS INC.,
`
`Petitioner
`
`V.
`
`WARNER CHILCOTT COMPANY, LLC.,
`Patent Owner
`
`Case IPR2015-00682
`
`Patent 7,704,984
`
`JOINT MOTION TO TERMINATE PURSUANT TO
`
`35 U.S.C. § 317 AND 37 C.F.R. § 42.74
`
`DC: 5812013-1
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`MYLAN PHARMACEUTICALS INC.,
`
`Petitioner
`
`V.
`
`WARNER CHILCOTT COMPANY, LLC.,
`Patent Owner
`
`Case IPR2015-00682
`
`Patent 7,704,984
`
`JOINT MOTION TO TERMINATE PURSUANT TO
`
`35 U.S.C. § 317 AND 37 C.F.R. § 42.74
`
`DC: 5812013-1
`
`
`
`IPR2015—00682
`
`Pursuant to 35 U.S.C. § 317, 37 C.F.R. §§ 42.72 and 42.74, and the Board’s
`
`authorization of August 17, 2015, Petitioner Mylan Pharmaceuticals Inc. and
`
`Patent Owner Warner Chilcott Company, LLC jointly move to terminate the
`
`present inter partes review proceeding in light of the parties’ settlement of their
`
`dispute insofar as it relates to U.S. Patent No. 7,704,984 (“the ‘984 patent”). The
`
`parties are filing, concurrently herewith, a true and complete copy of their written
`
`Settlement Agreement in connection with this matter as required by the statute.
`
`The Settlement Agreement completely settles the parties’ controversy and their
`
`dispute relating to the ‘984 patent as between Patent Owner and Petitioner and the
`
`entities named as real parties—in—interest in the present proceeding, including the
`
`entities named as defendants in the U.S. district court litigation captioned Warner
`
`Chilcott Company, LLC v. Mylan Inc. et al., Civil Action No. 3:13~6560 (JAP)
`
`(D.N.J.). The parties will file a Stipulation and Order of Dismissal in the district
`
`court litigation within ten (10) business days of the Settlement Date (see Exhibit B
`
`to Settlement Agreement).
`
`The parties further jointly certify that there is no other agreement or
`
`understanding between Patent Owner and Petitioner, including any collateral
`
`agreements, made in connection with, or in contemplation of, the termination of
`
`the present proceeding as set forth in 35 U.S.C. § 317(b).
`
`
`
`IPR2015—OO682
`
`The parties request that the Settlement Agreement be treated as business
`
`confidential information and kept separate from the file of the ‘984 patent. A joint
`
`request to treat the Settlement Agreement as business confidential information is
`
`filed concurrently herewith.
`
`Termination With Respect to Inter Partes Review Proceeding
`
`A joint motion to terminate generally “must (1) include a brief explanation
`
`as to why termination is appropriate; (2) identify all parties in any related litigation
`
`involving the patents at issue; (3) identify any related proceedings currently before
`
`the Office, and (4) discuss specifically the current status of each such related
`
`litigation or proceeding with respect to each party to the litigation or proceeding.”
`
`Heartland Tanning, Inc. v. Sunless, Inc., IPR2014—0O018, Paper No. 26, at *2
`
`(P.T.A.B. July 28, 2014). Each is addressed in turn below:
`
`1. Termination is appropriate in this proceeding because the parties have
`
`settled their dispute with respect to the ‘984 patent, and have agreed to terminate
`
`this inter partes review. The applicable statute, 35 U.S.C. § 317(a), provides that
`
`an inter partes review proceeding “shall be terminated with respect to any
`
`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.” In this case, the inter partes review has not yet been instituted. The
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`Patent Owner’s Preliminary Response to the petition was filed on May 21, 2015,
`
`2
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`
`
`IPR2015—00682
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`and the Office has made no decision on the merits. Moreover, strong public policy
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`considerations favor settlement between parties to an inter partes review
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`proceeding, see Patent Office Trial Practice Guide, Fed. Register, Vol. 77, No. 157
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`at 48768 (Aug. 14, 2012), and no public interest or other factors militate against
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`termination of this proceeding.
`
`2. The following litigations involved the ’984 Patent:
`
`
`
`Case Caption
`Warner Chilcott Company, LLC. v. Lupin Ltd., et
`al., C.A. No. 11-5048 (JAP) (D.N.J.)
`Warner Chilcott Company, LLC v. Amneal
`Pharmaceuticals, LLC, et al., C.A. No. 12-2928
`L(D.N.J
`Warner Chilcott Company, LLC v. Lupin Ltd. et
`__|
`al., C.A. No. 2014-1262, -1273_LFed. Cir.)
`Warner Chilcott Company, LLC. v. Mylan Inc. et
`al., C.A. No. 3:13-6560 (JA_P) (D.N.J.)
`Bayer Intellectual Property GMBH et al., v.
`Warner Chilcott Company LLC, et al., C.A. No.
`1:12-10:52 (GM_S) (D. Del) 1
`
`T
`
`Qisposition
`closed
`
`‘"1
`
`closed
`
`closed
`
`settled
`
`pending
`
`3. There are no related proceedings currently before the U.S. Patent &
`
`Trademark Office involving the patent at issue.
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`4. As discussed above, the parties have settled and will file a stipulation and
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`order of dismissal in the pending district court case, Warner Chilcott Company,
`
`1 This case is on appeal to the Federal Circuit, and concerns whether the ‘984
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`patent and a patent owned by Bayer are “interfering patents.”
`
`
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`IPR2015—00682
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`LLC v. Mylan Inc. et al., Civil Action No. 3:13—6560 (JAP), United States District
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`Court, District of New Jersey.
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`For the foregoing reasons, the parties jointly and respectfully request that the
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`instant proceeding be terminated.
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`Date: August 19, 2015
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`Respectfully submitted,
`
`
`
`COVINGTON & BURLING LLP
`
`One CityCenter, 850 Tenth Street, NW
`Washington, DC 20001
`(202) 662-6000
`Attorneys for Patent Owner
`
`[Cedric C.Y. Tang
`By
`Cedric C.Y. Tan, Reg. No. 56,082
`MCGUIRE WOODS LLP
`
`2001 K Street, NW, Suite 400
`
`Washington, DC 20006
`(202) 857-1700
`
`Karen L. Carroll, Reg. No. 50,748
`Brie L.B. Buchanan, Reg. No. 58,709
`MCGUIRE WOODS LLP
`
`1230 Peachtree Street, Suite 2100
`
`Atlanta, GA 30309
`(404) 443-5500
`
`Attorneys for Petitioner
`
`
`
`IPR2015—00682
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6, I hereby certify that on this 19th day of August 2015,
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`the foregoing Joint Motion to Terminate Pursuant to 35 U.S.C. § 317 and 37
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`C.F.R. § 42.74, was served Via email by agreement of the parties on the following
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`counsel of record for petitioner:
`
`Cedric C.Y. Tan (ctan@mcguirewoods.com)
`McGuireWoods LLP
`
`2001 K Street NW, Suite 400
`Washington, DC 20006-1040
`
`Karen L. Carroll (kcarroll@mcguirewoods.com)
`Brie L.B. Buchanan (bbuchanan@mcguirewoods.com)
`McGuireWoods LLP
`
`1230 Peachtree Street, Suite 2100
`
`Atlanta, Georgia 30309
`
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`
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`
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`
`Dated: August 19, 2015
`
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`Andrea G. R 'ster, Esq.
`Reg. No. 36,253
`
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