`____________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
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`APOTEX CORP.
`APOTEX, INC.
`Petitioner
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`v.
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`ALLERGAN, INC.
`Patent Owner.
`___________________
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`Case IPR2015-01278
`Patent 8,633,162
`____________________
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`JOINT MOTION TO TERMINATE PURSUANT TO
`35 U.S.C. § 317
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` Joint Motion to Terminate
`IPR2015-01278
`Pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. § 42.74, Apotex Corp. and
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`Apotex, Inc. (“Petitioner”) and Patent Owner Allergan, Inc. (“Patent Owner”)
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`jointly request termination of this inter partes review (IPR) of U.S. Patent
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`8,633,162 (“the ’162 patent”), Case No. IPR2015-01278. The parties note that
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`the Decision on Institution is currently set for Wednesday, December 16, 2015.
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`The parties have settled their disputes, and have reached agreement to
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`terminate this IPR. In accordance with 37 C.F.R. § 42.20(b), the parties received
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`authorization from the Board to file this motion on December 15, 2015.
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`Termination of this proceeding is proper for at least the following reasons:
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` The parties are jointly requesting termination. 77 Fed. Reg. 48756,
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`48768 (Aug. 14, 2012) (“There are strong public policy reasons to
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`favor settlement between the parties to a proceeding”) (emphasis
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`added). Both Congress and the federal courts have expressed a strong
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`interest in encouraging settlement in litigation. See, e.g., Delta Air Lines,
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`Inc. v. August, 450 U.S. 346, 352 (1981) (“The purpose of [Fed. R. Civ.
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`P.] 68 is to encourage the settlement of litigation.”); Bergh v. Dept. of
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`Transp., 794 F.2d 1575, 1577 (Fed. Cir. 1986) (“The law favors
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`settlement of cases.”), cert. denied, 479 U.S. 950 (1986). The Federal
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`Circuit places a particularly strong emphasis on settlement. For example,
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`it endorses the ability of parties to agree to never challenge validity as
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` Joint Motion to Terminate
`IPR2015-01278
`part of a settlement. See Flex-Foot, Inc. v. CRP, Inc., 238 F.3d 1362,
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`1370 (Fed. Cir. 2001); see also Cheyenne River Sioux Tribe v. U.S., 806
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`F.2d 1046, 1050 (Fed. Cir. 1986) (noting that the law favors settlement to
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`reduce antagonism and hostility between parties). Here, no public interest
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`or other factors weigh against termination of this proceeding.
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` The Board has not yet “decided the merits of the proceeding before the
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`request for termination is filed.” 35 U.S.C. § 317(a) (emphasis added);
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`77 Fed. Reg. 48768 (“The Board expects that a proceeding will terminate
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`after the filing of a settlement agreement, unless the Board has already
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`decided the merits of the proceeding.”) Indeed, the Board has not yet
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`made a decision on institution of this inter partes review. Apotex filed
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`its petition for inter partes review on June 4, 2015. No Motions are
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`outstanding in this proceeding. No other party’s rights will be prejudiced
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`by the termination of this inter partes review. This supports the propriety
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`of
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`terminating
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`this proceeding even
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`though
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`the settlement and
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`termination provisions of 35 U.S.C. § 317, on their face, apply only to
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`“instituted” proceedings. 77 Fed. Reg. 48680, 48686 (Aug. 14, 2012)
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`(And 35 U.S.C. 317(a) provides “An inter partes review instituted under
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`this chapter 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
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` Joint Motion to Terminate
`IPR2015-01278
`decided the merits of the proceeding before the request for termination is
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`filed.”)
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` The only related pending district court litigation regarding the ’162 patent
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`is Allergan, Inc. v. Teva Pharmaceuticals USA, Inc. et al., &
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`Innopharma, Inc., C.A. No. 2:15-cv-1455-JRG (E.D. Tex. 2015)
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`(consolidated) and Allergan, Inc. v. Innopharma, Inc., & Pfizer, Inc.,
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`C.A. No. 1:15-cv-00815 (D. Del. 2015). The validity of the ’162 patent
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`was already previously challenged (unsuccessfully) by a generic drug
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`manufacturer in the U.S. District Court for the Eastern District of Texas,
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`Allergan, Inc. v. Actavis, Inc. et al., Case No. 2:14-cv-00638-JRG (E.D.
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`Tex. 2014).
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` Further, the parties are unaware of any other matter before the USPTO
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`that would be affected by the outcome of this proceeding. And there are
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`no pending related proceedings regarding the ’162 patent before the
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`Board.
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` Joint Motion to Terminate
`IPR2015-01278
`The settlement agreement between the parties has been made in writing, and
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`a true and correct copy shall be filed with this Office as business confidential
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`information pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b)-(c).
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`Respectfully Submitted,
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`/Eldora L. Ellison/
`Eldora L. Ellison (Reg. No. 39,967)
`Sterne, Kessler, Goldstein & Fox P.L.L.C.
`1100 New York Avenue, N.W.
`Washington, D.C. 20005
`P: 202.772.8508; F: 202.371.2540
`eellison-PTAB@skgf.com
`Counsel for Petitioner
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`/Dorothy P. Whelan/
`Dorothy P. Whelan (Reg. No. 33,814)
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`P: 612.337.2509; F: 612.288.9696
`Whelan@fr.com
`Counsel for Patent Owner
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`Dated: December 15, 2015
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`IPR2015-01278
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`CERTIFICATE OF SERVICE
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`The undersigned certifies that a copy of the foregoing Joint Motion to
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`Terminate Pursuant to 35 U.S.C. § 317 was served on December 15, 2015, by e-
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`mail directed to counsel of record for the Patent Owner as follows:
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`Dorothy P. Whelan
`Michael Kane
`Fish & Richardson P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN 55402
`Whelan@fr.com
`IPR13351-0060IP1@fr.com
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`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
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` /Eldora L. Ellison/
` Eldora L. Ellison (Reg. No. 39,967)
`Date: December 15, 2015
` Lead Attorney for Petitioner Apotex Corp. and
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` Apotex, Inc.
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`1100 New York Avenue, N.W.
`Washington, D.C. 20005 - 3934
`(202) 371-2600
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`2745850_1