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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`MYLAN PHARMACEUTICALS INC.
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`Petitioner
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`v.
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`3M COMPANY et al.
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`Patent Owner
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`Case IPR2015-02002
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`Patent 6,743,413
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`JOINT MOTION TO TERMINATE PURSUANT TO
`35 U.S.C. § 317
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`12
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`Pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. § 42.74, Mylan
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`Pharmaceuticals Inc. (“Petitioner”) and 3M Company (“Patent Owner”)
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`jointly request termination of this inter partes review (IPR) of
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`U.S. Patent 6,743,413 (“the ’413 patent”), Case No. IPR2015-02002.
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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
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`received authorization from the Board to file this motion on November 15,
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`2016.
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`The parties believe that termination of the proceeding is proper for at
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`least the following reasons:
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`•
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`The parties are jointly requesting termination. 77 Fed. Reg.
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`48756, 48768 (Aug. 14, 2012) (“There are strong public policy
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`reasons to favor settlement between the parties to a proceeding”)
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`(emphasis added). Both Congress and the federal courts have
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`expressed a strong interest in encouraging settlement in litigation.
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`See, e.g., Delta Air Lines, Inc. v. August, 450 U.S. 346, 352
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`(1981) (“The purpose of [Fed. R. Civ. P.] 68 is to encourage the
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`settlement of litigation.”); Bergh v. Dept. of Transp., 794 F.2d
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`1575, 1577 (Fed. Cir. 1986) (“The law favors settlement of
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`cases.”), cert. denied, 479 U.S. 950 (1986). The Federal Circuit
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`13
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`places a particularly strong emphasis on settlement. See, e.g.,
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`Flex-Foot, Inc. v. CRP, Inc., 238 F.3d 1362, 1370 (Fed. Cir.
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`2001); Cheyenne River Sioux Tribe v. U.S., 806 F.2d 1046, 1050
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`(Fed. Cir. 1986) (noting that the law favors settlement to reduce
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`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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`•
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`The Board has not yet “decided the merits of the proceeding
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`before the request for termination is filed.” 35 U.S.C. § 317(a)
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`(emphasis added); 77 Fed. Reg. 48768 (“The Board expects that a
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`proceeding will terminate after the filing of a settlement
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`agreement, unless the Board has already decided the merits of the
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`proceeding.”) Indeed, the oral hearing for the present proceeding
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`has not yet occurred and is scheduled for December 5, 2016. No
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`Motions are outstanding in this proceeding. No other party’s
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`rights will be prejudiced by the termination of this inter partes
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`review. This supports the propriety of terminating this proceeding.
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`77 Fed. Reg. 48680, 48686 (Aug. 14, 2012) (Also 35 U.S.C. §
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`317(a), which provides that “[a]n inter partes review instituted
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`under this chapter shall be terminated with respect to any
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`petitioner upon the joint request of the petitioner and the patent
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`14
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`•
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`•
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`owner, unless the Office has decided the merits of the proceeding
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`before the request for termination is filed.”)
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`There is no related litigation regarding the ’413 patent.
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`Further, the parties are unaware of any other matter before the
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`USPTO that would be affected by the outcome of this proceeding.
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`And there are no pending related proceedings regarding the ’413
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`patent before the Board.
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`The settlement agreement between the parties has been made in
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`writing, and a true and correct copy shall be filed with this Office as
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`business confidential information pursuant to 35 U.S.C. § 317(b) and 37
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`C.F.R. § 42.74(b)-(c).
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`Dated: November 15, 2016
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`Respectfully Submitted,
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`/Jitendra Malik/___________________
`Jitendra Malik, Ph.D., Reg. No. 55,823
`Robert J. Caison, Reg. No. 72,939
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`Attorneys for Mylan Pharmaceuticals Inc.
`Customer Number 00826
`Alston & Bird LLP
`Telephone: (919) 862-2210
`Facsimile: (919) 862-2260
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`/Dorothy P. Whelan/________________
`Dorothy P. Whelan, Reg. No. 33,814
`Gwilym Attwell, Reg. No. 45,449
`John R. Lane, Reg. No. 47,733
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`Attorneys for 3M Company
`Customer Number 26171
`Fish & Richardson P.C.
`Telephone: (612) 337-2508
`Facsimile: (612) 288-9696
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`16
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