Paper No. __
`Filed: May 12, 2016
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`________________
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`RANBAXY INC.
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`Petitioner,
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`v.
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`JAZZ PHARMACEUTICALS, INC.
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`Patent Owner
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`________________
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`Case IPR2016-00024
`Patent 8,772,306
`________________
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`JOINT MOTION TO TERMINATE UNDER 35 U.S.C. § 317(a)
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`Filed: May 12, 2016
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`________________
`
`RANBAXY INC.
`
`Petitioner,
`
`v.
`
`JAZZ PHARMACEUTICALS, INC.
`
`Patent Owner
`
`________________
`
`Case IPR2016-00024
`Patent 8,772,306
`________________
`
`JOINT MOTION TO TERMINATE UNDER 35 U.S.C. § 317(a)
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`Joint Motion to Terminate
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`IPR2016-00024
` Patent 8,772,306
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`As authorized in the Patent Trial and Appeal Board’s (the “Board”) May 11,
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`2016 e-mail (Ex. 2020), and pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. §§ 42.72
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`and 42.74, Patent Owner and Petitioner jointly and respectfully request that the
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`inter partes review (“IPR”) of U.S. Patent No. 8,772,306 (the “’306 patent”) be
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`terminated.
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`1.
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`Brief Explanation As To Why Termination Is Appropriate
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`Petitioner filed its petition for IPR on October 7, 2015. (Paper 1.) On
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`October 16, 2015, the Board accorded the petition a filing date, and gave Patent
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`Owner until January 16, 2016 to file a Preliminary Response. (Paper 3.) On
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`January 15, 2016, Patent Owner timely filed a Preliminary Response. (Paper 8.)
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`On April 12, 2016, the Board issued its Decision on Institution, partially instituting
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`and partially denying institution of the challenged claims. (Paper 10.)
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`Shortly thereafter, the parties settled their dispute and executed a
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`confidential settlement agreement to terminate this proceeding and the parties’
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`related district court litigation: Jazz Pharmaceuticals, Inc. et al. v. Amneal
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`Pharmaceuticals, LLC. et al., 13-391-ES-JAD (D.N.J.). A Stipulation and Order
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`of Dismissal agreed to by the parties in the related district court litigation is being
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`filed concurrently in the district court.
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`Pursuant to 37 C.F.R. § 42.74(b), the parties’ confidential settlement
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`agreement is in writing, and a true and correct copy is being filed concurrently
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`2
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`IPR2016-00024
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`Joint Motion to Terminate
` Patent 8,772,306
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`herewith as Exhibit 2021.1 The parties are also filing concurrently herewith a joint
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`request to treat the confidential settlement agreement as business confidential
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`information and keep it separate from the files of the IPR and the involved patent
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`under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).
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`Termination of this proceeding is proper under 35 U.S.C. § 317(a) because
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`the proceeding is in its early stages and the Board has not yet decided the merits of
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`this proceeding. Further, no other Petitioners remain in this proceeding, and the
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`parties are unaware of any other matter before the USPTO that would be affected
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`by the outcome of this proceeding as explained below. The related litigations also
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`involve several patents other than the patent at issue in this IPR. Accordingly, the
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`parties respectfully request that the Board terminate the inter partes review of U.S.
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`Patent No. 8,772,306.
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`2.
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`Related Litigations Involving The Patent At Issue
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`The related litigations involving the patent at issue in this proceeding, as
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`well as the defendants in each case, are set forth below.
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`1 The settlement agreement is being filed electronically via the Patent Review
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`Processing System with access to the “Parties and Board Only.”
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`3
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`Joint Motion to Terminate
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`IPR2016-00024
` Patent 8,772,306
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`Case
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`Defendants
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`Jazz Pharmaceuticals, Inc. et al.
`v. Roxane Laboratories, Inc., 15-
`1360-ES-JAD (D.N.J.)
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`
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`Roxane Laboratories, Inc.
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`Jazz Pharmaceuticals, Inc. et al.
`v. Amneal Pharmaceuticals,
`LLC. et al., 13-391-ES-JAD
`(D.N.J.)
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`Amneal Pharmaceuticals, LLC
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`Par Pharmaceutical, Inc.
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`Watson Laboratories, Inc.
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`Lupin Ltd., Lupin Pharmaceuticals Inc., and
`Lupin Inc.
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`3.
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`Related Proceedings Currently Before The Office
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`The Board has denied institution of IPR of the ’306 patent in IPR2016-
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`00002. Another petition for IPR of the ’306 patent has been filed by a different
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`party, Amneal Pharmaceuticals LLC, but no decision on institution has been
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`rendered in that proceeding. See IPR2016-00546.
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`4.
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`Current Status Of The Related Litigations
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`
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`The litigations against all other defendants remain pending. Each litigation
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`involves multiple patents and no trial date has been set in any proceeding.
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`For the foregoing reasons, the parties jointly and respectfully request
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`termination of the present proceeding.
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`4
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`IPR2016-00024
` Patent 8,772,306
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`/S/ Joseph M. Reisman
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`Joseph M. Reisman (Reg. No. 43,878)
`Carol Pitzel Cruz (Reg. No. 61,224)
`Kerry S. Taylor (Reg. No. 43,974)
`KNOBBE, MARTENS, OLSON & BEAR,
`LLP
`2040 Main Street, 14th Floor
`Irvine, CA 92614
`General Tel: (949) 760-0404
`Fax: (949) 760-9502
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`Attorneys for Petitioner
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`Joint Motion to Terminate
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`Date: May 12, 2016
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`Respectfully submitted,
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`/S/ F. Dominic Cerrito
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`F. Dominic Cerrito (Reg. No. 38,100)
`Eric C. Stops (Reg. No. 51,163)
`Evangeline Shih (Reg. No. 50,170)
`Frank C. Calvosa (Reg. No. 69,064)
`QUINN EMANUEL URQUHART &
`SULLIVAN, LLP
`51 Madison Avenue, 22nd Floor
`New York, NY 10010
`General Tel: (212) 849-7000
`Fax: (212) 849-7100
`nickcerrito@quinnemanuel.com
`ericstops@quinnmemanuel.com
`evangelineshih@quinnemanuel.com
`frankcalvosa@quinnemanuel.com
`
`John V. Biernacki
`Reg. No. 40,511
`JONES DAY
`North Point
`901 Lakeside Avenue
`Cleveland, Ohio 44114
`General Tel: (216) 586-3939
`Direct Tel: (216) 586-7747
`Fax: (216) 579-0212
`jvbiernacki@jonesday.com
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`Attorneys for Jazz Pharmaceuticals
`Ireland Ltd. and Jazz Pharmaceuticals,
`Inc.
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`5
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