Filed on behalf of: Par Pharmaceutical, Inc.
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`Entered: March 23, 2016
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________________
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`PAR PHARMACEUTICAL, INC.
`Petitioner
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`v.
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`NOVARTIS AG.
`Patent Owner
`_______________________
`
`Case IPR2016-00075
`U.S. Patent No. 7,297,703
`_______________________
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`Before KAREN HILASKI, Trial Paralegal.
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`
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`JOINT MOTION TO TERMINATE PROCEEDINGS
`PURSUANT TO 37 C.F.R. § 42.74
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`Entered: March 23, 2016
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________________
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`PAR PHARMACEUTICAL, INC.
`Petitioner
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`v.
`
`NOVARTIS AG.
`Patent Owner
`_______________________
`
`Case IPR2016-00075
`U.S. Patent No. 7,297,703
`_______________________
`
`Before KAREN HILASKI, Trial Paralegal.
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`
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`JOINT MOTION TO TERMINATE PROCEEDINGS
`PURSUANT TO 37 C.F.R. § 42.74
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`Case IPR2016-00075
`U.S. Patent No. 7,297,703
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`Pursuant to 37 C.F.R. § 42.74 and the Patent Trial and Appeal Board’s
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`March 9, 2016 email correspondence authorizing filing of the present motion,
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`Petitioner Par Pharmaceutical, Inc. (“Petitioner”) and Patent Owner Novartis AG
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`(“Patent Owner”) (collectively, “the Parties”) jointly request termination of the
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`inter partes reviews of U.S. Patent No. 7,741,338 (“’338 patent”), Case No.
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`IPR2016-00074, and U.S. Patent No. 7,297,703 (“’703 patent”), Case No.
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`IPR2016-00075, without prejudice to either party.
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`The Parties have resolved their dispute involving the ’338 patent and
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`the ’703 patent in the related district court litigation. More specifically, the Parties
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`have stipulated to dismiss, and the court has dismissed with prejudice, all claims,
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`defenses, and counterclaims concerning the ’338 patent and the ’703 patent in the
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`related district court litigation (Novartis Pharm. Corp. et al. v. Par Pharm., Inc.,
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`Nos. 1:14-cv-1494-RGA, 1:15-cv-78-RGA (D. Del.). The resolution of the related
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`district court litigation did not involve resolution of these related IPR proceedings.
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`Petitioner will not further participate in these IPR proceedings (if instituted), even
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`if they are not terminated.
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`I.
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`RELATED PROCEEDINGS
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`The following related IPR proceedings involving the ’338 patent and the
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`’703 patent are currently before the Board:
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`1
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`
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`Case IPR2016-00075
`U.S. Patent No. 7,297,703
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`U.S. Patent No.
`7,741,338
`7,297,703
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`IPR Case Number
`IPR2016-00074
`IPR2016-00075
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`The claims, defenses, and counterclaims concerning the ’338 patent and the
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`’703patent are no longer pending between Patent Owner and Petitioner in the
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`related district court litigation identified below:
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`District Court Case
`Novartis Pharm. Corp. et al. v. Par Pharm., Inc.,
`No. 1:14-cv-1494-RGA (D. Del.)
`Novartis Pharm. Corp. et al. v. Par Pharm., Inc.,
`No. 1:15-cv-78-RGA (D. Del.)
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`Thus, there are no proceedings related to the ’338 patent and the ’703 patent
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`between the Parties pending before the district court.
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`II. BRIEF EXPLANATION AS TO WHY TERMINATION IS
`APPROPRIATE
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`Termination of the present IPRs is appropriate as the Board has not yet
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`instituted inter partes review and Petitioner will not further participate in these IPR
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`proceedings, even if they are instituted.
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`Notably, no dispute remains between the Patent Owner and the Petitioner
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`involving the ’338 patent and the ’703 patent:
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`i.
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`the Parties have agreed to jointly request termination of the IPRs filed
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`2
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`Case IPR2016-00075
`U.S. Patent No. 7,297,703
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`concerning the ’338 patent and the ’703 patent; and
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`ii.
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`all of the litigation between the Parties involving the same patents has
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`been dismissed with prejudice.
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`Because the IPRs have not been instituted and are therefore at a very early
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`stage, concluding these proceedings promotes the Congressional goal to establish a
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`more efficient and streamlined patent system that, inter alia, limits unnecessary
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`and counterproductive litigation costs. See “Changes to Implement Inter Partes
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`Review Proceedings, Post-Grant Review Proceedings, and Transitional Program
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`for Covered Business Method Patents,” Final Rule, 77 Fed. Reg. 48680 (Aug. 14,
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`2012). By permitting termination of IPR proceedings as to all Parties upon
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`resolution of all disputes related to these patents, the PTAB provides certainty as to
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`the outcome of these proceedings. Terminating IPRs upon resolution of disputes
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`fosters an environment that promotes resolution or settlement, thereby creating a
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`timely, cost-effective alternative to litigation.
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`In contrast, maintaining these proceedings (if they were to be instituted) in
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`the absence of Petitioner would effectively pit the Patent Owner against the Board,
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`a scenario never intended by the legislators who enacted the American Invents Act
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`(AIA). In enacting the AIA, Congress did not intend that the PTAB would step
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`into the shoes of the Petitioner or assume an ex parte examination role. Instead,
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`The Leahy-Smith America Invents Act replaced inter partes reexamination with
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`3
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`Case IPR2016-00075
`U.S. Patent No. 7,297,703
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`review proceedings and entrusted such matters to the Board rather than the
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`examining corps. Commenting on this significant change to USPTO practice,
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`Senator Kyl noted that the new procedures were intended to be strictly adjudicative
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`in nature, where “the petitioner, rather than the Office, bears the burden of showing
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`unpatentability.” 157 Cong. Rec. S1375 (daily ed. Mar. 8, 2011). As these
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`changes were taken from the Senator’s prior bill from the 110th Congress, S. 3600,
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`he cited with approval his comments in support of that prior legislation:
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`The bill uses an oppositional model, which is favored by PTO as
`allowing speedier adjudication of claims. Under a reexam system, the
`burden is always on PTO to show that a claim is not patentable.
`Every time that new information is presented, PTO must reassess
`whether its burden has been met. This model has proven unworkable
`in inter partes reexam, in which multiple parties can present
`information to PTO at various stages of the proceeding, and which
`system has experienced interminable delays. Under an oppositional
`system, by contrast, the burden is always on the petitioner to show
`that a claim is not patentable. Both parties present their evidence to
`the PTO, which then simply decides whether the petitioner has met his
`burden.
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`154 Cong. Rec. S9987 (daily ed. Sept. 27, 2008).
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`Senator Kyl’s comments make clear that the new review proceedings were
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`not intended to devolve into the prior “unworkable” system of reexamination in the
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`event no petitioner was left. The Board’s role was intended to be that of an
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`4
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`
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`Case IPR2016-00075
`U.S. Patent No. 7,297,703
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`adjudicator resolving a dispute between litigants, not an examiner. See, e.g.,
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`Statement of Sen. Kyl, 157 Cong. Rec. S1376 (daily ed. Mar. 8, 2011) (“Currently,
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`inter partes reexaminations usually last for 3 to 5 years. . . . Among the reforms
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`that are expected to expedite these proceedings are the shift from an examinational
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`to an adjudicative model, and the elevated threshold for instituting proceedings.”).
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`In the absence of any dispute between the Parties related to these patents and the
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`absence of any petitioner in the IPR proceedings, the Board’s role has been fully
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`discharged and termination of the proceedings is justified.
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`III. STATUS OF RELATED LITIGATION
`As noted above, the Parties have stipulated to dismiss, and the court has
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`dismissed with prejudice, all claims, defenses, and counterclaims concerning
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`the ’338 patent and the ’703 patent in the related district court litigation. There are
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`no other proceedings between Patent Owner and Petitioner related to these patents.
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`IV. TREAT AGREEMENT AS BUSINESS CONFIDENTIAL INFOR-
`MATION
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`The Parties acknowledge under 37 C.F.R. § 42.74(b) and with appreciation
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`the Board’s March 9, 2016 email correspondence that the agreement filed as
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`exhibits in the proceedings (IPR2016-00074 (Ex. 1010), IPR2016-00075 (Ex.
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`1016)) be treated as business confidential. The Parties have concurrently
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`submitted a Joint Request to File Agreement as Business Confidential Information
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`5
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`Case IPR2016-00075
`U.S. Patent No. 7,297,703
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`under 37 C.F.R. § 42.74(c) in IPR2016-00074 and IPR2016-00075.
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`V. CONCLUSION
`For the foregoing reasons, the Parties jointly and respectfully request
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`termination of the present proceedings, Case Nos. IPR2016-00074 and IPR2016-
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`00075, without prejudice to either party.
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`Dated: March 23, 2016
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`Respectfully submitted,
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`By:
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`/Daniel G. Brown/
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`Daniel G. Brown (Reg. No. 54,005)
`Latham & Watkins LLP
`885 Third Avenue
`New York, NY 10022-4834
`212-906-1200; 212-751-4864 (Fax)
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`Counsel for Petitioner
`Par Pharmaceutical, Inc.
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`By:
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`/Nicholas N. Kallas/
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`Nicholas N. Kallas (Reg. No. 32,530)
`Fitzpatrick, Cella, Harper & Scinto
`1290 Avenue of the Americas
`New York, NY 10104-3800
`212-218-2100; 212-218-2200 (Fax)
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`Counsel for Patent Owner
`Novartis AG
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`6
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`Case IPR2016-00075
`U.S. Patent No. 7,297,703
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), I certify that on this 23rd day of March,
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`2016, a true and correct copy of the foregoing JOINT MOTION TO
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`TERMINATE PROCEEDINGS PURSUANT TO 37 C.F.R. § 42.74 was served
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`by electronic mail on Patent Owner’s lead and backup counsel at the following
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`email address:
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`Nicholas N. Kallas (Reg. No. 31,530)
`Raymond R. Mandra (Reg. No. 34,382)
`Fitzpatrick, Cella, Harper & Scinto
`1290 Avenue of the Americas
`New York, NY 10104-3800
`ZortressAfinitorIPR@fchs.com
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`By: /Daniel G. Brown/
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`Daniel G. Brown (Reg. No. 54,005)
`Latham & Watkins LLP
`885 Third Avenue
`New York, NY 10022-4834
`212-906-1200; 212-751-4864 (Fax)
`
`Counsel for Petitioner
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