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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`ARGENTUM PHARMACEUTICALS LLC,
`APOTEX INC., AND APOTEX CORP.
`Petitioners
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`v.
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`ALCON RESEARCH, LTD.
`Patent Owner
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`Case IPR2016-005441
`Patent No. 8,791,154 B2
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`JOINT MOTION TO TERMINATE PROCEEDING
`PURSUANT TO 35 U.S.C. § 317
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`Pursuant to 35 U.S.C. § 317 and 37 C.F.R. § 42.74, and pursuant to the
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`authorization to file this motion provided by the Board via email on November 29,
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`2016, Petitioners Argentum Pharmaceuticals LLC (“Argentum”), Apotex Inc. and
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`Apotex Corp. (“Apotex”), and Patent Owner Alcon Research, Ltd. (“Alcon”)
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`jointly request the termination of this inter partes review of U.S. Patent No.
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`8,791,154.
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`1 Petitioners Apotex Inc. and Apotex Corp. from IPR2016-01640 have been joined
`as a Petitioner to this proceeding.
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`Case IPR2016-00544
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`U.S. Patent No. 8,791,154
`Argentum, Apotex and Alcon have settled their disputes, and have reached
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`agreements to terminate this inter partes review. The parties’ settlement
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`agreements have been made in writing, and a true and correct copies of the two
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`agreements are being filed concurrently herewith as Exhibits 2004 and 2005. The
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`parties are also filing concurrently herewith joint requests to treat the settlement
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`agreements as business confidential information and keep them separate from the
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`files of the IPR and the involved patent pursuant to 35 U.S.C. § 317(b) and 37
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`C.F.R. § 42.74(b).
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`Termination of this inter partes review is proper under 35 U.S.C. § 317(a)
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`because the Board has not yet decided the merits of the proceeding. Indeed, the
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`briefing and discovery process in this proceeding has not yet been completed.
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`Alcon has not yet filed a Patent Owner’s Response to the Petition nor has Alcon
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`filed a Motion to Amend.
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`No other party’s rights will be prejudiced by the termination of this inter
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`partes review. There is pending litigation relating to this patent between Alcon
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`and other parties in the following consolidated actions Alcon Research, Ltd. v.
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`Watson Laboratories, Inc., No. 1:15-cv-1159 (SLR) (SRF) (D. Del.) and Alcon
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`Research, Ltd. v. Lupin Ltd. and Lupin Pharmaceuticals, Inc., No. 1:16-cv-195
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`(SLR) (SRF) (D. Del.). This litigation is at an early stage, as the action is in the
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`U.S. Patent No. 8,791,154
`fact discovery period. None of these other parties’ rights will be impacted by the
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`termination of this inter partes review.
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`There is also a pending litigation involving Apotex and Alcon, Alcon
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`Research, Ltd. v. Apotex Inc. and Apotex Corp., No. 1:16-cv-906 (SLR) (D. Del.),
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`which will be dismissed by stipulation contemporaneously with the termination of
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`this inter partes review.
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`Other than the present IPR, there are no other proceedings pending before
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`the Patent and Trademark Office relating to the patent at issue in this inter partes
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`review.
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`Accordingly, Apotex and Alcon respectfully request that this inter partes
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`review proceeding be terminated as to Apotex.
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`Respectfully submitted,
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`Dated: November 30, 2016
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`/David M. Krinsky/
`David M. Krinsky
`Reg. No. 72,339
`Williams & Connolly LLP
`725 Twelfth Street, N.W.
`Washington, D.C. 20005
`Phone: 202-434-5338
`dkrinsky@wc.com
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`Lead Counsel for Patent Owner
`Alcon Research, Ltd.
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`/Teresa Stanek Rea (with permission)/
`Teresa Stanek Rea
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`Reg. No. 30,427
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`/Michael R. Houston (with permission)/
`Michael R. Houston
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`Reg. No. 58,486
`Foley & Lardner LLP
`3000 K St., N.W.
`Washington, D.C. 20008
`Phone: 312-832-4378
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`jmeara-PGP@foley.com
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`Lead Counsel for Petitioner
`Argentum Pharmaceuticals, LLC
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`Crowell & Moring LLP
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`Intellectual Property Group
`1001 Pennsylvania Ave., N.W.
`Washington, D.C. 20004-2595
`Phone: 202-624-2620
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`trea@crowell.com
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`Lead Counsel for Petitioners
`Apotex Inc. and Apotex Corp.
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`CERTIFICATE OF SERVICE (37 C.F.R. § 42.6(e))
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`The undersigned hereby certifies that the foregoing “JOINT MOTION TO
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`TERMINATE PROCEEDING PURSUANT TO 35 U.S.C. § 317” was served on
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`November 30, 2016, by filing this document through the PTAB E2E system as
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`well as delivering a copy via electronic mail to the following attorneys of record
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`for the Petitioners:
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`Michael R. Houston, Ph.D. (Reg. No. 58,486)
`Joseph P. Meara, Ph.D. (Reg. No. 44,932)
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`FOLEY & LARDNER LLP
`3000 K St. N.W., Suite 600
`Washington, D.C. 20008
`jmeara-PGP@foley.com
`Counsel for Petitioner Argentum Pharmaceuticals
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`Teresa Stanek Rea (Reg. No. 30,427)
`TRea@Crowell.com
`Telephone No.: (202) 624-2620
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`Deborah H. Yellin (Reg. No. 45,904)
`DYellin@Crowell.com
`Telephone No.: (202) 624-2947
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`Vincent J. Galluzzo (Reg. No. 67,830)
`VGalluzzo@Crowell.com
`Telephone No.: (202) 624-2781
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`CROWELL & MORING LLP
`Intellectual Property Group
`1001 Pennsylvania Avenue, N.W.
`Washington, DC 20004-2595
`Facsimile No.: (202) 628-5116
`Counsel for Petitioners Apotex Inc. and Apotex Corp.
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`Respectfully submitted,
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`/David M. Krinsky/
`David M. Krinsky
`Reg. No. 72,339
`Lead Counsel for Patent Owner
`Alcon Research, Ltd.
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`Dated: November 30, 2016