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UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`ARGENTUM PHARMACEUTICALS LLC,
`APOTEX INC., AND APOTEX CORP.
`Petitioners
`
`v.
`
`ALCON RESEARCH, LTD.
`Patent Owner
`
`
`Case IPR2016-005441
`Patent No. 8,791,154 B2
`
`
`JOINT MOTION TO TERMINATE PROCEEDING
`PURSUANT TO 35 U.S.C. § 317
`
`Pursuant to 35 U.S.C. § 317 and 37 C.F.R. § 42.74, and pursuant to the
`
`
`
`
`
`authorization to file this motion provided by the Board via email on November 29,
`
`2016, Petitioners Argentum Pharmaceuticals LLC (“Argentum”), Apotex Inc. and
`
`Apotex Corp. (“Apotex”), and Patent Owner Alcon Research, Ltd. (“Alcon”)
`
`jointly request the termination of this inter partes review of U.S. Patent No.
`
`8,791,154.
`
`
`1 Petitioners Apotex Inc. and Apotex Corp. from IPR2016-01640 have been joined
`as a Petitioner to this proceeding.
`
`

`
`
`Case IPR2016-00544
`
`U.S. Patent No. 8,791,154
`Argentum, Apotex and Alcon have settled their disputes, and have reached
`
`
`
`
`
`
`agreements to terminate this inter partes review. The parties’ settlement
`
`agreements have been made in writing, and a true and correct copies of the two
`
`agreements are being filed concurrently herewith as Exhibits 2004 and 2005. The
`
`parties are also filing concurrently herewith joint requests to treat the settlement
`
`agreements as business confidential information and keep them separate from the
`
`files of the IPR and the involved patent pursuant to 35 U.S.C. § 317(b) and 37
`
`C.F.R. § 42.74(b).
`
`Termination of this inter partes review is proper under 35 U.S.C. § 317(a)
`
`because the Board has not yet decided the merits of the proceeding. Indeed, the
`
`briefing and discovery process in this proceeding has not yet been completed.
`
`Alcon has not yet filed a Patent Owner’s Response to the Petition nor has Alcon
`
`filed a Motion to Amend.
`
`No other party’s rights will be prejudiced by the termination of this inter
`
`partes review. There is pending litigation relating to this patent between Alcon
`
`and other parties in the following consolidated actions Alcon Research, Ltd. v.
`
`Watson Laboratories, Inc., No. 1:15-cv-1159 (SLR) (SRF) (D. Del.) and Alcon
`
`Research, Ltd. v. Lupin Ltd. and Lupin Pharmaceuticals, Inc., No. 1:16-cv-195
`
`(SLR) (SRF) (D. Del.). This litigation is at an early stage, as the action is in the
`
`
`
`2
`
`

`
`
`Case IPR2016-00544
`
`U.S. Patent No. 8,791,154
`fact discovery period. None of these other parties’ rights will be impacted by the
`
`
`
`
`
`
`termination of this inter partes review.
`
`There is also a pending litigation involving Apotex and Alcon, Alcon
`
`Research, Ltd. v. Apotex Inc. and Apotex Corp., No. 1:16-cv-906 (SLR) (D. Del.),
`
`which will be dismissed by stipulation contemporaneously with the termination of
`
`this inter partes review.
`
`Other than the present IPR, there are no other proceedings pending before
`
`the Patent and Trademark Office relating to the patent at issue in this inter partes
`
`review.
`
`Accordingly, Apotex and Alcon respectfully request that this inter partes
`
`review proceeding be terminated as to Apotex.
`
`Respectfully submitted,
`
`
`
`Dated: November 30, 2016
`
`/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
`
`Lead Counsel for Patent Owner
`Alcon Research, Ltd.
`
`
`/Teresa Stanek Rea (with permission)/
`Teresa Stanek Rea
`
`
`
`Reg. No. 30,427
`
`/Michael R. Houston (with permission)/
`Michael R. Houston
`
`
`
`Reg. No. 58,486
`Foley & Lardner LLP
`3000 K St., N.W.
`Washington, D.C. 20008
`Phone: 312-832-4378
`
`jmeara-PGP@foley.com
`
`Lead Counsel for Petitioner
`Argentum Pharmaceuticals, LLC
`
`
`
`
`
`
`
`
`
`
`3
`
`

`
`
`
`
`
`
`
`
`
`Case IPR2016-00544
`U.S. Patent No. 8,791,154
`Crowell & Moring LLP
`
`Intellectual Property Group
`1001 Pennsylvania Ave., N.W.
`Washington, D.C. 20004-2595
`Phone: 202-624-2620
`
`
`trea@crowell.com
`
`Lead Counsel for Petitioners
`Apotex Inc. and Apotex Corp.
`
`
`
`
`
`
`
`
`
`
`
`
`4
`
`

`
`
`Case IPR2016-00544
`
`U.S. Patent No. 8,791,154
`CERTIFICATE OF SERVICE (37 C.F.R. § 42.6(e))
`
`
`
`
`
`
`The undersigned hereby certifies that the foregoing “JOINT MOTION TO
`
`TERMINATE PROCEEDING PURSUANT TO 35 U.S.C. § 317” was served on
`
`November 30, 2016, by filing this document through the PTAB E2E system as
`
`well as delivering a copy via electronic mail to the following attorneys of record
`
`for the Petitioners:
`
`Michael R. Houston, Ph.D. (Reg. No. 58,486)
`Joseph P. Meara, Ph.D. (Reg. No. 44,932)
`
`FOLEY & LARDNER LLP
`3000 K St. N.W., Suite 600
`Washington, D.C. 20008
`jmeara-PGP@foley.com
`Counsel for Petitioner Argentum Pharmaceuticals
`
`
`
`Teresa Stanek Rea (Reg. No. 30,427)
`TRea@Crowell.com
`Telephone No.: (202) 624-2620
`
`Deborah H. Yellin (Reg. No. 45,904)
`DYellin@Crowell.com
`Telephone No.: (202) 624-2947
`
`Vincent J. Galluzzo (Reg. No. 67,830)
`VGalluzzo@Crowell.com
`Telephone No.: (202) 624-2781
`
`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.
`
`
`
`5
`
`

`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`/David M. Krinsky/
`David M. Krinsky
`Reg. No. 72,339
`Lead Counsel for Patent Owner
`Alcon Research, Ltd.
`
`6
`
`Case IPR2016-00544
`U.S. Patent No. 8,791,154
`
`
`Dated: November 30, 2016

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