Paper No.
`Filed: August 9, 2016
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
`
`MYLAN PHARMACEUTICALS INC.
`Petitioner,
`
`v.
`
`SENJU PHARMACEUTICAL CO., LTD.
`Patent Owner.
`
`_____________________
`
`Case IPR2016-00626
`Patent No. 8,784,789
`
`JOINT MOTION TO TERMINATE PROCEEDING
`
`LEGAL02/36554612v1
`
`
`Filed: August 9, 2016
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
`
`MYLAN PHARMACEUTICALS INC.
`Petitioner,
`
`v.
`
`SENJU PHARMACEUTICAL CO., LTD.
`Patent Owner.
`
`_____________________
`
`Case IPR2016-00626
`Patent No. 8,784,789
`
`JOINT MOTION TO TERMINATE PROCEEDING
`
`LEGAL02/36554612v1
`
`
`
`Case IPR2016-00626
`Patent No. 8,784,789
`
`INTRODUCTION
`
`Petitioner Mylan Pharmaceuticals Inc. (“Mylan”) and Patent Owner Senju
`
`Pharmaceutical Co., Ltd. ( “Senju”) have entered into a settlement agreement that
`
`resolves all underlying disputes between the parties, including the inter partes
`
`review proceeding IPR2016-00626, against U.S. Patent No. 8,784,789, currently
`
`before the Board.
`
`The Board authorized the parties to file a joint motion to terminate this
`
`proceeding in an email sent to the parties on August 4, 2016. Accordingly, the
`
`parties jointly move to terminate this proceeding pursuant to 35 U.S.C. § 317 and
`
`37 C.F.R. § 42.74.
`
`The Board requested submission of a true copy of the parties’ agreement.
`
`The Parties consider the agreement Highly Confidential Business Information. In
`
`the August 4, 2016 e-mail, the Board also authorized filing of a motion to hold the
`
`agreement confidential pursuant to 37 C.F.R. § 42.74(c).
`
`THE SETTLEMENT AGREEMENT
`
`The parties have entered into a Confidential Settlement and License
`
`Agreement (the “Agreement”) settling their dispute involving three U.S. Patents,
`
`including U.S. Patent No. 8,784,789. The parties are filing a copy of the
`
`Agreement with this Joint Motion to Terminate Proceeding in IPR2016-00626, as
`
`2
`
`
`
`Case IPR2016-00626
`Patent No. 8,784,789
`
`Exhibit 1035. In addition, the parties have filed a request to treat the Agreement as
`
`Confidential Business Information under 37 C.F.R. § 42.74(c). As part of the
`
`Agreement, a Stipulated Dismissal has been entered in the related district court
`
`litigation. (Exhibit 1036). There are no collateral agreements or understandings
`
`made in connection with, or in contemplation of, the termination of the inter partes
`
`review.
`
`WHY TERMINATION IS APPROPRIATE
`
`Termination of this proceeding is appropriate at this stage in the proceeding
`
`in view of the Agreement. The Agreement ends all patent disputes between the
`
`parties, including this proceeding. Moreover, as shown above, the Agreement
`
`resulted in the dismissal of the underlying civil action.
`
`Both Congress and the federal courts have expressed a strong interest in
`
`encouraging settlement in litigation. See, e.g., Delta Air Lines, Inc. v. August, 450
`
`U.S. 346, 352 (1981) (“The purpose of [Fed. R. Civ. P.] 68 is to encourage the
`
`settlement of litigation.”); Bergh v. Dept. of Transp., 794 F.2d 1575, 1577 (Fed. Cir.
`
`1986) (“The law favors settlement of cases.”), cert. denied, 479 U.S. 950 (1986).
`
`The U.S. Court of Appeals for the Federal Circuit also places a particularly strong
`
`emphasis on settlement. See Cheyenne River Sioux Tribe v. U.S., 806 F.2d 1046,
`
`1050 (Fed. Cir. 1986) (noting that the law favors settlement to reduce antagonism
`
`and hostility between parties). Moreover, the Board generally expects that a
`
`3
`
`
`
`Case IPR2016-00626
`Patent No. 8,784,789
`
`proceeding will terminate after the filing of a settlement. See, e.g., Office Patent
`
`Trial Practice Guide, 77 Fed. Reg. 48,756, 46,768 (Aug. 14, 2012).
`
`Maintaining this proceeding after Petitioner Mylan’s settlement with Patent
`
`Owner Senju would discourage future settlements by removing a primary
`
`motivation for settlement: eliminating litigation risk by resolving the parties’
`
`disputes and ending the pending proceedings between them. For patent owners,
`
`litigation risks include the potential for an invalidity ruling against their patents. If
`
`a patent owner knows that an inter partes review will likely continue regardless of
`
`settlement, it creates a strong disincentive for the patent owner to settle.
`
`CONCLUSION
`
`For the foregoing reasons, the Petitioner Mylan and Patent Owner Senju
`
`jointly and respectfully request that the Board terminate this proceeding in its
`
`entirety.
`
`RESPECTFULLY SUBMITTED,
`
`Date: August 9, 2016
`
`/Jitendra Malik/
`
`Jitendra Malik
`Reg. No. 55823
`Alston & Bird LLP
`4721 Emperor Boulevard, Suite 400
`Durham, North Carolina 27703
`
`Lance Soderstrom
`Reg. No. 65405
`
`4
`
`
`
`Case IPR2016-00626
`Patent No. 8,784,789
`
`Alston & Bird LLP
`90 Park Avenue, 15th Floor
`New York, New York 10016-1387
`
`H. James Abe
`Reg. No. 61182
`Alston & Bird LLP
`333 South Hope Street, 16th Floor
`Los Angeles, CA 90071
`
`Joseph M. Janusz
`Reg. No. 70396
`Alston & Bird LLP
`101 S. Tryon Street, Suite 4000
`Charlotte, NC 28205
`
`Attorneys for Petitioner
`Mylan Pharmaceuticals Inc.
`
`Date: August 9, 2016
`
`/Bryan Diner/
`
`Bryan C. Diner, Lead Counsel
`Reg. No. 32,409
`Justin J. Hasford, Back-up Counsel
`Reg. No. 62,180
`Joshua L. Goldberg, Back-up Counsel
`Reg. No. 59,369
`Finnegan, Henderson, Farabow,
`Garrett & Dunner, L.L.P.
`901 New York Ave. NW
`Washington, DC
`
`Attorneys for Patent Owner
`Senju Pharmaceutical Co., Ltd.
`
`5
`
`
`
`CERTIFICATION OF SERVICE
`
`The undersigned certifies a copy of the foregoing JOINT MOTION TO
`
`TERMINATE PROCEEDING was served on August 9, 2016 via electronic mail
`
`directed to the counsel of record for the Patent Owner at the following:
`
`Bryan C. Diner
`Bryan.Diner@finnegan.com
`
`Justin J. Hasford
`Justin.Hasford@finnegan.com
`
`Joshua L. Goldberg
`Joshua.Goldberg@finnegan.com
`
`Respectfully submitted,
`
`Alston & Bird LLP
`
`By: /Jitendra Malik/
`
`Jitendra Malik, Ph.D.
`Reg. No. 55823
`Alston & Bird LLP
`4721 Emperor Blvd., Suite 400
`Durham, NC 27703-8580
`jitty.malik@alston.com
`
`Lance Soderstrom
`Reg. No. 65405
`Alston & Bird LLP
`90 Park Avenue, 15th Floor
`New York, New York 10016-1387
`lance.soderstrom@alston.com
`
`H. James Abe
`
`
`
`Reg. No. 61182
`Alston & Bird LLP
`333 South Hope Street, 16th Floor
`Los Angeles, CA 90071
`james.abe@alston.com
`
`Joseph M. Janusz
`Reg. No. 70396
`Alston & Bird LLP
`101 S. Tryon Street, Suite 4000
`Charlotte, NC 28205
`joe.janusz@alston.com
`
`Attorneys for Petitioner
`Mylan Pharmaceuticals Inc.
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