`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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`MYLAN PHARMACEUTICALS INC.,
`Petitioner
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`v.
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`GENENTECH, INC. AND CITY OF HOPE,
`Patent Owners
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`————————————————
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`Case IPR2016-00710
`Patent 6,331,415
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`————————————————
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`JOINT MOTION TO TERMINATE WITH RESPECT TO MYLAN
`PURSUANT TO 35 U.S.C. § 317(a)
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`Pursuant to 35 U.S.C. § 317(a), Petitioner Mylan Pharmaceuticals Inc.
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`(“Mylan” or “Petitioner”) and Patent Owners Genentech, Inc. (“Genentech”) and
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`City of Hope (collectively, “Patent Owners”) jointly request termination with
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`respect to Mylan in IPR2016-00710, which is directed to U.S. Patent No.
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`6,331,415 (the “’415 Patent”).
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`A.
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`STATEMENT OF PRECISE RELIEF REQUESTED
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`Pursuant to 35 U.S.C. § 317(a), Mylan and Patent Owners jointly request
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`termination with respect to Mylan in this inter partes review pursuant to a
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`settlement.
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`II.
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`STATEMENT OF FACTS
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`Mylan and Genentech have reached a settlement that resolves the dispute
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`between Mylan and Patent Owners with respect to this inter partes review
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`proceeding. A “Joint Request That Settlement Agreement Be Treated as Business
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`Confidential Information and Kept Separate Pursuant to 35 U.S.C. § 317(b) and 37
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`C.F.R. § 42.74” is being filed concurrently with this Joint Motion to Terminate
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`with Respect to Mylan in reference to sealing of the settlement agreement. See 35
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`U.S.C. § 317(b) (requiring parties to file agreements in writing with the Office).
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`The Board previously provided authorization to file this motion on March 13,
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`2017. (3/13/17 A. Kellogg email re IPR2016-00710 – Request to File Motion to
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`2
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`Terminate.)
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`A joint motion to terminate generally must “(1) include a brief explanation
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`as to why termination is appropriate; (2) identify all parties in any related litigation
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`involving the patents at issue; (3) identify any related proceedings currently before
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`the Office, and (4) discuss specifically the current status of each such related
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`litigation or proceeding with respect to each party to the litigation or proceeding.”
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`Heartland Tanning, Inc. v. Sunless, Inc., IPR2014-00018, Paper 26 at 2 (PTAB
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`Jul. 28, 2014).
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`(1) Brief Explanation. Termination with respect to Mylan is appropriate
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`because Mylan and Genentech have reached a settlement that resolves all disputes
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`between Mylan and Patent Owners with respect to this proceeding. A “Joint
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`Request That Settlement Agreement Be Treated as Business Confidential
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`Information and Kept Separate Pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. §
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`42.74” is being filed concurrently with this Joint Motion to Terminate with Respect
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`to Mylan in reference to sealing of the settlement agreement.
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`(2) Related Litigation. There is currently no litigation involving the
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`challenged patent.
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`(3)(4) Related Proceeding before the Patent Office and Its Status. On
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`January 3, 2017, Merck Sharp & Dohme Corp. (“Merck”) was joined as a party to
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`this inter partes review. (Paper 32 at 5.) The settlement between Mylan and
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`Genentech does not involve Merck, and this inter partes review would continue
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`3
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`between Merck and Patent Owners if this Motion to Terminate with Respect to
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`Mylan is granted.
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`III. ARGUMENT
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`The Board should terminate this inter partes review with respect to Mylan as
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`Mylan and Patent Owners jointly request, for the following reasons.
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`First, Mylan and Patent Owners have met the statutory requirement that they
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`file a “joint request” to terminate before the Office “has decided the merits of the
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`proceeding.” 35 U.S.C. § 317(a). Under section 317(a), an inter partes review
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`shall be terminated with respect to a party upon such joint request “unless the
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`Office has decided the merits of the proceeding before the request for termination
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`is filed.” There are no other preconditions of 35 U.S.C. § 317(a).
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`Second, Mylan and Genentech have reached a settlement that resolves all
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`disputes between Mylan and Patent Owners in this proceeding and as to the ’415
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`Patent. A true copy of the settlement agreement is filed concurrently herewith.
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`See Ex. 1089. Mylan and Genentech request that the settlement agreement be
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`treated as business confidential information, and be kept separate from the files of
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`this proceeding in accordance with 37 C.F.R. § 42.74(c). No other such
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`agreements, written or oral, exist between or among the parties.
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`Accordingly, Mylan and Patent Owners in the present proceeding jointly
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`certify that there are no other written or oral agreements or understandings,
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`including any collateral agreements, between them, including but not limited to
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`licenses, covenants not to sue, confidentiality agreements, payment agreements, or
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`other agreements of any kind, that are made in connection with or in contemplation
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`of, the termination of the instant proceeding.
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`IV. CONCLUSION
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`For the foregoing reasons, Mylan and Patent Owners respectfully request
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`termination with respect to Mylan in this inter partes review of the ’415 Patent.
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`Respectfully submitted,
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`/Deanne M. Mazzochi/
`Deanne M. Mazzochi (Reg. No. 50,158)
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`RAKOCZY MOLINO MAZZOCHI SIWIK LLP
`6 West Hubbard Street, Suite 500
`Chicago, Illinois 60654
`Tel: (312) 222-6305
`Fax: (312) 222-6325
`dmazzochi@rmmslegal.com
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`Counsel for Petitioner Mylan
`Pharmaceuticals Inc.
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`Dated: March 13, 2017
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`Respectfully submitted,
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`/David L. Cavanaugh /
`David L. Cavanaugh
`Reg. No. 36,476
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`David L. Cavanaugh
`WILMER CUTLER PICKERING HALE
` AND DORR LLP
`1875 Pennsylvania Avenue NW
`Washington, DC 20006
`David.Cavanaugh@wilmerhale.com
`Telephone: 202-663-6025
`Facsimile: 202-663-6363
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`Attorney for Genentech, Inc. & City of
`Hope
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`Dated: March 13, 2017
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), I hereby certify that on March 13, 2017, the
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`foregoing document is being served by E-mail by agreement of the parties to the
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`following counsel of record:
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`Heather M. Petruzzi
`Reg. No. 71,270
`Heather.Petruzzi@wilmerhale.com
`Adam R. Brausa
`Reg. No. 60,287
`abrausa@durietangri.com
`Jeffrey P. Kushan
`Reg. No. 43,401
`jkushan@sidley.com
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`Katherine A. Helm
`SIMPSON THACHER & BARTLETT
`LLP
`425 Lexington Avenue
`New York, NY 10017
`General Tel: (212) 455-2000
`Direct Tel: (212) 455-3647
`Facsimile: (212) 455-2502
`khelm@stblaw.com
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`David L. Cavanaugh
`Reg. No. 36,476
`WILMER CUTLER PICKERING HALE
` AND DORR LLP
`1875 Pennsylvania Avenue NW
`Washington, DC 20006
`David.Cavanaugh@wilmerhale.com
`Telephone: 202-663-6025
`Facsimile: 202-663-6363
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`Raymond N. Nimrod
`Reg. No. 31,987
`QUINN EMANUEL URQUHART &
` SULLIVAN, LLP
`51 Madison Ave., 22nd Floor
`New York, NY 10010
`raynimrod@quinnemanuel.com
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`Matthew A. Traupman
`Reg. No. 50,832
`matthewtraupman@quinnemanuel.com
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`Respectfully submitted,
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` /Deanne M. Mazzochi/
`Deanne M. Mazzochi (Reg. No. 50,158)
`dmazzochi@rmmslegal.com
`RAKOCZY MOLINO MAZZOCHI SIWIK LLP
`6 West Hubbard Street, Suite 500
`Chicago, Illinois 60654
`Telephone: (312) 222-6305
`Facsimile: (312) 222-6325
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`8
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`Dated: March 13, 2017
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