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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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`MERCK SHARP & DOHME CORP.,
`Petitioner,
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`v.
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`GENENTECH, INC. AND CITY OF HOPE,
`Patent Owners.
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`Case IPR2016-00710
`Patent 6,331,415
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`JOINT MOTION TO TERMINATE PURSUANT TO 35 U.S.C. § 317(a)
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`Pursuant to 35 U.S.C. § 317(a), Petitioner Merck Sharp & Dohme Corp.
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`(“Petitioner”) and Patent Owners Genentech, Inc. and City of Hope (collectively,
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`“Patent Owners”) jointly request termination of IPR2016-00710, which is directed
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`to U.S. Patent No. 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), Petitioner and Patent Owners jointly request
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`termination in this inter partes review pursuant to a settlement.
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`II.
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`STATEMENT OF FACTS
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`Petitioner and Patent Owners have reached a settlement that resolves their
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`dispute with respect to this inter partes review proceeding. A “Joint Request That
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`Settlement Agreement Be Treated as Business Confidential Information and Kept
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`Separate Pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74” is being filed
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`concurrently with this Joint Motion to Terminate in reference to sealing of the
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`settlement agreement. See 35 U.S.C. § 317(b) (requiring parties to file agreements
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`in writing with the Office). The Board previously provided authorization to file
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`this motion on May 4, 2017. (5/4/17 A. Kellogg e-mail re IPR2016-2017- Request
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`to File Motion to 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 is appropriate because the parties have
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`reached a settlement that resolves all disputes between them with respect to this
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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 in
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`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. The parties’ settlement also resolves the currently pending
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`litigation between the parties relating to U.S. Patent No. 7,923,221, which is a
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`continuation of the ’415 patent at issue in this proceeding.
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`(3)(4) Related Proceeding before the Patent Office and Its Status. There are
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`no other currently pending proceedings before the Patent Office involving the
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`challenged patent.
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`III. ARGUMENT
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`The Board should terminate this inter partes review as the parties jointly
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`request for the following reasons.
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`First, Petitioner and Patent Owners have met the statutory requirement that
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`they file a “joint request” to terminate before the Office “has decided the merits of
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`the 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, Petitioner and Patent Owners have reached a settlement that
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`resolves all disputes between them in this proceeding and as to the ’415 Patent. A
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`true copy of the settlement agreement is filed concurrently herewith. See Ex. 1151.
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`The parties request that the settlement agreement be treated as business
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`confidential information, and be kept separate from the files of this proceeding in
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`accordance with 37 C.F.R. § 42.74(c). No other such agreements, written or oral,
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`exist between or among the parties.
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`Accordingly, Petitioner 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, Petitioner and Patent Owners respectfully request
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`termination of this inter partes review of the ’415 Patent.
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`Respectfully submitted,
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`/Raymond N. Nimrod/
`Raymond N. Nimrod (Reg. No. 31,987)
`QUINN EMANUEL URQUHART
` & SULLIVAN LLP
`51 Madison Avenue, 22nd Floor
`New York, NY 10010
`Tel: (212) 849-7000
`Fax: (212) 849-7100
`raynimrod@quinnemanuel.com
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`Counsel for Petitioner Merck Sharp &
`Dohme Corp.
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`Respectfully submitted,
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`/David L. Cavanaugh/
`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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`Counsel for Genentech, Inc. & City of
`Hope
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`Dated: May 4, 2017
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`Dated: May 4, 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 May 4, 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 for the Patent Owners:
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`Michael R. Fleming
`mfleming@irell.com
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`David F. McGowan
`dmcgowan@durietangri.com
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`Joseph M. Lipner
`jlipner@irell.com
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`Daralyn J. Durie
`ddurie@durietangri.com
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`Respectfully submitted,
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` /Raymond N. Nimrod/
`Raymond N. Nimrod (Reg. No. 31,987)
`QUINN EMANUEL URQUHART
` & SULLIVAN LLP
`51 Madison Avenue, 22nd Floor
`New York, NY 10010
`Tel: (212) 849-7000
`Fax: (212) 849-7100
`raynimrod@quinnemanuel.com
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`5
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`David L. Cavanaugh
`David.Cavanaugh@wilmerhale.com
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`Robert J. Gunther, Jr.
`Robert.Gunther@wilmerhale.com
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`Heather M. Petruzzi
`Heather.Petruzzi@wilmerhale.com
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`Owen K. Allen
`Owen.Allen@wilmerhale.com
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`Adam R. Brausa
`abrausa@durietangri.com
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`David I. Gindler
`dgindler@irell.com
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`Dated: May 4, 2017
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