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Filed: January 9, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`————————————————
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`————————————————
`
`MYLAN PHARMACEUTICALS INC.
`
`Petitioners,
`
`v.
`
`ASTRAZENECA AB.
`
`Patent Owner.
`
`————————————————
`
`Case No. IPR2016-01316 (6,774,122)
`Case No. IPR2016-01324 (7,456,160)
`Case No. IPR2016-01325 (8,329,680)
`Case No. IPR2016-01326 (8,466,139)1
`————————————————
`
`JOINT MOTION TO TERMINATE PROCEEDINGS
`UNDER 35 U.SC. § 317 (a)
`
`Pursuant to 35 U.S.C. § 317(a), 37 C.F.R. §§ 42.72 and 42.74, Petitioner
`
`Mylan Pharmaceuticals Inc. (“Mylan”) and Patent Owner AstraZeneca AB
`
`
`1 A word-for-word identical Motion is being filed in each proceeding.
`
`1
`
`

`
`
`
`(“AstraZeneca”) jointly request termination of IPR2016-01316, IPR2016-01324,
`
`IPR2016-01325, and IPR2016-01326.2
`
`The Board authorized this Motion by email on January 6, 2017.
`
`Mylan and AstraZeneca have reached a settlement agreement that resolves
`
`all pending disputes between Mylan and AstraZeneca as to the subject patents,
`
`including the subject IPRs. Pursuant to 37 C.F.R. § 42.74(b), the parties’
`
`settlement agreements are in writing, and a true and correct copy is filed
`
`concurrently with this Motion. Pursuant to 37 C.F.R. § 42.74(c), the parties
`
`request that the settlement agreements be treated as business confidential
`
`information and be kept separate from the files of an involved patent or
`
`application.
`
`The parties believe that termination of this proceeding is proper under 35
`
`U.S.C. § 317(a) because the Board has not yet decided the merits of the
`
`proceedings as to IPR2016-01316, IPR2016-01324 and IPR2016-01326 and, with
`
`respect to IPR2016-01325, Petitioner’s time period to seek reconsideration of the
`
`decision on institution has not yet expired. Termination of these proceedings
`
`avoids both the Board and the parties from spending unnecessary resources.
`
`
`2 The Board declined to institute IPR2016-01325 on December 14, 2016. The
`
`Board has yet to issue a decision in the remaining IPRs.
`
`2
`
`

`
`
`
`Status of Pending Patent Office Proceedings
`
`The parties are unaware of any other matter pending before the Office that
`
`would be affected by the outcome of this proceeding. Specifically, the parties are
`
`unaware of any pending, related inter partes review proceedings.
`
`Status of Pending District Court Actions
`
`With respect to the related district court actions:
`
`(1) The following litigations involving Mylan defendants have been
`
`dismissed:
`
` AstraZeneca Pharms. LP et al. v. Mylan Pharms. Inc. et al., No. 15–7009
`
`(D.N.J.) (consolidated with 15–6039) (consent judgment entered as ECF No.
`
`26);
`
` AstraZeneca Pharms. LP et al. v. Mylan Pharms. Inc. et al., No. 15–183
`
`(N.D.W. Va.) (consent judgment entered as ECF No. 38);
`
` AstraZeneca Pharms. LP et al. v. Mylan Institutional LLC, No. 16–4612
`
`(D.N.J.) (consolidated with 15–6039) (consent judgment entered as ECF No.
`
`21); and
`
` AstraZeneca Pharms. LP et al. v. Mylan Institutional LLC, No. 16–669 (D.
`
`Del.) (see ECF No. 7).
`
`(2) The following litigations involving non-Mylan defendants have been
`
`dismissed:
`
`3
`
`

`
`
`
` AstraZeneca Pharms. LP et al. v. Sandoz Inc., No. 14–3547 (D.N.J.) (see
`
`ECF No. 316);
`
` AstraZeneca Pharms. LP et al. v. Sagent Pharms., Inc., No. 14–5539
`
`(D.N.J.) (consolidated as 14–3547) (see ECF No. 347);
`
` AstraZeneca Pharms. LP et al. v. Glenmark Pharms. Inc., USA, No. 15–615
`
`(D.N.J.) (consolidated as 14–3547) (see ECF No. 348);
`
` AstraZeneca Pharms. LP et al. v. Teva Parenteral Medicines Inc. et al., No.
`
`10–018 (D. Del.) (see ECF No. 35);
`
` AstraZeneca Pharms. LP et al. v. Sagent Pharms., Inc., No. 14–7358 (N.D.
`
`Ill.) (see ECF No. 14); and
`
` AstraZeneca Pharms. LP et al. v. InnoPharma, Inc., No. 16–894 (D.N.J.)
`
`(see ECF No. 17).
`
` (3) The following litigations involving Teva and InnoPharma defendants
`
`remain pending:
`
` AstraZeneca Pharms. LP. et al. v. Agila Specialties, Inc. et al., No. 15–6039
`
`(D.N.J.) (lead case);3
`
`
`3 All Mylan entities (i.e., Agila Specialties, Inc., Onco Therapies Ltd., Mylan
`
`Laboratories Ltd., Mylan Inc., Mylan Pharmaceuticals Inc., and Mylan Institutional
`
`4
`
`

`
`
`
` AstraZeneca Pharms. LP et al. v. Teva Pharms. USA, Inc., No. 15–7889
`
`(D.N.J.) (consolidated with 15–6039); and
`
` AstraZeneca Pharms. LP et al. v. InnoPharma Licensing LLC, No. 16–1962
`
`(D.N.J.) (consolidated with 15–6039).
`
`
`
`Accordingly, the parties respectfully request termination of this proceeding.
`
`
`
`Dated: January 9, 2017
`
`
`
`/Brandon M. White/
`
`
`
`Brandon M. White
`Reg. No. 52,354
`Perkins Coie LLP
`700 13th St., NW, Suite 600
`Washington, D.C. 20005
`Telephone: (202) 654-6206
`E-mail: bmwhite@perkinscoie.com
`
`Attorney for Mylan Pharmaceuticals Inc.
`
`
`LLC) have been dismissed from this action (see ECF No. 197). This action
`
`remains pending as it is the lead case for the Teva and InnoPharma litigations.
`
`5
`
`

`
`
`
`CERTIFICATE OF SERVICE
`The undersigned hereby certifies that the foregoing Joint Motion to
`
`Terminate Proceedings Under 35 U.SC. § 317(a) was served electronically via
`
`email as follows:
`
`Filko Prugo
`fprugo@omm.com
`
`Caitlin Hogan
`chogan@omm.com
`
`
`
`Dated: January 9, 2017
`
`Marc Pensabene
`mpensabene@omm.com
`
`John Murray
`kmurray2@omm.com
`
`
`
`/Brandon M. White/
`Brandon M. White
`
`Attorney for Mylan Pharmaceuticals Inc.
`
`
`
`
`
`1

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