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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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`MYLAN PHARMACEUTICALS INC.
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`Petitioners,
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`v.
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`ASTRAZENECA AB.
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`Patent Owner.
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`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
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`JOINT MOTION TO TERMINATE PROCEEDINGS
`UNDER 35 U.SC. § 317 (a)
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`Pursuant to 35 U.S.C. § 317(a), 37 C.F.R. §§ 42.72 and 42.74, Petitioner
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`Mylan Pharmaceuticals Inc. (“Mylan”) and Patent Owner AstraZeneca AB
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`1 A word-for-word identical Motion is being filed in each proceeding.
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`1
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`(“AstraZeneca”) jointly request termination of IPR2016-01316, IPR2016-01324,
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`IPR2016-01325, and IPR2016-01326.2
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`The Board authorized this Motion by email on January 6, 2017.
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`Mylan and AstraZeneca have reached a settlement agreement that resolves
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`all pending disputes between Mylan and AstraZeneca as to the subject patents,
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`including the subject IPRs. Pursuant to 37 C.F.R. § 42.74(b), the parties’
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`settlement agreements are in writing, and a true and correct copy is filed
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`concurrently with this Motion. Pursuant to 37 C.F.R. § 42.74(c), the parties
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`request that the settlement agreements be treated as business confidential
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`information and be kept separate from the files of an involved patent or
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`application.
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`The parties believe that termination of this proceeding is proper under 35
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`U.S.C. § 317(a) because the Board has not yet decided the merits of the
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`proceedings as to IPR2016-01316, IPR2016-01324 and IPR2016-01326 and, with
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`respect to IPR2016-01325, Petitioner’s time period to seek reconsideration of the
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`decision on institution has not yet expired. Termination of these proceedings
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`avoids both the Board and the parties from spending unnecessary resources.
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`2 The Board declined to institute IPR2016-01325 on December 14, 2016. The
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`Board has yet to issue a decision in the remaining IPRs.
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`2
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`Status of Pending Patent Office Proceedings
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`The parties are unaware of any other matter pending before the Office that
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`would be affected by the outcome of this proceeding. Specifically, the parties are
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`unaware of any pending, related inter partes review proceedings.
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`Status of Pending District Court Actions
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`With respect to the related district court actions:
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`(1) The following litigations involving Mylan defendants have been
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`dismissed:
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` AstraZeneca Pharms. LP et al. v. Mylan Pharms. Inc. et al., No. 15–7009
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`(D.N.J.) (consolidated with 15–6039) (consent judgment entered as ECF No.
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`26);
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` AstraZeneca Pharms. LP et al. v. Mylan Pharms. Inc. et al., No. 15–183
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`(N.D.W. Va.) (consent judgment entered as ECF No. 38);
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` AstraZeneca Pharms. LP et al. v. Mylan Institutional LLC, No. 16–4612
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`(D.N.J.) (consolidated with 15–6039) (consent judgment entered as ECF No.
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`21); and
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` AstraZeneca Pharms. LP et al. v. Mylan Institutional LLC, No. 16–669 (D.
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`Del.) (see ECF No. 7).
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`(2) The following litigations involving non-Mylan defendants have been
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`dismissed:
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`3
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` AstraZeneca Pharms. LP et al. v. Sandoz Inc., No. 14–3547 (D.N.J.) (see
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`ECF No. 316);
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` AstraZeneca Pharms. LP et al. v. Sagent Pharms., Inc., No. 14–5539
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`(D.N.J.) (consolidated as 14–3547) (see ECF No. 347);
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` AstraZeneca Pharms. LP et al. v. Glenmark Pharms. Inc., USA, No. 15–615
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`(D.N.J.) (consolidated as 14–3547) (see ECF No. 348);
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` AstraZeneca Pharms. LP et al. v. Teva Parenteral Medicines Inc. et al., No.
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`10–018 (D. Del.) (see ECF No. 35);
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` AstraZeneca Pharms. LP et al. v. Sagent Pharms., Inc., No. 14–7358 (N.D.
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`Ill.) (see ECF No. 14); and
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` AstraZeneca Pharms. LP et al. v. InnoPharma, Inc., No. 16–894 (D.N.J.)
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`(see ECF No. 17).
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` (3) The following litigations involving Teva and InnoPharma defendants
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`remain pending:
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` AstraZeneca Pharms. LP. et al. v. Agila Specialties, Inc. et al., No. 15–6039
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`(D.N.J.) (lead case);3
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`3 All Mylan entities (i.e., Agila Specialties, Inc., Onco Therapies Ltd., Mylan
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`Laboratories Ltd., Mylan Inc., Mylan Pharmaceuticals Inc., and Mylan Institutional
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`4
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` AstraZeneca Pharms. LP et al. v. Teva Pharms. USA, Inc., No. 15–7889
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`(D.N.J.) (consolidated with 15–6039); and
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` AstraZeneca Pharms. LP et al. v. InnoPharma Licensing LLC, No. 16–1962
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`(D.N.J.) (consolidated with 15–6039).
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`Accordingly, the parties respectfully request termination of this proceeding.
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`Dated: January 9, 2017
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`/Brandon M. White/
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`
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`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
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`Attorney for Mylan Pharmaceuticals Inc.
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`LLC) have been dismissed from this action (see ECF No. 197). This action
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`remains pending as it is the lead case for the Teva and InnoPharma litigations.
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`5
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`CERTIFICATE OF SERVICE
`The undersigned hereby certifies that the foregoing Joint Motion to
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`Terminate Proceedings Under 35 U.SC. § 317(a) was served electronically via
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`email as follows:
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`Filko Prugo
`fprugo@omm.com
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`Caitlin Hogan
`chogan@omm.com
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`
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`Dated: January 9, 2017
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`Marc Pensabene
`mpensabene@omm.com
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`John Murray
`kmurray2@omm.com
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`
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`/Brandon M. White/
`Brandon M. White
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`Attorney for Mylan Pharmaceuticals Inc.
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`1