`
`
`
`Paper No. ____
`Date filed: January 23, 2018
`
`Filed On Behalf Of:
`Novartis AG and Par Pharmaceutical, Inc.
`
`By:
`Nicholas N. Kallas
`NKallas@fchs.com
`ZortressAfinitorIPR@fchs.com
`(212) 218-2100
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`——————————
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
` ——————————
`
`PAR PHARMACEUTICAL, INC.,
`ARGENTUM PHARMACEUTICAL LLC, AND
`WEST-WARD PHARMACEUTICALS
`INTERNATIONAL LIMITED
`Petitioners,
`
`v.
`
`NOVARTIS AG
`Patent Owner
`——————————
`Case IPR2016-014791
`Patent No. 9,006,224
`——————————
`
`PAR AND NOVARTIS’S JOINT MOTION TO TERMINATE
`IPR AS TO PAR PURSUANT TO 35 U.S.C. § 317
`
`
`
`
`1 Argentum Pharmaceutical LLC was joined as a party to this proceeding via a
`Motion for Joinder in IPR2017-01063; West-Ward Pharmaceuticals International
`Limited was joined as a party via a Motion for Joinder in IPR2017-01078.
`
`
`
`
`
`
`
`Pursuant to 35 U.S.C. § 317 and 37 C.F.R. § 42.74, and pursuant to the
`
`authorization to file this motion provided by the Board in an email dated January
`
`11, 2018, Petitioner Par Pharmaceutical, Inc. (“Par”) and Patent Owner Novartis
`
`AG (“Novartis”) jointly request the termination of this inter partes review of U.S.
`
`Patent No. 9,006,224 as to Petitioner Par. Petitioners Argentum Pharmaceutical
`
`LLC and West-Ward Pharmaceuticals International Limited are not parties to this
`
`motion.
`
`Par and Novartis have settled their dispute, and have reached agreement to
`
`terminate this inter partes review as to Par. Pursuant to 35 U.S.C. § 317(b) and 37
`
`C.F.R. § 42.74(b), the parties’ settlement agreement has been made in writing, and
`
`a true and correct copy is being filed concurrently herewith as Exhibit 2118. The
`
`parties are also filing concurrently herewith a joint request to treat the settlement
`
`agreement as business confidential information and keep it separate from the files
`
`of the IPR and the involved patent pursuant to 35 U.S.C. § 317(b) and 37 C.F.R.
`
`§ 42.74(b).
`
`Termination of this inter partes review as to Par is proper under 35 U.S.C.
`
`§ 3l7(a) because the Board has not yet decided the merits of the proceeding.
`
`No other party’s rights will be prejudiced by the termination of this inter
`
`partes review as to Par. Two other parties remain in this inter partes review. They
`
`are Argentum Pharmaceutical LLC and West-Ward Pharmaceuticals International
`
`- 2 -
`
`
`
`
`
`Limited. Argentum Pharmaceutical LLC was joined as a party to this proceeding
`
`via a Motion for Joinder in IPR2017-01063 and West-Ward Pharmaceuticals
`
`International Limited was joined as a party via a Motion for Joinder in IPR2017-
`
`01078. These parties’ rights will not be impacted by the termination of this inter
`
`partes review as to Par.
`
`There is pending litigation relating to this patent between Novartis and other
`
`parties in the following actions: Novartis Pharms. Corp. v. West-Ward Pharms.
`
`Int’l Ltd., No. 15-474RGA (D. Del.) (final judgment entered against West-Ward
`
`Pharms. on December 21, 2017) and Novartis Pharms. Corp. v. Teva Pharms.
`
`USA, Inc., No. 17-393-RGA (D. Del.). None of these other parties’ rights will be
`
`impacted by the termination of this inter partes review as to Par.
`
`For the foregoing reasons, Par and Novartis respectfully jointly request that
`
`this inter partes review proceeding be terminated as to Par.
`
`
`Respectfully submitted,
`
`Dated: January 23, 2018
`
`
`
`
`
`
`
`
`- 3 -
`
`
`
`/Nicholas N. Kallas/
`Nicholas N. Kallas
`Registration No. 31,530
`Lead Counsel for Patent Owner
`FITZPATRICK, CELLA, HARPER
`& SCINTO
`1290 Avenue of the Americas
`New York, NY 10104-3800
`Tel. 212-218-2100
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`I certify that a copy of the foregoing PAR AND NOVARTIS’S JOINT
`
`MOTION TO TERMINATE IPR AS TO PAR PURSUANT TO 35 U.S.C. § 317
`
`was served on January 23, 2018 by causing it to be sent by email to counsel for
`
`Petitioners at the following email addresses:
`
`
`Daniel G. Brown (daniel.brown@lw.com)
`
`Jonathan M. Strang (jonathan.strang@lw.com)
`
`Brenda L. Danek (brenda.danek@lw.com)
`
`Kevin Laurence (klaurence@lpiplaw.com)
`
`Matthew Phillips (mphillips@lpiplaw.com)
`
`Tyler C. Liu (tliu@agpharm.com)
`
`Keith A. Zullow (kzullow@goodwinprocter.com)
`
`Marta E. Delsignore (mdesignore@goodwinprocter.com)
`
`
`
`Dated: January 23, 2018
`
`
`
`
`
`
`
`
`
`- 4 -
`
`
`
`/Nicholas N. Kallas/
`Nicholas N. Kallas
`Registration No. 31,530
`Lead Counsel for Patent Owner
`FITZPATRICK, CELLA, HARPER
`& SCINTO
`1290 Avenue of the Americas
`New York, NY 10104-3800
`Tel. 212-218-2100
`
`
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