`Novartis AG and
`Hikma Pharmaceuticals International Limited
`
`By:
`Nicholas N. Kallas
`NKallas@venable.com
`ZortressAfinitorIPR@venable.com
`(212) 218-2100
`
`
`Paper No. ___
`Date filed: October 2, 2020
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`——————————
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
` ——————————
`
`ARGENTUM PHARMACEUTICALS LLC, and WEST-WARD
`PHARMACEUTICALS INTERNATIONAL LIMITED n/k/a HIKMA
`PHARMACEUTICALS INTERNATIONAL LIMITED
`Petitioners,
`
`v.
`
`NOVARTIS AG
`Patent Owner.
`——————————
`
`Case IPR2016-014791
`Patent No. 9,006,224
`——————————
`HIKMA AND NOVARTIS’S JOINT MOTION
`TO TERMINATE IPR AS TO HIKMA
`PURSUANT TO 35 U.S.C. § 317
`
`1 IPR2017-01063 and IPR2017-01078 have been joined to this proceeding (Paper
`33, September 25, 2017). Par Pharmaceutical Inc. has been terminated as a party to
`this proceeding (Paper 52, February 7, 2018).
`
`
`
`
`
`
`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
`
`September 30, 2020, Petitioner West-Ward Pharmaceuticals International Limited
`
`n/k/a Hikma Pharmaceuticals International Limited (“Hikma”) 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 Hikma. Petitioner Argentum
`
`Pharmaceuticals LLC (“Argentum”) is not a party to this motion.
`
`Hikma and Novartis have settled their dispute, and have reached agreement
`
`to terminate this inter partes review as to Hikma. 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
`
`2119. The parties are also filing concurrently herewith (1) 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), and (2) a proposed protective order designated as Exhibit
`
`2120.
`
`Termination of this inter partes review as to Hikma is proper under 35
`
`U.S.C. § 317(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 Hikma. One other party, Petitioner Argentum, remains in this
`
`inter partes review. Argentum was joined as a party via a Motion for Joinder in
`
`IPR2017-01063. Argentum’s rights will not be impacted by the termination of this
`
`inter partes review as to Hikma.
`
`There is no pending litigation relating to this patent between Novartis and
`
`Hikma or Argentum.
`
`For the foregoing reasons, Hikma and Novartis respectfully jointly request
`
`termination of this inter partes review as to Hikma.
`
`
`Date: October 2, 2020
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`/Nicholas N. Kallas/
`Nicholas N. Kallas (Reg. No. 31,530)
`
`
`
`CERTIFICATE OF SERVICE
`
`
`
`I certify that a copy of the foregoing HIKMA AND NOVARTIS’S JOINT
`
`MOTION TO TERMINATE IPR AS TO HIKMA PURSUANT TO 35 U.S.C.
`
`§ 317 was served on October 2, 2020, by causing it to be sent by email to counsel
`
`for Petitioners at the following email addresses:
`
`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 (mdelsignore@goodwinprocter.com)
`
`Michael B. Cottler (mcottler@goodwinlaw.com)
`
`Dated: October 2, 2020
`
`/Nicholas N. Kallas/
`Nicholas N. Kallas
`Registration No. 31,530
`Lead Counsel for Patent Owner
`VENABLE LLP
`1290 Avenue of the Americas
`New York, NY 10104-3800
`Tel. 212-218-2100
`
`
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