UNITED STATES PATENT AND TRADEMARK OFFICE
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`————————————————
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`————————————————
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`MYLAN PHARMACEUTICALS INC.,
`Petitioner
`v.
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`GENENTECH, INC.,
`Patent Owner
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`————————————————
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`Case IPR2016-01693
`Patent 6,407,213
`————————————————
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`JOINT MOTION TO TERMINATE PROCEEDING
` PURSUANT TO 35 U.S.C. § 317(a)
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`————————————————
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`————————————————
`
`MYLAN PHARMACEUTICALS INC.,
`Petitioner
`v.
`
`GENENTECH, INC.,
`Patent Owner
`
`————————————————
`
`Case IPR2016-01693
`Patent 6,407,213
`————————————————
`
`
`
`JOINT MOTION TO TERMINATE PROCEEDING
` PURSUANT TO 35 U.S.C. § 317(a)
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`Pursuant to 35 U.S.C. § 317(a), Petitioner Mylan Pharmaceuticals Inc.
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`(“Mylan” or “Petitioner”) and Patent Owner Genentech, Inc. (“Genentech” or
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`“Patent Owner”) jointly request termination of IPR2016-01693, which is directed
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`to U.S. Patent No 6,407,213 (the “’213 Patent”).
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`I.
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`STATEMENT OF PRECISE RELIEF REQUESTED
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`Pursuant to 35 U.S.C. § 317(a), Petitioner and Patent Owner jointly request
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`termination of this inter partes review pursuant to a settlement.
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`II.
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`STATEMENT OF FACTS
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`No decision on institution has been issued yet in this case. Further,
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`Petitioner and Patent Owner have reached an agreement to settle this inter partes
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`review proceeding. A “Joint Request That Settlement Agreement Be Treated as
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`Business Confidential Information and Kept Separate Pursuant to 35 U.S.C.
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`§ 317(b) and 37 C.F.R. § 42.74” is being filed concurrently with this Joint Motion
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`to Terminate in reference to sealing of the settlement agreement. See 35 U.S.C.
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`§ 317(b) (requiring parties to file agreements in writing with the Office). The
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`Board previously provided authorization to file this motion on February 28, 2017.
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`(Paper 20.) A joint motion to terminate generally must “(1) include a brief
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`explanation as to why termination is appropriate; (2) identify all parties in any
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`related litigation involving the patents at issue; (3) identify any related proceedings
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`currently before the Office, and (4) discuss specifically the current status of each
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`2
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`such related litigation or proceeding with respect to each party to the litigation or
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`proceeding.” Heartland Tanning, Inc. v. Sunless, Inc., IPR2014-00018, Paper 26 at
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`2 (PTAB Jul. 28, 2014).
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`(1) Brief Explanation. Termination is appropriate in this case because the
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`parties have settled their dispute. A “Joint Request That Settlement Agreement Be
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`Treated as Business Confidential Information and Kept Separate Pursuant to 35
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`U.S.C. § 317(b) and 37 C.F.R. § 42.74” is being filed concurrently with this Joint
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`Motion to Terminate in 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.
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`(3)(4) Related Proceeding before the Patent Office and Its Status. Petitioner
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`filed a separate petition challenging certain claims of the ’213 Patent in IPR2016-
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`01694. Petitioner and Patent Owner are concurrently filing a Joint Motion to
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`Terminate Proceeding Pursuant to 35 U.S.C. § 317(a) in IPR2016-01694.
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`Petitioner and Patent Owner are unaware of any pending judicial or administrative
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`matter that would affect, or be affected by, a decision in this inter partes review.
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`III. ARGUMENT
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`The Board should terminate this case as the parties jointly request, for the
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`following reasons.
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`3
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`First, Petitioner and Patent Owner 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 upon such joint request “unless the Office has decided the
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`merits of the proceeding before the request for termination is filed.” There are no
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`other preconditions of 35 U.S.C. § 317(a).
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`Second, the parties have reached a settlement as to all the disputes in this
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`proceeding and as to the ’213 Patent. A true copy of the settlement agreement is
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`filed concurrently herewith. See Ex. 1132. The parties request that the settlement
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`agreement be treated as business confidential information, and be kept separate
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`from the files of this proceeding in accordance with 37 C.F.R. § 42.74(c). No
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`other such agreements, written or oral, exist between or among the parties.
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`Accordingly, the parties in the present proceeding jointly certify that there
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`are no other written or oral agreements or understandings, including any collateral
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`agreements, between them, including but not limited to licenses, covenants not to
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`sue, confidentiality agreements, payment agreements, or other agreements of any
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`kind, that are made in connection with or in contemplation of, the termination of
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`the instant proceeding.
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`Third, a termination of this proceeding will conserve the Board’s resources
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`and obviate the need for any more Board involvement in this matter.
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`4
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`IV. CONCLUSION
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`For the foregoing reasons, Petitioner and Patent Owner respectfully request
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`termination of this inter partes review of the ’213 Patent.
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`Respectfully submitted,
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`/Deanne M. Mazzochi/
`Deanne M. Mazzochi
`Reg. No. 50,158
`
`RAKOCZY MOLINO MAZZOCHI
`SIWIK LLP
`6 West Hubbard Street, Suite 500
`Chicago, Illinois 60654
`Tel: (312) 222-6305
`Fax: (312) 222-6325
`dmazzochi@rmmslegal.com
`
`Counsel for Petitioner Mylan
`Pharmaceuticals Inc.
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`
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`Dated: March 7, 2017
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`5
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`Respectfully submitted,
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`/David L. Cavanaugh /
`David L. Cavanaugh
`Reg. No. 36,476
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`David L. Cavanaugh
`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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`Attorney for Genentech, Inc.
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`
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`Dated: March 7, 2017
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`6
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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 March 7, 2017, the
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`
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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 Owner:
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`Robert J. Gunther, Jr.
`Pro hac vice
`robert.gunther@wilmerhale.com
`Adam R. Brausa
`Reg. No. 60,287
`abrausa@durietangri.com
`Owen K. Allen
`Reg. No. 71,118
`owen.allen@wilmerhale.com
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`Respectfully submitted,
`
` /Deanne M. Mazzochi/
`Deanne M. Mazzochi (Reg. No. 50,158)
`dmazzochi@rmmslegal.com
`RAKOCZY MOLINO MAZZOCHI SIWIK LLP
`6 West Hubbard Street, Suite 500
`Chicago, Illinois 60654
`Telephone: (312) 222-6305
`Facsimile: (312) 222-6325
`
`7
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`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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`
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`Dated: March 7, 2017
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