`_____________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_____________________________
`
`
`
`MYLAN PHARMACEUTICALS INC.,
`Petitioner,
`
`v.
`
`BAYER INTELLECTUAL PROPERTY GMBH,
`Patent Owner.
`
`_____________________________
`
`Case No. IPR2017-00042
`Patent No. 7,585,860
`_____________________________
`
`
`
`PETITIONER’S UNOPPOSED MOTION TO TERMINATE PROCEEDING
`
`
`
`
`
`
`
`
`I.
`
`INTRODUCTION
`
`The Board authorized Petitioner to file an unopposed motion to terminate the
`
`proceeding in this case on March 21, 2017. Pursuant to 37 C.F.R. §§ 42.5(a),
`
`42.71(a) & 42.74, Mylan Pharmaceuticals Inc. (“Petitioner”) moves for termination
`
`of this inter partes review of U.S. Patent No. 7,585,860 (“the ʼ860 patent”). Bayer
`
`Intellectual Property GmbH (“Patent Owner”) does not oppose this Motion.
`
`Petitioner filed its petition for inter partes review of the ’860 patent on
`
`October 7, 2016 (Paper 2). There are no other petitioners in the proceeding. There
`
`are patents related to the ’860 patent, i.e., U.S. Patent No. 7,157,456 and U.S.
`
`Patent No. 7,592,339, that are subject of IPR petitions filed by Petitioner as
`
`IPR2017-00041 and IPR2017-00043, respectively. Termination of IPR2017-
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`00041 and IPR2017-00043 is being concurrently requested by Petitioner.
`
`At the time of the Petition’s filing and presently, there is a co-pending
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`lawsuit with respect to ’860 patent and the other related patents between Petitioner
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`and other entities in the action styled CA No. 1:15-cv-00902-SLR, filed by Bayer
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`Intellectual Property GmbH et al. in the District of Delaware. (EX1016). A
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`complaint asserting the ’860 patent against Petitioner was served no earlier than
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`October 9, 2015. Thus Petitioner was served with a complaint asserting
`
`infringement in the district court action more than a year from the present date.
`
`
`
`1
`
`
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`Patent Owner filed a preliminary response on January 18, 2017 (Paper 6).
`
`The deadline for an institution decision is April 18, 2017. There has been no
`
`institution decision to date. Thus, the proceeding is still in its preliminary phase,
`
`and the Board has yet to reach the merits and issue a decision on institution.
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`No settlement or agreement between the parties has been reached as to this
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`IPR or the IPRs on the related patents noted above. There are no collateral
`
`agreements between the parties as to the termination requested by the Petitioner.
`
`Thus, there is no separate paper to be filed with the Board before terminating this
`
`preliminary proceeding.1
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`Termination of this IPR will preserve the Board’s resources and the parties’
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`resources while also securing the just, speedy and inexpensive resolution to the
`
`proceeding. In similar circumstances the Board has previously granted motions to
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`terminate or dismiss using its authority under at least 37 C.F.R. §§ 42.5(a) and
`
`42.71(a). See, e.g., Celltrion v. Genentech, Inc., IPR2015-01733, Paper 12 at 2
`
`(PTAB October 6, 2015) (granting unopposed motion to dismiss petition); Under
`
`Armour, Inc. v. Adidas AG, IPR2015-01531, Paper 8 at 2 (PTAB September 21,
`
`
`
`1 “Preliminary proceeding” is defined as the period from the filing of a petition
`
`for instituting a trial to the written decision as to whether a trial will be instituted.
`
`See 37 C.F.R. § 42.2.
`
`
`
`2
`
`
`
`2015) (granting unopposed motion to dismiss petition); Samsung Elec. Co. LTD v.
`
`Nvidia Corp., IPR2015-01270, Paper 12 at 3-4 (PTAB December 9, 2015)
`
`(dismissing Petition even over the Patent Owner’s objection); Ericsson Inc. and
`
`Telefonaktiebolaget LM Ericsson v. Adaptix, Inc., IPR2016-00619 (PTAB May 4,
`
`2016) (dismissing unopposed motion to dismiss). The rules do not preclude
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`termination of an IPR during the preliminary proceeding stage. The rules
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`expressly provide that the Board “may take up petitions or motions for decisions in
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`any order, may grant, deny, or dismiss any petition or motion, and may enter any
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`appropriate order.” 37 C.F.R. § 42.71(a).
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`Accordingly, for at least the reasons given above, Petitioner Mylan
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`Pharmaceuticals, Inc. requests termination of this preliminary proceeding without
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`any decision on the merits having been made, pursuant to 37 C.F.R. §§ 42.5(a) and
`
`42.71(a).
`
`
`
`Dated: March 28, 2017
`
`Respectfully submitted,
`
`/ Steven W. Parmelee /
`Steven W. Parmelee, Lead Counsel
` Reg. No. 31,990
`
`
`
`
`
`
`
`
`3
`
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. §§ 42.6(e), this is to certify that I caused to be served a
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`true and correct copy of the foregoing Petitioner’s Unopposed Motion to Terminate
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`Proceeding, on the Patent Owner via email as follows:
`
`Dov Grossman
`
`dgrossman@wc.com
`
`Galina Fomenkova
`
`gfomenkova@wc.com
`
`
`
`
`
`Respectfully,
`
`
`
`/ Steven W. Parmelee /
`Steven W. Parmelee, Lead Counsel
`Reg. No. 31,990
`
`
`
`Dated: March 28, 2017
`
`
`
`
`
`4
`
`
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