Paper No. 105
`Filed: May 13, 2020
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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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`ACRUX DDS PTY LTD., ACRUX LIMITED, and
`ARGENTUM PHARMACEUTICALS LLC,
`Petitioners,
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`v.
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`KAKEN PHARMACEUTICAL CO., LTD. and
`VALEANT PHARMACEUTICALS INTERNATIONAL, INC.,
`Patent Owners.
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`Case IPR2017-001901
`U.S. Patent No. 7,214,506
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`JOINT MOTION TO TERMINATE PROCEEDING AND REQUEST TO
`TREAT SETTLEMENT AGREEMENT AS BUSINESS CONFIDENTIAL
`INFORMATION AND BE KEPT SEPARATE
`PURSUANT TO 35 U.S.C. § 317 AND 37 C.F.R. § 42.72 & 42.74
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`
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`1 Case IPR2017-01429 has been joined with the instant proceeding.
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`Filed: May 13, 2020
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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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`
`
`
`
`
`ACRUX DDS PTY LTD., ACRUX LIMITED, and
`ARGENTUM PHARMACEUTICALS LLC,
`Petitioners,
`
`v.
`
`KAKEN PHARMACEUTICAL CO., LTD. and
`VALEANT PHARMACEUTICALS INTERNATIONAL, INC.,
`Patent Owners.
`
`
`
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`
`
`
`
`Case IPR2017-001901
`U.S. Patent No. 7,214,506
`
`
`
`
`
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`
`
`JOINT MOTION TO TERMINATE PROCEEDING AND REQUEST TO
`TREAT SETTLEMENT AGREEMENT AS BUSINESS CONFIDENTIAL
`INFORMATION AND BE KEPT SEPARATE
`PURSUANT TO 35 U.S.C. § 317 AND 37 C.F.R. § 42.72 & 42.74
`
`
`
`
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`1 Case IPR2017-01429 has been joined with the instant proceeding.
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`Pursuant to 35 U.S.C. § 317 and 37 C.F.R. §§ 42.74 & 42.74, Patent Owners
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`Case IPR2017-00190
`Patent No. 7,214,506
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`Kaken Pharmaceutical Co., Ltd. and Bausch Health Companies Inc. (formerly
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`known as Valeant Pharmaceuticals International, Inc.) (“Patent Owners”) and
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`Petitioners Acrux DDS PTY Ltd. and Acrux Ltd. (“Acrux”) respectfully jointly
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`request termination of the inter partes review of U.S. Patent No. 7,214,506 (“the
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`’506 Patent”), Case No. IPR2017-00190, which is on remand from the United States
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`Court of Appeals for the Federal Circuit, and further jointly request that the
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`Settlement Agreement between the parties, filed concurrently herewith, be treated
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`as business confidential information, be kept separate from the file of the involved
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`’506 Patent, and be made available only as permitted pursuant to the provisions of
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`35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).
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`I.
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`No Petitioners Remain in this Remanded IPR
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`This IPR is pending before the Board after the Federal Circuit vacated,
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`reversed, and remanded the initial Final Written Decision. Kaken Pharm. Co., Ltd.
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`v. Bausch Health Co. Inc., 952 F.3d 1346 (Fed. Cir. 2020). After the Board issued
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`the Final Written Decision on June 6, 2018 finding the claims of the ’506 Patent
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`invalid (Paper No. 80), Patent Owners filed a Notice of Appeal to the Federal Circuit.
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`(Paper No. 86). Petitioner Argentum did not enter an appearance at the Federal
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`Circuit and no longer remains in this resultant remanded proceeding. Kaken Pharm.
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`Co., Ltd. v. Bausch Health Co. Inc., No. 18-2232, D.E. 23 (Fed. Cir. Oct. 23, 2018)
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`1
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`(“Official caption revised to reflect lack of appearance on behalf of Argentum
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`Case IPR2017-00190
`Patent No. 7,214,506
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`Pharmaceuticals LLC.”). After Patent Owners filed their initial brief at the Federal
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`Circuit, but before appellee’s brief was due, Petitioner Acrux and Patent Owners
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`settled their dispute involving the ’506 Patent. See Confidential Exhibit 2204. Days
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`later, congruent with the settlement agreement, Petitioner Acrux submitted a Notice
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`of Non-Participation in the appeal. Kaken Pharm. Co., Ltd. v. Bausch Health Co.
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`Inc., No. 18-2232, D.E. 35 (Fed. Cir. April 4, 2019) (“Appellees Acrux DDS Pty
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`Ltd. and Acrux Limited hereby give notice that they will not participate in this appeal
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`and will not file an Appellees’ brief.”); D.E. 36 (revising caption to remove Acrux
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`DDS Pty Ltd. and Acrux Limited).2 After the Federal Circuit issued the Order
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`reflecting Petitioner Acrux’s withdrawal, the U.S. Patent and Trademark Office
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`(“the PTO”) intervened in the appeal.
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`On March 13, 2020, the Federal Circuit vacated the Board’s Final Written
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`Decision and remanded the case back to the Board. Kaken, 952 F.3d 1346. The
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`PTO did not petition for rehearing at the Federal Circuit and the deadline for such
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`2 A Stipulated Dismissal and Injunction was entered against Petitioner Acrux DDS
`Pty Ltd. in a district court action involving the ’506 Patent. Valeant Pharms. N.A.
`LLC v. Acrux DDS Pty Ltd., Case No. 18-cv-14194, D.E. 27 (D.N.J. April 10, 2019).
`Petitioner Argentum was not involved at the district court. The ’506 Patent is also
`being asserted in district court actions that do not involve any Petitioners. In re
`Jublia, Case No. 18-cv-13635 (D.N.J.); Valeant Pharms. N.A. LLC v. Mylan Pharms
`Inc., Case No. 18-cv-184 (N.D.W.Va.)
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`2
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`
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`petition expired on April 27, 2020. The Federal Circuit mandate issued May 4, 2020.
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`Case IPR2017-00190
`Patent No. 7,214,506
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`The Board has not yet issued a Final Written Decision in the remanded case. On
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`May 11, 2020, the Board authorized Patent Owners and Petitioner Acrux to file
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`(1) this joint motion to terminate and (2) a joint request that the settlement agreement
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`be treated as business confidential information under 37 C.F.R. § 42.74(c).
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`II. Termination Is Appropriate
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`Under 35 U.S.C. § 317(a), “[i]f no petitioner remains in the inter partes
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`review, the Office may terminate the review or proceed to a final written decision
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`under section 318(a).” See also 37 C.F.R. § 42.74 (“[t]he parties may agree to settle
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`any issue in a proceeding . . .”); § 42.72 (“The Board may terminate a trial without
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`rendering a final written decision, where appropriate, including where the trial is
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`consolidated with another proceeding or pursuant to a joint request under 35 U.S.C.
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`317(a) or 327(a).”).
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`Termination of the proceeding is appropriate because no dispute remains
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`between the Parties and the Board has not issued a final written decision in this
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`remanded proceeding. Patent Owners and Petitioner Acrux have settled their dispute
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`involving the ’506 Patent (see Confidential Exhibit 2204). Petitioner Argentum
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`3
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`withdrew from the proceeding while the case was before the Federal Circuit.3 Patent
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`Case IPR2017-00190
`Patent No. 7,214,506
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`Owners and Petitioner Acrux jointly support termination of these proceedings.
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`III. Treat Settlement Agreement as Business Confidential Information
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`Pursuant to 37 C.F.R. § 42.74(b), a true and unredacted copy of the written
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`settlement agreement between Patent Owners and Petitioner Acrux is filed herewith
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`as Confidential Exhibit 2204. There are no other agreements or understandings
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`between the Parties made in connection with, or in contemplation of, the termination
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`of this proceeding. Patent Owners and Petitioner Acrux hereby jointly request that
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`the settlement agreement be treated as business confidential information, be kept
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`separate from the file of the involved ’506 Patent, and be made available only to
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`Federal Government agencies on written request, or to any person on a showing of
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`good cause pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).
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`3 Counsel for Petitioner Argentum was contacted regarding this motion on April 22,
`2020. To date, Petitioner Argentum has not provided a position regarding this
`motion or a timeframe in which it will.
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`4
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`Dated: May 13, 2020
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`Case IPR2017-00190
`Patent No. 7,214,506
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`Respectfully submitted,
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`By: /John D. Livingstone/
`John D. Livingstone
`Finnegan, Henderson, Farabow,
` Garrett & Dunner, LLP
`Reg. No. 59,613
`
`Lead Counsel for Patent Owner
`
`By: /Tara M. Raghavan/
`Tara M. Raghavan
`Rakoczy Molino Mazzochi
`Siwik LLP
`6 W. Hubbard Street, Suite 500
`Chicago, IL 60654
`Telephone: 312-222-6340
`E-mail:
`traghavan@rmmslegal.com
`Reg. No. 55,557
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`Lead Counsel for Petitioners
`Acrux DDS PTY Ltd. and
`Acrux Limited
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`5
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`CERTIFICATE OF SERVICE
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`Case IPR2017-00190
`Patent No. 7,214,506
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`The undersigned certifies that a copy of the foregoing Joint Motion To
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`Terminate Proceeding And Request To Treat Settlement Agreement As
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`Business Confidential Information And Be Kept Separate Pursuant To 35
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`U.S.C. § 317 And 37 C.F.R. § 42.72 & 42.74 was served electronically via email
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`on May 13, 2020, in its entirety on the following:
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`Tara M. Raghavan
`Steven J. Birkos
`William A. Rakoczy
`Joseph T. Jaros
`Rakoczy Molino Mazzochi Siwik LLP
`6 West Hubbard Street, Suite 500
`Chicago, Illinois 60654
`traghavan@rmmslegal.com
`sbirkos@rmmslegal.com
`wrakoczy@rmmslegal.com
`jjaros@rmmslegal.com
`
`Teresa Stanek Rea
`Shannon M. Lentz
`Crowell & Moring LLP
`Intellectual Property Group
`1001 Pennsylvania Ave., NW
`Washington, DC 20004-2595
`trea@crowell.com
`slentz@crowell.com
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`Tyler C. Liu
`Argentum Pharmaceuticals, LLC
`tliu@agpharm.com
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`Case IPR2017-00190
`Patent No. 7,214,506
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`By: / John D. Livingstone /
`John D. Livingstone
`Reg. No. 59,613
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