`
`Filed: April 28, 2017
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`————————————————
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`————————————————
`
`MYLAN PHARMACEUTICALS INC.
`
`Petitioner,
`
`v.
`
`YEDA RESEARCH & DEVELOPMENT CO., LTD.
`
`Patent Owner.
`
`————————————————
`Case No. IPR2017-00195 (9,155,776)
`————————————————
`
`MOTION TO TERMINATE PROCEEDINGS
`UNDER 35 U.SC. § 317(a)
`
`Pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. §§ 42.72, Petitioner Mylan
`
`Pharmaceuticals Inc. (“Mylan”) respectfully requests termination of IPR2017-
`
`00195.
`
`The Board authorized this Motion by email on April 27, 2017.
`
`Patent Owner does not oppose this Motion.
`
`Basis for Termination
`
`On January 30, 2017, the United States District Court for the District of
`
`Delaware held U.S. Patent No. 9,155,776, the patent that is the subject of this
`
`
`
`
`
`
`
`proceeding, invalid as obvious. Ex. 1068; Paper No. 6. The District Court reached
`
`this conclusion applying a higher evidentiary standard than would apply in this
`
`proceeding. In view of the District Court’s decision and to conserve the Board’s
`
`resources, Mylan respectfully requests termination of this proceeding.
`
`Mylan believes that termination of this proceeding is proper under 35 U.S.C.
`
`§ 317(a) because the Board has not yet decided the merits of the proceeding.
`
`Termination of this proceeding avoids both the Board and the parties from
`
`spending unnecessary resources.
`
`Status of Pending Patent Office Proceedings
`
`The Board has previously issued final written decisions in IPR2015-00643,
`
`IPR2015-00644 and IPR2015-00830 holding unpatentable three patents in the
`
`same family as the ’776 patent. Patent Owner has appealed these decisions to the
`
`Federal Circuit. Mylan is unaware of any other pending, related inter partes
`
`review proceedings.
`
`Status of Pending District Court Actions
`
`With respect to the related district court actions:
`
`1.
`
`Final judgment has been entered in In re Copaxone 40 mg
`
`Consolidated Cases, No. 14-cv-01171 (D. Del.) holding invalid U.S. Patent No.
`
`8,232,250, No. 8,399,413, No. 8,969,302, and No. 9,155,776. The case is currently
`
`on appeal to the Federal Circuit.
`
`2
`
`
`
`
`
`2.
`
`A joint stipulation has been filed to dismiss with prejudice the claims
`
`and counterclaims regarding U.S. Patent No. 9,402,874 in Teva Pharmaceuticals
`
`USA, Inc. v. Doctor Reddy’s Laboratories, Ltd., No. 16-cv-1267 (D. Del.) (Docket
`
`No. 72).
`
`* * *
`
`Accordingly, Mylan respectfully requests termination of this proceeding.
`
`
`
`Dated: April 28, 2017
`
`
`
`/Brandon M. White/
`
`
`
`Brandon M. White
`Reg. No. 52,354
`Perkins Coie LLP
`700 13th St., NW, Suite 600
`Washington, D.C. 20005
`Telephone: (202) 654-6206
`E-mail: bmwhite@perkinscoie.com
`
`Attorney for Mylan Pharmaceuticals Inc.
`
`3
`
`
`
`
`
`CERTIFICATE OF SERVICE
`The undersigned hereby certifies that the foregoing Motion to Terminate
`
`Proceedings Under 35 U.SC. § 317(a) was served electronically via email as
`
`follows:
`
`Elizabeth Holland
`eholland@goodwinprocter.com
`
`William James
`wjames@goodwinprocter.com
`
`
`
`Dated: April 28, 2017
`
`
`
`/Brandon M. White/
`Brandon M. White
`
`Attorney for Mylan Pharmaceuticals Inc.
`
`
`
`1
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
