`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_____________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`
`MYLAN PHARMACEUTICALS INC.,
`Petitioner,
`
`v.
`
`QUALICAPS CO., LTD,
`Patent Owner
`
`____________
`
`IPR2017-00203
`Patent 6,649,180 B1
`
`JOINT MOTION TO TERMINATE UNDER 35 U.S.C. § 317(a)
`
`Pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. §§ 42.72 and 42.74, and
`
`the Board’s authorization of December 18, 2017, Patent Owner and
`
`Petitioner jointly request that the inter partes review (“IPR”) of U.S. Patent
`
`No. 6,649,180 be terminated.
`
`The parties have settled their dispute and executed a settlement
`
`agreement to terminate this proceeding and the parties’ related district court
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`1
`
`
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`IPR2017-00203
`Patent 6,649,180 B1
`
`litigation: Allergan Sales, LLC, and Qualicaps Co., Ltd. v. Mylan
`
`Joint Motion to Terminate
`
`Pharmaceutical, Inc., Mylan Laboratories Limited, and Mylan, Inc., which
`
`action is on appeal to the United States Court of Appeals for the Federal
`
`Circuit under the caption Warner Chilcott (US), LLC v. Teva
`
`Pharmaceuticals USA, Inc., Appeal No. 2018-1241 (Fed. Cir.). The
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`Stipulations and Orders of Dismissal agreed to by the parties in these related
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`litigations attached as Exhibit 1030 are to be filed within two days of the
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`Board’s Order to Terminate.
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`Pursuant to 37 C.F.R. §§ 42.74(b), the parties’ settlement agreement is
`
`in writing, and a true and correct copy is being filed concurrently herewith
`
`as Exhibit 1031. The parties are also filing concurrently herewith a joint
`
`request to treat the settlement as business confidential information and keep
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`it separate from the files of the IPR and the involved patent under 35 U.S.C.
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`§ 317(b) and 37 C.F.R. § 42.74(c).
`
`The parties further jointly certify that there are no other agreements or
`
`understandings, oral or written, between Patent Owner and Petitioner,
`
`including any collateral agreements, made in connection with, or in
`
`contemplation of, the termination of the present proceeding as set forth in 35
`
`U.S.C. § 317(b).
`
`2
`
`
`
`IPR2017-00203
`Patent 6,649,180 B1
`
`
`Joint Motion to Terminate
`
`Termination of Inter Partes Review Proceeding
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`A joint motion to terminate generally “must (1) include a brief
`
`explanation as to why termination is appropriate; (2) identify all parties in
`
`any related litigation involving the patents at issue; (3) identify any related
`
`proceedings currently before the Office, and (4) discuss specifically the
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`current status of each such related litigation or proceeding with respect to
`
`each party to the litigation or proceeding.” Heartland Tanning, Inc. v.
`
`Sunless, Inc., IPR2014-00018, Paper No. 26, at *2 (PTAB July 28, 2014).
`
`Each element is addressed below.
`
`As for requirement (1), termination is appropriate in this proceeding
`
`because the parties have settled their dispute with respect to the ’180 patent,
`
`and have agreed to terminate this inter partes review. The applicable statute,
`
`35 U.S.C. § 317(a), provides that an inter partes review proceeding “shall be
`
`terminated with respect to any petitioner upon the joint request of the
`
`petitioner and the patent owner, unless the Office has decided the merits of
`
`the proceeding before the request for termination is filed.” In this case, the
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`inter partes review has been instituted, but is still in progress and the oral
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`hearing is set for January 25, 2018. The Office has made no final decision on
`
`3
`
`
`
`IPR2017-00203
`Patent 6,649,180 B1
`
`the merits. Moreover, as recognized by the rules of practice before the
`
`Joint Motion to Terminate
`
`Board:
`
`There are strong public policy reasons to favor settlement between the
`parties to a proceeding. The Board will be available to facilitate
`settlement discussions, and where appropriate, may require a
`settlement discussion as part of the proceeding. The Board expects
`that a proceeding will terminate after the filing of a settlement
`agreement, unless the Board has already decided the merits of the
`proceeding.
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`Patent Office Trial Practice Guide, Fed. Register, Vol. 77, No. 157 at 48,768
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`(Aug. 14, 2012). Moreover, no public interest or other factors militate
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`against termination of this proceeding.
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`As for requirements (2) and (4), the table below identifies parties in
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`district court litigations that involve or involved the ’180 patent, and
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`discusses the current status of these related litigations with respect to each
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`party to the litigation. See Heartland Tanning, Inc., Paper No. 26, at *2.
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`Petitioner and Patent Owner believe that all of the named defendants in the
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`below-identified litigations are barred from filing IPR petitions challenging
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`the ’180 patent.
`
`4
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`
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`IPR2017-00203
`Patent 6,649,180 B1
`
`
`Case Caption
`
`Allergan Sales v. Teva. No. 15-
`1471, 17-343 (consolidated) (E.D.
`Texas)
`
`Warner Chilcott v. Zydus, No. 16-
`323 (E.D. Texas)
`
`
`
`Joint Motion to Terminate
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`Status
`
`On appeal
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`Dismissed pursuant to stipulation
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`Finally, as discussed above, the Settlement Agreement, contingent
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`upon the entry of the Board’s Order to Terminate, fully resolves all litigation
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`and proceedings between the parties to this IPR proceeding relating to the
`
`’180 patent.
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`Accordingly, the parties respectfully request termination of this
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`proceeding.
`
`
`
`
`
`5
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`
`
`IPR2017-00203
`Patent 6,649,180 B1
`
`
`Dated: December 18, 2017
`
`Joint Motion to Terminate
`
`Respectfully submitted,
`
` /Scott E. Kamholz/
`Jessica L. Parezo, Reg. No. 50,286
`Andrea G. Reister, Reg. No. 36,253
`Scott E. Kamholz, Reg. No. 48,543
`Michael N. Kennedy, pro hac vice
`Megan P. Keane, pro hac vice
`Covington & Burling LLP
`One CityCenter, 850 Tenth St., NW
`Washington DC 20001
`
`MaryAnne Armstrong, Reg. No. 40,069
`Lynde F. Herzbach, Reg. No. 74,886
`Birch, Stewart, Kolasch & Birch, LLP
`8110 Gatehouse Rd, Ste 100 East
`Falls Church VA 22042
`
`Counsel for Patent Owner
`
`
`
`/s/ Mitchell G. Stockwell
`Mitchell G. Stockwell, Reg. No. 39,389
`D. Clay Holloway, Reg. No. 58,011
`Jonathan D. Olinger, pro hac vice
`Kilpatrick Townsend & Stockton LLP
`1100 Peachtree Street, Suite 2800
`Atlanta, GA 30309
`
`Counsel for Petitioner
`
`
`6
`
`
`
`IPR2017-00203
`Patent 6,649,180 B1
`
`
`Joint Motion to Terminate
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6, I certify that on the date listed below, a
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`copy of this paper and every exhibit filed with this paper was served on the
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`Patent Owner at the address listed below by email:
`
`Jessica L. Parezo (jparezo@cov.com)
`Andrea G. Reister( areister@cov.com)
`Scott E. Kamholz (skamholz@cov.com)
`Michael N. Kennedy (mkennedy@cov.com)
`Megan P. Keane (mkeane@cov.com)
`Covington & Burling LLP
`One CityCenter, 850 Tenth Street, NW
`Washington, DC 20001
`
`MaryAnne Armstrong (maa@bskb.com)
`Lynde F. Herzbach (lynde.herzbach@bskb.com)
`Birch, Stewart, Kolasch & Birch, LLP
`8110 Gatehouse Road, Suite 100 East
`Falls Church, VA 22042
`
`
`
`
`
`
`Dated: December 18, 2017
`
`
`
` /s/ Mitchell G. Stockwell
`Mitchell G. Stockwell, Reg. No. 39,389
`
`
`
`
`
`
`
`7
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`
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