Paper No. ____
`Filed: August 29, 2017
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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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`_____________________
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`FAMY CARE LIMITED
`Petitioner
`
`v.
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`ALLERGAN, INC.
`Patent Owner.
`_____________________
`
`Case IPR 2017-00566 (US 8,648,048 B2)
`Case IPR 2017-00567 (US 8,629,111 B2)
`Case IPR 2017-00568 (US 8,633,162 B2)
`Case IPR 2017-00569 (US 9,248,191 B2)
`Case IPR 2017-00570 (US 8,642,556 B2)
`Case IPR 2017-00571 (US 8,685,930 B2)
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`————————————————
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`JOINT MOTION TO TERMINATE PROCEEDINGS PURSUANT TO 35
`U.S.C. § 317(a)1
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`1 The word-for-word identical paper is filed in each proceeding identified above in
`the caption pursuant to the Board’s Scheduling Order (Paper 13).
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`Filed: August 29, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_____________________
`
`FAMY CARE LIMITED
`Petitioner
`
`v.
`
`ALLERGAN, INC.
`Patent Owner.
`_____________________
`
`Case IPR 2017-00566 (US 8,648,048 B2)
`Case IPR 2017-00567 (US 8,629,111 B2)
`Case IPR 2017-00568 (US 8,633,162 B2)
`Case IPR 2017-00569 (US 9,248,191 B2)
`Case IPR 2017-00570 (US 8,642,556 B2)
`Case IPR 2017-00571 (US 8,685,930 B2)
`
`————————————————
`
`JOINT MOTION TO TERMINATE PROCEEDINGS PURSUANT TO 35
`U.S.C. § 317(a)1
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`1 The word-for-word identical paper is filed in each proceeding identified above in
`the caption pursuant to the Board’s Scheduling Order (Paper 13).
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`Pursuant to 35 U.S.C. § 317(a), Petitioner Famy Care Limited (“Famy Care”
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`Paper No. ____
`Filed: August 29, 2017
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`or “Petitioner”) and Patent Owner Allergan, Inc. (“Allergan” or “Patent Owner”)
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`jointly request termination of Case Nos. IPR2017-00566, IPR2017-00567,
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`IPR2017-00568, IPR2017-00569, IPR2017-00570, and IPR2017-00571, which are
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`respectively directed towards U.S. Patent Nos. 8,648,048 B2 (the “‘048 patent”);
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`8,629,111 B2 (the “‘111 patent”); 8,633,162 B2 (the “‘162 patent”); 9,248,191 B2
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`(the “‘191 patent”); 8,642,556 B2 (the “‘556 patent”); and 8,685,930 B2 (the “‘930
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`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 inter partes review Case Nos. IPR2017-00566, IPR2017-00567,
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`IPR2017-00568, IPR2017-00569, IPR2017-00570, and IPR2017-00571 pursuant
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`to a settlement.
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`II.
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`STATEMENT OF FACTS
`On January 6, 2017, Famy Care filed petitions seeking inter partes review of
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`the ‘048, ‘111, ‘162, ‘191, ‘556, and ‘930 patents in Case Nos. IPR2017-00566,
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`IPR2017-00567, IPR2017-00568, IPR2017-00569, IPR2017-00570, and IPR2017-
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`00571. The Board entered decisions instituting inter partes review on July 10,
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`2017 (Case No. IPR2017-00567), and on July 12, 2017 (Case Nos. IPR2017-
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`00566, IPR2017-00568, IPR2017-00569, IPR2017-00570, and IPR2017-00571).
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`
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`The Patent Owner’s responses to Famy Care’s petitions are due on September 6,
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`Paper No. ____
`Filed: August 29, 2017
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`2017 under the Scheduling Order (Paper 13).
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`A joint motion to terminate generally must “(1) include a brief explanation
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`as to why termination is appropriate; (2) identify all parties in any related litigation
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`involving the patents at issue; (3) identify any related proceedings currently before
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`the Office, and (4) discuss specifically the current status of each such related
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`litigation or proceeding with respect to each party to the litigation or proceeding.”
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`Heartland Tanning, Inc. v. Sunless, Inc., IPR2014-00018, Paper 26 at 2 (PTAB Jul.
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`28, 2014).
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`(1) Brief Explanation. Termination is appropriate in these cases because
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`the parties have settled their dispute. The parties are filing a “Joint Request That
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`Settlement Documents Be Treated as Business Confidential Information and Kept
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`Separate Pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74” concurrently with
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`this Joint Motion to Terminate.
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`(2)(4) Related Litigation and Status. The related litigation involving the
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`patents at issue includes Allergan, Inc. v. Teva Pharmaceuticals USA, Inc., No.
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`2:15-cv-1455 (“Allergan v. Teva”); and Allergan, Inc. v. DEVA Holding AS, No.
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`2:16-cv-1447 (“Allergan v. Deva”), both pending in the Eastern District of Texas.
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`Allergan Inc. is the plaintiff in both cases, and the defendants are Akorn, Inc.,
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`InnoPharma,
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`Inc., Mylan Pharmaceuticals
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`Inc., Mylan
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`Inc., and Teva
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`
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`Pharmaceuticals USA, Inc.2 in Allergan v. Teva, and Deva Holding A.S. in
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`Paper No. ____
`Filed: August 29, 2017
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`Allergan v. Deva. The trial in Allergan v. Teva is scheduled from August 28, 2017
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`to September 1, 2017. Allergan v. Deva is currently in the discovery phase.
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`(3)(4) Related Proceedings before the Patent Office and Status. The
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`related proceedings before the Patent Office are Case Nos. IPR2016-01127,
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`IPR2016-01128, IPR2016-01129, IPR2016-01130, IPR2016-01131, and IPR2016-
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`01132. These proceedings were initiated by Mylan Pharmaceuticals Inc., and later
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`cases initiated by Teva Pharmaceuticals USA, Inc. and Akorn, Inc. were joined
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`with them (i.e., Case Nos. IPR2017-00576, IPR2017-00594, IPR2017-00578,
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`IPR2017-00596, IPR2017-00579, IPR2017-00598, IPR2017-00583, IPR2017-
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`00599, IPR2017-00585, IPR2017-00600, IPR2017-00586, and IPR2017-00601).
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`In these consolidated cases, the Patent Owner has responded to the petitions, the
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`Petitioners have replied, and the Patent Owner has filed sur-replies. The oral
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`argument is scheduled for September 15, 2017.
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`Pharmaceuticals LLC (“Argentum”) filed an IPR petition for the ‘111 patent
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`(i.e., IPR2016-1232). Apotex Corp. and Apotex Inc. filed IPR petitions for the
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`‘162, ‘111, ‘930, ‘048, and ‘556 patents (i.e., Case Nos. IPR2015-01278, IPR2015-
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`01282, IPR2015-01283, IPR2015-01284, IPR2015-01286). These petitions were
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`all terminated before institution decisions.
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`2 Famy Care had been a defendant in this consolidated litigation, but the court dismissed and terminated the case
`between Allergan and Famy Care on August 28, 2017 due to the settlement.
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`
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`
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`III. ARGUMENT
`The Board should terminate the inter partes review of the ‘048, ‘111, ‘162,
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`Paper No. ____
`Filed: August 29, 2017
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`‘191, ‘556, and ‘930 patents in Case Nos. IPR2017-00566, IPR2017-00567,
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`IPR2017-00568, IPR2017-00569, IPR2017-00570, and IPR2017-00571 as the
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`parties jointly request, for the following reasons.
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`First, the parties are jointly requesting termination because they have
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`reached a settlement as to all the disputes in these proceedings and as to the ‘048,
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`‘111, ‘162, ‘191, ‘556, and ‘930 patents. See 77 Fed. Reg. 48756, 48768 (Aug. 14,
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`2012) (“There are strong public policy reasons to favor settlement between the
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`parties to a proceeding”) (emphasis added). Both Congress and the federal courts
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`have expressed a strong interest in encouraging settlement in litigation. See, e.g.,
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`Delta Air Lines, Inc. v. August, 450 U.S. 346, 352 (1981) (“The purpose of [Fed.
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`R. Civ. P.] 68 is to encourage the settlement of litigation.”); Bergh v. Dept. of
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`Transp., 794 F.2d 1575, 1577 (Fed. Cir. 1986) (“The law favors settlement of
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`cases.”), cert. denied, 479 U.S. 950 (1986). The Federal Circuit places a
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`particularly strong emphasis on settlement. For example, it endorses the ability of
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`parties to agree to never challenge validity as part of a settlement. See Flex-Foot,
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`Inc. v. CRP, Inc., 238 F.3d 1362, 1370 (Fed. Cir. 2001); see also Cheyenne River
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`Sioux Tribe v. U.S., 806 F.2d 1046, 1050 (Fed. Cir. 1986) (noting that the law
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`favors settlement to reduce antagonism and hostility between parties). Here, no
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`Paper No. ____
`Filed: August 29, 2017
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`public interest or other factors weigh against termination.
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`Second, 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.” See 35 U.S.C. § 317(a). Under Section 317(a), an inter partes
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`review shall be terminated upon such joint request “unless the Office has decided
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`the merits of the proceeding before the request for termination is filed.” Id. The
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`statute establishes no other preconditions. See id.
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`Third, true and complete copies of the settlement documents are being filed
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`concurrently herewith. See Exs. 1035-37. The parties request that the settlement
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`documents 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 proceedings 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, made in connection with or in contemplation of the termination of the instant
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`proceedings.
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`Fourth, termination of these proceedings will conserve the Board’s resources
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`Paper No. ____
`Filed: August 29, 2017
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`and obviate the need for any more Board involvement in this matter.
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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 the inter partes review of the ‘048, ‘111, ‘162, ‘191, ‘556, and ‘930
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`patents in Case Nos. IPR2017-00566, IPR2017-00567, IPR2017-00568, IPR2017-
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`00569, IPR2017-00570, and IPR2017-00571.
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`Dated: August 29, 2017
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`
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`Respectfully submitted,
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`Respectfully submitted,
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`/Dorothy P. Whelan/
`
`/Deanne M. Mazzochi/
`
`Dorothy P. Whelan (Reg. No. 33,814)
`Michael J. Kane (Reg. No. 39,722)
`Fish & Richardson P.C.
`Telephone: (612) 337-2509
`Facsimile: (612) 288-9696
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`Attorneys for Patent Owner,
`Allergan, Inc.
`
`Deanne M. Mazzochi (Reg. No. 50,158)
`Peter J. Curtin (pro hac vice)
`John D. Polivick (Reg. No. 57,926)
`dmazzochi@rmmslegal.com
`pcurtin@rmmslegal.com
`jpolivick@rmmslegal.com
`Rakoczy Molino Mazzochi Siwik LLP
`6 West Hubbard Street, Suite 500
`Chicago, Illinois 60654
`Telephone: (312) 222-6305
`Facsimile: (312) 222-6325
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`Attorneys for Petitioner,
`Famy Care Limited
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`Paper No. ____
`Filed: August 29, 2017
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`CERTIFICATE OF SERVICE
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`I hereby certify that on August 29, 2017, a copy of this Joint Motion to
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`Terminate Proceedings Pursuant to 35 U.S.C. § 317(a) is being served by E-mail
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`by agreement of the parties to the following counsel of record for the Patent
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`Owner:
`
`Dorothy P. Whelan
`Michael J. Kane
`FISH & RICHARDSON P.C.
`3200 RBC Plaza
`60 South Sixth Street
`Minneapolis, MN
`whelan@fr.com
`kane@fr.com
`Counsel for Allergan, Inc.
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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
`
`
`
`
`Dated: August 29, 2017
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