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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`AMERIGEN PHARMACEUTICALS LIMITED,
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`Petitioner,
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`v.
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`SHIRE LLC,
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`Patent Owner.
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`Case IPR2017-00665
`U.S. Patent No. 8,846,100
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`JOINT NOTICE OF SETTLEMENT, REQUEST TO
`TERMINATE AND REQUEST TO KEEP
`SEPARATE UNDER 37 C.F.R. § 42.74 (c)
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`JOINT NOTICE OF SETTLEMENT, JOINT
`MOTION TO TERMINATE, AND JOINT REQUEST
`TO KEEP SEPARATE
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`The parties
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`to IPR2017-00665, Petitioner Amerigen Pharmaceuticals
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`Limited ("Amerigen") and Patent Owner Shire LLC ("Shire"), have reached a
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`settlement of all issues in this proceeding.
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`Pursuant to 35 U.S.C. § 317 and 37 C.F.R. § 42.74, Amerigen and Shire
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`jointly move to terminate the present inter partes review proceeding. This Joint
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`Notice, Joint Motion, and Joint Request to Keep Separate were authorized by the
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`Board on April 21, 2017.
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`Termination is appropriate in the instant proceeding because the dispute
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`between the parties has been resolved, and further, the parties have agreed to
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`terminate this inter partes review. Under 35 U.S.C. § 317(a), "[a]n inter partes
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`review instituted under this chapter shall be terminated with respect
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`to any
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`petitioner upon the joint request of the petitioner and the patent owner, unless the
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`Office has decided the merits of the proceeding before the request for termination
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`is filed." This proceeding is still in its early stages. Patent Owner has not yet filed a
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`preliminary response (and thus, no institution decision has issued). Moreover,
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`strong public policy considerations favor settlement between the parties to an inter
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`partes review proceeding. See Office Trial Practice Guide, Fed. Reg., Vol. 77, No.
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`157 at 48768 (Aug. 14, 2012). No public interest or other factors weigh against
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`termination of this proceeding.
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`There are no district court actions between Petitioner and Patent Owner
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`involving U.S. Patent No. 8,846,100.
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`Consistent with the terms of the Settlement Agreement, Amerigen agrees
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`that all challenged claims are valid and enforceable. Accordingly, Amerigen and
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`Shire jointly request, 35 U.S.C. § 317(a) and 37 C.F.R. § 42.74, the Board to
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`terminate these proceedings immediately and without
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`issuing a final written
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`opinion. Although § 317(a) refers specifically to a post-institution proceeding, the
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`Board's regulatory authority to terminate trial is not limited and may therefore be
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`exercised even pre-institution. See 37 C.F.R. 42.72 ("The Board may terminate a
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`trial without rendering a final written decision, where appropriate....").
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`The parties are filing, concurrently herewith a true copy of their Settlement
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`Agreement (executed on April 19, 2017) as Exhibit 2001.1
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`The parties further request, pursuant to 37 C.F.R. § 42.74(c), that this
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`agreement (Ex. 2001) be treated as confidential business information and be kept
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`separate from the files of the involved patent. The parties are filing, concurrently
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`herewith, a motion to seal pursuant to 35 U.S.C. § 327(b) and 37 C.F.R. § 42.74(c).
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`1 The Settlement Agreement has been filed electronically via E2E for “Board
`Only” to preserve confidentiality. Filing under the designation “Board Only was
`authorized by the Board on April 21, 2017.
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`Respectfully submitted,
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`Dated: April 26, 2017
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`Dated: April 26, 2017
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`/Joseph R. Robinson/
`Joseph R. Robinson, PTO Reg. No. 33,448
`Robert Schaffer, PTO Reg. No. 31,194
`Dustin B. Weeks, PTO Reg. No. 67,466
`Attorneys for Patent Owner
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`/Marc R. Wezowski/
`Marc R. Wezowski, Reg. No. 73,825
`Philip D. Segrest, Reg. No. 39,021
`Attorneys for Petitioner
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a copy of the foregoing JOINT
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`NOTICE OF SETTLEMENT, REQUEST TO TERMINATE AND REQUEST TO
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`KEEP SEPARATE UNDER 37 C.F.R. § 42.74 (c) has been served on attorneys for
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`Petitioner, via electronic mail on April 26, 2017, to the following addresses
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`provided by Petitioner:
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`marc.wezowski@huschblackwell.com
`philip.segrest@huschblackwell.com
`IPR2015-Amerigen1@huschblackwell.com
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`Respectfully submitted,
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`Dated: April 26, 2017
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`/Dustin B. Weeks/
`Dustin B. Weeks, PTO Reg. No. 67,466
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