`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`___________________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________
`
`
`MYLAN PHARMACEUTICALS INC.,
`Petitioner,
`
`v.
`
`COSMO TECHNOLOGIES LIMITED,
`Patent Owner.
`
`U.S. Patent No. 9,320,716 to Villa et al.
`Issue Date: April 26, 2016
`Title: Controlled Release and Taste Masking Oral Pharmaceutical Compositions
`___________________
`
`
`Inter Partes Review No.: IPR2017-01035
`
`___________________
`
`JOINT MOTION TO TERMINATE PROCEEDINGS
`
`
`
`
`
`
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`10167053
`
`
`- 1 -
`
`
`
`

`

`
`
`
`
`I.
`
`Statement of Relief Requested
`Pursuant to 35 U.S.C. § 317(a), 37 C.F.R. § 42.72, and 37 C.F.R. § 42.74, and
`the Board’s authorization email dated November 15, 2017, Petitioner Mylan
`Pharmaceuticals, Inc. and Patent Owner Cosmo Technologies, Inc. jointly move that
`the Board terminate the above captioned inter partes review (IPR) proceeding in its
`entirety as a result of settlement between Petitioner and Patent Owner.
`Petitioner represents that it will no longer participate in this inter partes
`review and will file no further papers.
`The parties are filing concurrently herewith a separate request that the
`settlement agreement being filed herewith be treated as business confidential
`information and be kept separate from the files of the involved patent, pursuant to
`37 C.F.R. § 42.74(c).
`II.
`Statement of Facts
`Patent Owner brought a suit against Petitioner in the District Court for
`Delaware (No. 16-cv-00152), asserting that Petitioner infringed one or more claims
`of U.S. Patent No. 9,320,716, among other patents.
`Petitioner filed this IPR petition on March 9, 2017. On September 21, 2017,
`the Board instituted inter partes review of claims 1–29 of the ’716 patent. Pursuant
`to the concurrently issued scheduling order, merits briefing is to conclude on March
`20, 2018, while Oral Argument concerning the validity of the ’716 patent is to be
`held on June 15, 2018. The Board has not yet decided the merits of the pending IPR
`proceeding.
`On November 14, 2017, Petitioner, Defendants, and Patent Owner entered
`into a settlement agreement. See Ex. 2037 (Confidential). Under the terms of the
`settlement agreement, Patent Owner agrees to dismiss its infringement claim of U.S.
`Patent No. 9,320,716 against Petitioner and terminate the related district court
`litigation.
`
`
`
`
`- 2 -
`
`Case No. IPR2017-01035
`U.S. Patent 9,320,716
`
`

`

`
`
`
`
`III. Related District Court Litigation
`The parties’ settlement agreement, Exhibit 2037, has resolved litigation
`between Mylan and Cosmo in Cosmo Technologies Limited, Valeant
`Pharmaceuticals International, and Valeant Pharmaceuticals Luxembourg S.A. R.L.
`v. Mylan Pharmaceuticals Inc., 16-cv-00152 (D. Del.) (“Mylan Action”). U.S.
`Patent No. 9,320,716 is still currently the subject of Cosmo Technologies Limited,
`Valeant Pharmaceuticals International, and Valeant Pharmaceuticals Luxembourg
`S.A. R.L. v Lupin Ltd. and Lupin Pharmaceuticals, Inc., 15-cv-00669 (D. Del.),
`which is stayed.
`IV. Related Inter Partes Review
`Concurrently with the filing of this IPR No. IPR2017-01035 concerning the
`‘716 patent, Mylan also filed IPR No. IPR2017-01034 concerning U.S. Pat.
`No. 8,784,888. The ’888 patent is related to the ’716 patent. The Board granted the
`parties’ joint motion to terminate IPR No. IPR2017-01034 on September 20, 2017.
`Petitioner Argentum Pharmaceuticals LLC (“Argentum”) filed a petition
`concerning the ‘716 patent on October 20, 2017 and a motion for joinder to IPR No.
`IPR2017-01035. No substantive rulings have been made in that IPR proceeding.
`Argentum is not subject to any statutory bar under 35 U.S.C. § 315(b), and
`termination of this IPR proceeding would not prejudice Argentum.
`V. Argument
`Section 317(a) provides: “An inter partes review instituted under this chapter
`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.” 35 U.S.C. § 317(a). It further
`provides: “If no petitioner remains in the inter partes review, the Office may
`terminate the review or proceed to a final written decision under section 318(a).” Id.
`
`
`
`
`- 3 -
`
`Case No. IPR2017-01035
`U.S. Patent 9,320,716
`
`

`

`
`
`
`
`Similarly, 37 C.F.R. § 42.72 provides that “[t]he Board may terminate a trial
`without rendering a final written decision, where appropriate, including where the
`trial is consolidated with another proceeding or pursuant to a joint request under 35
`U.S.C. 317(a).”
`The Trial Practice Guide additionally counsels that “[t]here are strong public
`policy reasons to favor settlement between the parties to proceeding” and that 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. 35
`U.S.C. 317(a), as amended, and 35 U.S.C. 327.” Office Patent Trial Practice Guide,
`77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012).
`Petitioner represents that it will no longer participate in this inter partes
`review and will file no further papers. Petitioner has also agreed not to permit its
`expert witness, Dr. Anthony Palmieri, to assist Argentum or any other Petitioner in
`an IPR proceeding challenging the patent at issue.
`
`A. The Board Should Terminate This IPR Proceeding In Its Entirety
`As noted in the Statement of Facts, briefing on the merits will not conclude
`until March 20, 2018, while Oral argument, if held, will not occur until June 15,
`2018. Thus, the Board should terminate the proceedings with respect to Mylan, the
`sole Petitioner in this proceeding. Moreover, because no petitioner remains after
`termination with respect to Mylan, the Board should exercise its discretion and
`terminate review in its entirety under 35 U.S.C. § 317 and 37 C.F.R. §§ 42.72,
`42.74.
`In the past, the Board has terminated the entire proceedings based on joint
`motions to terminate even after the merits had been fully briefed and the matter was
`ready for oral argument, or even after oral argument. See Toyota Motor Corp. v.
`Blitzsafe Tex. LLC, IPR2016-00421, Paper 28 (Feb. 21, 2017) (granting motion to
`terminate even after all substantive papers were filed, “particularly in light of the
`
`
`
`
`- 4 -
`
`Case No. IPR2017-01035
`U.S. Patent 9,320,716
`
`

`

`
`
`
`
`fact that a final written decision is not due until more than four months from now”);
`Plaid Techs., Inc. v. Yodlee, Inc., IPR2016-00273, Paper 29 (Feb. 8, 2017) (granting
`motion to terminate because “the parties' joint motions to terminate were filed prior
`to the oral hearings in these cases”); Apex v. Resmed, IPR201-00512, Paper 39
`(Sept. 12, 2014) (granting joint motion to terminate after the parties had fully
`briefed the matter); Rackspace Hosting, Inc. v. Clouding IP, LLC, CBM2014-00034,
`Paper 28 (Dec. 9, 2014) (granting motion to terminate after close of evidentiary
`record and less than ten days before trial); Volution v. Versata Software, CMB2013-
`00018, Paper 52 (June 17, 2014) (granting motion to terminate after oral argument).
`Because the parties have yet to brief the merits of this case and the Board has
`yet to conduct an oral hearing and issue a decision on the merits, termination of the
`entire proceeding would save the Board significant administrative resources.
`Termination would also further the AIA’s purpose of providing an efficient and less
`costly alternative forum for patent dispute and its encouragement for settlement. The
`parties’ settlement saves the parties costs related to this inter partes review and also
`the related district court litigation involving infringement and invalidity claims
`concerning U.S. Patent No. 9,320,716.
`The parties understand that if the Board terminates this IPR with respect to
`Petitioner under 35 U.S.C. § 317(a), no estoppel under § 315(e) will attach to
`Petitioner, or Petitioner’s privy, based on Petitioner seeking this IPR. The parties
`also understand that if the Board terminates this IPR with respect to Petitioner
`before a final written decision on patentability, no estoppel will attach to Petitioner,
`or Petitioner’s privy, under 37 C.F.R. § 42.73(d)(1). The parties understand that if
`the Board terminates this IPR before a final written decision on patentability, no
`preclusion will attach to Patent Owner under 37 C.F.R. § 42.73(d)(3).
`
`
`
`
`- 5 -
`
`Case No. IPR2017-01035
`U.S. Patent 9,320,716
`
`

`

`
`
`
`
`B. Written Settlement Statement
`Pursuant to 37 C.F.R. § 42.74(c), the parties are filing herewith as
`Exhibit 2037 a true copy of the settlement agreement entered between the parties on
`November 14, 2017. The settlement agreement was entered into in contemplation of
`termination of this proceeding.
`VI. Conclusion
`Petitioner and Patent Owner respectfully request that the Board grant the
`parties’ Joint Motion to Terminate this proceeding in its entirety and grant the
`request to treat the settlement agreement between the parties as business confidential
`information.
`
`
`
`Dated: November 15, 2017
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`/s/ Gary Frischling
`
`
`Gary N. Frischling, Reg. No. 35,515
`Yite John Lu, Reg. No. 63,158
`Irell & Manella LLP
`
`Attorneys for Patent Owner
`Cosmo Technologies Limited
`
`
`
`
`- 6 -
`
`Case No. IPR2017-01035
`U.S. Patent 9,320,716
`
`

`

`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`
`Pursuant to 37 C.F.R. § 42.6, the undersigned certifies that on November 15,
`
`2017, a copy of the foregoing document was served upon the following, by email to:
`
`
`
`Jitendra Malik, Ph.D.
`Reg. No. 55,823
`jitty.malik@alston.com
`
`H. James Abe
`Reg. No. 61,182
`james.abe@alston.com
`
`Lance Soderstrom
`Reg. No. 65,405
`lance.soderstrom@alston.com
`
`Joseph M. Janusz
`Reg. No. 70,396
`joe.janusz@alston.com
`
`ALSTON & BIRD LLP
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`/s/ Susan Langworthy
`Susan M. Langworthy
`
`
`
`
`- 7 -
`
`Case No. IPR2017-01035
`U.S. Patent 9,320,716
`
`