UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________________
`
`ACTAVIS LLC
`Petitioner,
`
`v.
`
`ABRAXIS BIOSCIENCE, LLC
`Patent Owner
`_______________________
`
`Case IPR2017-01101
`Case IPR2017-01103
`Case IPR2017-01104
`
`U.S. Patent 7,820,788
`U.S. Patent 7,923,536
`U.S. Patent 8,138,229
`_______________________
`
`JOINT MOTION TO TERMINATE
`PURSUANT TO 35 U.S.C. § 317 AND 37 C.F.R. § 42.74
`
`
`_______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________________
`
`ACTAVIS LLC
`Petitioner,
`
`v.
`
`ABRAXIS BIOSCIENCE, LLC
`Patent Owner
`_______________________
`
`Case IPR2017-01101
`Case IPR2017-01103
`Case IPR2017-01104
`
`U.S. Patent 7,820,788
`U.S. Patent 7,923,536
`U.S. Patent 8,138,229
`_______________________
`
`JOINT MOTION TO TERMINATE
`PURSUANT TO 35 U.S.C. § 317 AND 37 C.F.R. § 42.74
`
`
`
`Pursuant to 35 U.S.C. § 317, 37 C.F.R. §§ 42.72 and 42.74, and the Board’s
`
`authorization of January 26, 2018, Petitioner Actavis LLC (“Petitioner” or
`
`“Actavis”) and Patent Owner Abraxis Bioscience, LLC (“Patent Owner”) jointly
`
`move to terminate the present inter partes review proceeding in light of Patent
`
`Owner and Petitioner’s settlement of their disputes.
`
`Petitioner and Patent Owner are concurrently filing a true and complete copy
`
`of their confidential written settlement materials (with exhibits, Confidential
`
`Exhibit 2066) in connection with this matter as required by statute. Petitioner and
`
`Patent Owner certify that there are no other agreements or understandings, oral or
`
`written, between the parties, including any collateral agreements, made in
`
`connection with, or in contemplation of, the termination of the present proceeding.
`
`A joint request to treat the settlement materials (with exhibits, Confidential Exhibit
`
`2066) as business confidential information kept separate from the file of the
`
`involved patent pursuant to 35 U.S.C. § 317(b) is being filed concurrently.
`
`LEGAL STANDARD
`
`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.” 35 U.S.C. § 317(a). 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
`
`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 (P.T.A.B. July 28, 2014).
`
`ARGUMENT
`
`Termination of the present inter partes review proceeding is appropriate
`
`because (1) Petitioner and Patent Owner have settled their disputes and have
`
`agreed to terminate the proceeding, (2) the Office has not yet decided the merits of
`
`the proceeding, and (3) public policy favors the termination.
`
`First, the parties’ settlement completely resolves the controversy between
`
`Patent Owner and Petitioner relating to the ’788, ’536, and ’229 patents. Actavis,
`
`which is the real party in interest in the present proceeding, was named defendant
`
`in Abraxis BioScience, LLC, et al. v. Actavis LLC, No. 16-1925 (D.N.J.). On
`
`January 26, 2018, the parties filed a Consent Judgment requesting that all claims
`
`against Actavis and all counterclaims by Actavis be dismissed with prejudice.
`
`Second, the Office has not decided the merits of the proceeding. Although
`
`the Board has instituted trial (Paper 7), the proceeding is still in the briefing stage
`
`and there is no determination of whether an oral hearing will occur. A joint
`
`stipulation to extend Due Dates 1-2 was filed on January 8, 2018. (Paper 20).
`
`- 2 -
`
`
`
`Third, public policy favors the termination. As recognized by the rules of
`
`practice before the 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.
`
`Patent Office Trial Practice Guide, Fed. Register, Vol. 77, No. 157 at 48768
`
`(Aug. 14, 2012). Moreover, no public interest or other factors militate against
`
`termination of this proceeding.
`
`As to the remaining Heartland Tanning requirements, Exhibit A identifies
`
`each district court litigation, and all petitions for Inter Partes Review that have
`
`been filed against the ’788, ’536, and ’229 patents or other related patents, and
`
`discusses the status of each case.
`
`CONCLUSION
`
`For the foregoing reasons, Petitioner and Patent Owner jointly and
`
`respectfully request that the instant proceeding be terminated.
`
`
`
`
`
`
`
`- 3 -
`
`
`
`
`
`Date: January 29, 2018
`
`
`
`
`/Samuel S. Park /
`Samuel S. Park, (Reg. No.
`59,656)
`George C. Lombardi
`Charles B. Klein
`Kevin E. Warner
`Eimeric Reig-Plessis
`WINSTON & STRAWN LLP
`35 W. Wacker Drive
`Chicago, IL 60601
`312-558-7931
`AbraxaneIPR@winston.com
`
`Counsel for Petitioner
`Actavis LLC
`
`Respectfully submitted,
`
`
`
`
` /Christopher J. Harnett/
`Christopher J. Harnett (Reg. No. 35,538)
`Anthony M. Insogna (Reg. No. 35,203)
`Cary Miller, Ph.D. (Reg. No. 54,708)
`Lisamarie LoGiudice, Ph.D. (Reg. No. 71,047)
`JONES DAY
`250 Vesey Street
`New York, NY 10281-10147
`Tel: (212) 326-3939
`Fax: (212)-755-7306
`charnett@jonesday.com
`aminsogna@jonesday.com
`cmiller@jonesday.com
`llogiudice@jonesday.com
`
`F. Dominic Cerrito (Reg. No. 38,100)
`Andrew S. Chalson (pro hac vice)
`Frank C. Calvosa (Reg. No. 69,064)
`Daniel Wiesner (pro hac vice)
`QUINN EMANUEL URQUHART &
`SULLIVAN, LLP
`51 Madison Avenue, 22nd Floor
`New York, NY 10010
`General Tel: (212) 849-7000
`Direct Tel: (212) 849-7450
`Fax: (212) 849-7100
`nickcerrito@quinnemanuel.com
`andrewchalson@quinnemanuel.com
`frankcalvosa@quinnemanuel.com
`danielwiesner@quinnemanuel.com
`
`
`Counsel for Patent Holder
`Abraxis Bioscience, LLC
`
`
`
`- 4 -
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`The undersigned certifies that on the date indicated below a copy of the
`
`foregoing Joint Motion To Terminate Pursuant To 35 U.S.C. § 317 And 37 C.F.R.
`
`§ 42.74 was served electronically by filing these documents through the PTAB
`
`E2E System, as well as by e-mailing copies to the following counsel of record for
`
`Petitioner Actavis LLC:
`
`Lead Counsel
`Samuel S. Park, Reg. No. 59,656
`WINSTON & STRAWN LLP
`35 W. Wacker Drive
`Chicago, IL 60601
`312-558-7931
`AbraxaneIPR@winston.com
`
`
`Date: January 29, 2018
`
`
`
`Backup Counsel
`George C. Lombardi
`Charles B. Klein
`Kevin E. Warner
`Eimeric Reig-Plessis
`WINSTON & STRAWN LLP
`35 W. Wacker Drive
`Chicago, IL 60601
`312-558-7931
`AbraxaneIPR@winston.com
`
`
`
`
`
`
`
`/Lisamarie LoGiudice/
`Lisamarie LoGiudice
`JONES DAY
`250 Vesey Street
`New York, NY 10281-10147
`Tel: (212) 326-3939
`Fax: (212)-755-7306
`
`Counsel for Patent Holder
`Abraxis Bioscience, LLC
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`EXHIBIT A
`
`EXHIBIT A
`
`
`
`
`
`Status
`Pending
`
`Pending
`
`Not
`instituted
`Instituted
`
`Instituted
`
`Instituted
`
`EXHIBIT A
`
`Status of District Court Litigation or PTAB Proceedings
` Involving U.S. Patent Nos. 7,820,788; 7,923,536; 8,138,229 or Related Patents
`
`Case Caption
`Abraxis Bioscience, LLC et al., v. Actavis LLC, Case No. 2:16-cv-01925-
`JMV-MF (D.N.J.)
`Abraxis Bioscience, LLC et al., v. Cipla Ltd., Case No. 2:16-cv-09074-JMV-
`MF (D.N.J.)
`Actavis LLC v. Abraxis Bioscience, LLC, IPR2017-01100
`(U.S. Patent No. 8,853,260)
`Actavis LLC v. Abraxis Bioscience, LLC, IPR2017-01101
`(U.S. Patent No. 7,820,788)
`Actavis LLC v. Abraxis Bioscience, LLC, IPR2017-01103
`(U.S. Patent No. 7,923,536)
`Actavis LLC v. Abraxis Bioscience, LLC, IPR2017-01104
`(U.S. Patent No. 8,138,229)
`Apotex Inc. and Apotex Corp. v. Abraxis Bioscience, LLC, IPR2018-00151
`(U.S. Patent No. 8,138,229)
`Apotex Inc. and Apotex Corp. v. Abraxis Bioscience, LLC, IPR2018-00152
`(U.S. Patent No. 7,820,788)
`Apotex Inc. and Apotex Corp. v. Abraxis Bioscience, LLC, IPR2018-00153
`(U.S. Patent No. 7,923,536)
`Cipla Ltd. v. Abraxis Bioscience, LLC, IPR2018-00162
`(U.S. Patent No. 7,820,788)
`Cipla Ltd. v. Abraxis Bioscience, LLC, IPR2018-00163
`(U.S. Patent No. 7,923,536)
`Cipla Ltd. v. Abraxis Bioscience, LLC, IPR2018-00164
`(U.S. Patent No. 8,138,229)
`
`
`Pending
`
`Pending
`
`Pending
`
`Pending
`
`Pending
`
`Pending
`
`
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