UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`LUPIN LTD. AND LUPIN PHARMACEUTICALS INC.,
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`Petitioner
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`v.
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`HORIZON THERAPEUTICS, LLC,
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`Patent Owner
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`Case IPR2017-01159
`Patent 9,254,278
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`__________________
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`JOINT MOTION TO TERMINATE INTER PARTES REVIEW
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`LUPIN LTD. AND LUPIN PHARMACEUTICALS INC.,
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`Petitioner
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`v.
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`HORIZON THERAPEUTICS, LLC,
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`Patent Owner
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`Case IPR2017-01159
`Patent 9,254,278
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`__________________
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`JOINT MOTION TO TERMINATE INTER PARTES REVIEW
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`IPR2017-01159
`U.S. Patent No. 9,254,278
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`TABLE OF CONTENTS
`STATEMENT OF RELIEF REQUESTED .................................................... 1
`I.
`STATEMENT OF FACTS .............................................................................. 1
`II.
`III. RELATED LITIGATION AND INTER PARTES REVIEWS ...................... 3
`IV. ARGUMENT ................................................................................................... 5
`A.
`The Board Should Terminate this IPR in its Entirety ........................... 6
`B. Written Settlement Agreement .............................................................. 7
`CONCLUSION ................................................................................................ 8
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`V.
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`i
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`IPR2017-01159
`U.S. Patent No. 9,254,278
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`TABLE OF AUTHORITIES
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`Cases
`Apex Med. Corp. v. Resmed Ltd.,
` IPR2013-00512, Paper 39 (P.T.A.B. Sept. 12, 2014) ............................................ 7
`Plaid Techs., Inc. v. Yodlee, Inc.,
` IPR2016-00273, Paper 29 (P.T.A.B. Feb. 8, 2017) ............................................... 7
`Toyota Motor Corp. v. Blitzsafe Tex. LLC,
` IPR2016-00421, Paper 28 (P.T.A.B. Feb. 21, 2017) ............................................. 6
`Volution, Inc. v. Versata Software, Inc.,
` CBM2013-00018, Paper 52 (P.T.A.B. June 17, 2014) .......................................... 7
`Statutes
`35 U.S.C. § 317 .......................................................................................................... 6
`35 U.S.C. § 317(a) .................................................................................................1, 5
`35 U.S.C. § 317(b) ..................................................................................................... 8
`Other Authorities
`Office Patent Trial Practice Guide,
`77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012) ........................................................ 6
` Regulations
`37 C.F.R. § 42.107 ..................................................................................................... 1
`37 C.F.R. § 42.72 ...................................................................................................5, 6
`37 C.F.R. § 42.74 ....................................................................................................... 6
`37 C.F.R. § 42.74(c) .......................................................................................... 1, 7, 8
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`ii
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`
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`STATEMENT OF RELIEF REQUESTED
`Pursuant to 35 U.S.C. § 317(a), Lupin Ltd. and Lupin Pharmaceuticals Inc.
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`IPR2017-01159
`U.S. Patent No. 9,254,278
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`I.
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`(collectively “Lupin” or “Petitioner”) and Horizon Therapeutics, LLC (“Horizon”
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`or “Patent Owner”) jointly move that the Board terminate this inter partes review
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`(IPR) proceeding, which is directed at U.S. Patent No. 9,254,278 (“the ’278
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`patent”), in its entirety as a result of settlement between Petitioner and Patent
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`Owner. See Ex. 2054 (Confidential).
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`The parties are concurrently filing a separate request that the settlement
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`agreement (Ex. 2054) being filed herewith be treated as business confidential
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`information and be kept separate from the files of the involved patent, pursuant to
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`37 C.F.R. § 42.74(c).
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`II.
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`STATEMENT OF FACTS
`Petitioner filed this IPR petition on March 27, 2017. On July 24, 2017,
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`Patent Owner filed its Preliminary Response under 37 C.F.R. § 42.107. The Board
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`issued a decision instituting inter partes review on September 28, 2017. On
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`February 9, 2018, Patent Owner filed its Patent Owner Response. On June 14,
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`2018, per the parties’ respective requests, the Board ordered a consolidated Oral
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`Argument with IPR2017-01160, directed at related U.S. Patent 9,326,966 (“the
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`’966 patent”), for July 9, 2018. See Paper No. 33.
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`1
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`On June 27, 2018, Petitioner and Patent Owner entered into a settlement
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`IPR2017-01159
`U.S. Patent No. 9,254,278
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`agreement. See Ex. 2054 (Confidential). Under the terms of the settlement
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`agreement, the parties agreed to jointly seek termination of IPR2017-01159 as well
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`as related inter partes review IPR2017-01160, and the parties agreed to dismiss
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`related district court litigation, Horizon Therapeutics, Inc. v. Lupin Ltd. and Lupin
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`Pharmaceuticals Inc., Civil Action No. 1:15-cv-07624-RBK-JS (D.N.J. filed Oct.
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`19, 2015), and Horizon Therapeutics, Inc. v. Lupin Ltd. and Lupin
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`Pharmaceuticals Inc., Civil Action No. 1:16-cv-4438-RBK-JS (D.N.J. filed Jul.
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`21, 2016). Thus, this settlement agreement resolves all currently pending Patent
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`Office and District Court proceedings between the parties involving the ’278 patent
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`and related ’966 patent.
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`On July 5, 2018, per the request of the parties, the Board cancelled the oral
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`argument scheduled for July 9, 2018, and authorized the parties to file the instant
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`joint motion to terminate the proceedings by no later than July 13, 2018. See Paper
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`No. 35. Accordingly, no oral argument has been held and the Board has yet to
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`issue a final decision in this matter.
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`2
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`IPR2017-01159
`U.S. Patent No. 9,254,278
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`III. RELATED LITIGATION AND INTER PARTES REVIEWS
`The following currently pending district court litigation and inter partes
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`review proceedings involve the ’278 patent and/or are related to the instant IPR:
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`(a)
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`IPR2017-01160, petition filed on the same date as this petition, by the
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`present Petitioner, directed at the ’966 patent, which is a child of the
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`patent at issue in this case.
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`(b)
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`IPR2016-00829, petition filed April 1, 2016, by the present Petitioner,
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`directed at U.S. Patent 9,095,559 (“the ’559 patent”), which is the
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`parent of the patent at issue in this case. The Board instituted trial in
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`an institution decision dated September 30, 2016, and issued a final
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`written decision on September 26, 2017.
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`(c) Horizon Therapeutics, LLC v. Lupin Ltd. and Lupin Pharmaceutical,
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`Inc., Appeal No. 2018-1225 to the Federal Circuit from the Board’s
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`Final Written Decision in IPR No. IPR2016-00829 concerning the
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`’559 patent.
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`(d)
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`IPR2017-01767, directed at the ’278 patent, which is the patent at
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`issue in this case. The petition was filed on July 13, 2017, by Par
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`Pharmaceutical, Inc. and the Board issued a decision instituting trial
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`on January 30, 2018.
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`3
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`IPR2017-01768, directed at the ’559 patent, which is the parent of the
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`IPR2017-01159
`U.S. Patent No. 9,254,278
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`(e)
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`patent at issue in this case. The petition was filed on July 13, 2017, by
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`Par Pharmaceutical, Inc. and the Board issued a decision instituting
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`trial on January 30, 2018.
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`(f)
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`IPR2017-01769, directed at the ’966 patent, which is a child of the
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`patent at issue in this case. The petition was filed on July 13, 2017, by
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`Par Pharmaceutical, Inc. and the Board issued a decision instituting
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`trial on January 30, 2018.
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`(g) Horizon Therapeutics, Inc. v. Lupin Ltd. and Lupin Pharmaceuticals
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`Inc., Civil Action No. 1:15-cv-07624-RBK-JS (D.N.J. filed Oct. 19,
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`2015). The Complaint asserts infringement of the ’559 patent. On
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`November 16, 2016, the district court stayed that case pending
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`resolution of IPR2016-00829. On October 10, 2017, the district court
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`continued the stay pending the resolution of Horizon’s Appeal No.
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`2018-1225.
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`(h) Horizon Therapeutics Inc. v. Par Pharmaceutical Inc., Civil Action
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`No. 1:16-cv-3910-RBK-JS (D.N.J. filed June 30, 2016). The
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`Complaint asserts infringement of the ’559, ’278 and ’966 patents.
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`On November 18, 2016, the district court stayed that case pending
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`resolution of IPR2016-00829. On October 5, 2017, the district court
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`4
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`continued the stay pending the resolution of Horizon’s Appeal No.
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`IPR2017-01159
`U.S. Patent No. 9,254,278
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`2018-1225.
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`(i) Horizon Therapeutics, Inc. v. Lupin Ltd. and Lupin Pharmaceuticals
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`Inc., Civil Action No. 1:16-cv-4438-RBK-JS (D.N.J. filed Jul. 21,
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`2016). The Complaint asserts infringement of the ’278 and ’966
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`patents. On November 16, 2016, the district court stayed that case
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`pending resolution of IPR2016-00829. On October 10, 2017, the
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`district court continued the stay pending the resolution of IPR2017-
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`01159 and IPR2017-01160.
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`IV. ARGUMENT
`Section 317(a) provides: “An inter partes review instituted under this chapter
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`shall be terminated with respect to any petitioner upon the joint request of the
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`petitioner and the patent owner, unless the Office has decided the merits of the
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`proceeding before the request for termination is filed.” 35 U.S.C. § 317(a). It
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`further provides: “If no petitioner remains in the inter partes review, the Office
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`may terminate the review or proceed to a final written decision under section
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`318(a).” Id.
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`Similarly, 37 C.F.R. § 42.72 provides that “[t]he Board may terminate a trial
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`without rendering a final written decision, where appropriate, including where the
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`trial is consolidated with another proceeding or pursuant to a joint request under 35
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`5
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`U.S.C. 317(a).” The Trial Practice Guide additionally counsels that “[t]here are
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`IPR2017-01159
`U.S. Patent No. 9,254,278
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`strong public policy reasons to favor settlement between the parties to proceeding”
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`and that the Board “expects that a proceeding will terminate after the filing of a
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`settlement agreement, unless the Board has already decided the merits of the
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`proceeding.” Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768
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`(Aug. 14, 2012).
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`A. The Board Should Terminate this IPR in its Entirety
`As noted in the Statement of Facts, the Board has cancelled oral argument
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`and has yet to render a final decision in this matter, and the parties have jointly
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`requested the Board terminate the proceeding in light of their settlement
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`agreement. Ex. 2054 (Confidential). Thus, the Board should terminate the
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`proceeding with respect to Lupin, the sole Petitioner in this proceeding. Moreover,
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`because no petitioner remains after termination with respect to Lupin, the Board
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`should exercise its discretion and terminate review in its entirety under 35 U.S.C. §
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`317 and 37 C.F.R. §§ 42.72, 42.74.
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`The Board has terminated entire IPR proceedings based on joint motions to
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`terminate after the merits had been fully briefed and the matter was ready for oral
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`argument. See Toyota Motor Corp. v. Blitzsafe Tex. LLC, IPR2016-00421, Paper
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`28, at 2-3 (P.T.A.B. Feb. 21, 2017) (granting motion to terminate even after all
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`substantive papers were filed, “particularly in light of the fact that a final written
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`6
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`decision is not due until more than four months from now”); Plaid Techs., Inc. v.
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`IPR2017-01159
`U.S. Patent No. 9,254,278
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`Yodlee, Inc., IPR2016-00273, Paper 29, at 2 (P.T.A.B. Feb. 8, 2017) (granting
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`motion to terminate because “[t]he parties’ joint motions to terminate were filed
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`prior to the oral hearings in these cases”); Apex Med. Corp. v. Resmed Ltd.,
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`IPR2013-00512, Paper 39, at 2 (P.T.A.B. Sept. 12, 2014) (granting joint motion to
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`terminate after the parties had fully briefed the matter because “the record is not
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`yet closed, and the Board has not yet decided the merits of this proceeding.”);
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`Volution, Inc. v. Versata Software, Inc., CBM2013-00018, Paper 52, at 2-3
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`(P.T.A.B. June 17, 2014) (granting motion to terminate after oral argument).
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`Here, the parties entered into a settlement agreement in advance of the
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`scheduled date for oral argument, which was cancelled by the Board upon the
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`parties’ joint request. See Paper No. 35. The parties now jointly seek termination
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`of the proceeding. Accordingly, termination of the instant IPR at this stage is
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`appropriate under PTAB precedent and would save the Board significant
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`administrative and judicial resources in issuing a final written decision.
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`B. Written Settlement Agreement
`Pursuant to 37 C.F.R. § 42.74(c), the parties are filing herewith as Exhibit
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`2054 a true copy of the complete settlement agreement entered between the parties
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`on June 27, 2018. The settlement agreement has been filed for access by the
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`“Parties and Board Only” due to the highly sensitive business confidential
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`7
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`information it contains. The parties desire that the settlement agreement be
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`IPR2017-01159
`U.S. Patent No. 9,254,278
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`maintained as business confidential information under 35 U.S.C. § 317(b) and 37
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`C.F.R. § 42.74(c), and a separate joint request for such is being filed concurrently.
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`V. CONCLUSION
`Petitioner and Patent Owner respectfully request that the Board grant the
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`parties’ Joint Motion to Terminate this proceeding in its entirety and grant the
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`request to treat the settlement agreement between the parties as business
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`confidential information.
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` Respectfully submitted,
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` By: / M.C. Phillips /
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`Matthew C. Phillips
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`Registration No. 43,403
`Matthew C. Phillips
`Reg. No. 43,403
`Backup Counsel for Patent Owner
`LAURENCE & PHILLIPS IP LAW
`7327 SW Barnes Road #521
`Portland, Oregon 97225
`Phone: (503) 964-1129
`Fax: (703) 439-1624
`mphillips@lpiplaw.com
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`Date: 2018 July 9
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`Robert F. Green
`Reg. No. 27,555
`Lead Counsel for Patent Owner
`GREEN, GRIFFITH & BORG-BREEN, LLP
`City Place, Suite 3900
`676 N Michigan Avenue
`Chicago, Illinois 60611
`Phone: (312) 883-8000
`Fax: (312) 883-8001
`rgreen@greengriffith.com
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`8
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`IPR2017-01159
`U.S. Patent No. 9,254,278
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` By: / Elizabeth J. Holland /
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` Elizabeth J. Holland
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` Registration No. 47,657
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`Cynthia Lambert Hardman
`Reg. No. 53,179
`Backup Counsel for Petitioner
`GOODWIN PROCTER LLP
`The New York Times Building
`620 Eighth Avenue
`New York, NY 10018-1405
`chardman@goodwinlaw.com
`Tel: 212-459-7295
`Fax: 212-355-3333
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`Date: 2018 July 9
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`
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`Elizabeth J. Holland
`Reg. No. 47,657
`Lead Counsel for Petitioner
`GOODWIN PROCTER LLP
`The New York Times Building
`620 Eighth Avenue
`New York, NY 10018-1405
`eholland@goodwinlaw.com
`Tel: 212-459-7230
`Fax: 212-355-3333
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`9
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`IPR2017-01159
`U.S. Patent No. 9,254,278
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`CERTIFICATE OF SERVICE
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`I certify that on July 9, 2018, the foregoing JOINT MOTION TO
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`TERMINATE INTER PARTES REVIEW, including all papers filed therewith,
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`have been served on the petitioner’s counsel of record via email, as agreed to by
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`counsel, as follows:
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`Elizabeth J. Holland: EHolland@goodwinlaw.com
`Cynthia Lambert Hardman: CHardman@goodwinlaw.com
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`By: / M.C. Phillips /
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`Matthew C. Phillips
`Registration No. 43,403
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`10
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