`
`
`
`
`
`Case IPR2017-01434
`US Patent No. 5,886,035
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`
`MICRO LABS LIMITED AND MICRO LABS USA INC.
`Petitioners,
`
`v.
`
`SANTEN PHARMACEUTICAL CO., LTD. AND ASAHI GLASS CO., LTD.
`Patent Owners.
`
`____________
`
`
`Case IPR2017-01434
`U.S. Patent No. 5,886,035
`
`____________
`
`
`JOINT MOTION TO TERMINATE PROCEEDINGS
`PURSUANT TO 35 U.S.C. § 317(a)
`
`
`
`
`
`
`
`
`
`
`
` Pursuant to 35 U.S.C. § 317(a), 37 C.F.R. §§ 42.72 and 42.74, and the
`
`
`
`
`Case IPR2017-01434
`US Patent No. 5,886,035
`
`November 26, 2018 email correspondence where the Board authorized this filing,
`
`Petitioners Micro Labs Limited and Micro Labs USA Inc. and Patent Owners
`
`Santen Pharmaceutical Co., Ltd. and Asahi Glass Co., Ltd. (together, “the Parties”)
`
`jointly request termination of this proceeding seeking inter partes review of U.S.
`
`Patent No. 5,886,035 (“the ’035 Patent”).
`
`I.
`
`Statement of Facts
`
`
`
`The parties have resolved their dispute with respect to the ’035 Patent as
`
`described in the Agreement filed by the parties herewith as Exhibit 2066. The
`
`Agreement requires that the Parties cooperate in requesting that the Board
`
`terminate the current proceeding. In addition, the Parties are involved in a related
`
`district court litigation styled Santen Pharmaceutical Co. Ltd. v. Micro Labs
`
`Limited, Civil Action No. 16-353 (D. Del.), wherein a joint stipulation seeking
`
`dismissal of the litigation pursuant to the Agreement will be filed imminently with
`
`the Court. The ’035 Patent is not involved in any other litigation or other
`
`proceeding. Accordingly, the Agreement resolves all disputes between the Parties
`
`with respect to the ’035 Patent. Further, other than as indicated in the Agreement,
`
`there are no written or oral agreements or understandings, including any collateral
`
`agreements, between the Parties, including but not limited to licenses, covenants
`
`not to sue, confidentiality agreements, or other agreements of any kind, that are
`
`
`
`1
`
`
`
`
`
`
`
`
`
`Case IPR2017-01434
`US Patent No. 5,886,035
`
`made in connection with, or in contemplation of, the termination of this
`
`proceeding.
`
`The parties are also filing concurrently herewith a joint request to treat the
`
`Agreement as business confidential information and to keep it separate from the
`
`files of the IPR and the involved patent under 35 U.S.C. § 317(b) and 37 C.F.R. §
`
`42.74(c).
`
`II. Relief Requested
`
`
`
`The Parties respectfully request termination of this proceeding in its entirety
`
`as to both Petitioners and Patent Owners. Because the Board has not yet issued a
`
`final written decision in this proceeding, the Parties submit that termination of this
`
`proceeding is appropriate under 35 U.S.C. § 317(a). Further, the Parties submit
`
`that maintaining this proceeding after Petitioners’ settlement with Patent Owners
`
`would discourage future settlements, as it would create a strong disincentive for
`
`similarly situated patent owners to settle if they perceive that an inter partes review
`
`will likely continue regardless of a settlement.
`
`The Trial Practice Guide states that “[t]here are strong public policy reasons
`
`to favor settlement between the parties to a proceeding.” 77 Fed. Reg. 48756,
`
`48768 (August 14, 2012). The Trial Practice Guide further provides that “[t]he
`
`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.” Id.
`
`
`
`2
`
`
`
`
`
`
`
`
`The Board has granted joint motions to terminate in other proceedings under
`
`
`
`
`Case IPR2017-01434
`US Patent No. 5,886,035
`
`facts similar to those presented here. For example, in Apple Inc. v. Nagravision
`
`SA, the Board granted the motion to terminate where the matter was fully briefed
`
`and oral hearing had been held when the parties filed their joint motion to
`
`terminate. Apple Inc. v. Nagravision SA, IPR2015-00971, Paper 30 at 2-3 (PTAB
`
`Sept. 7, 2016). Likewise, in Cox Communications, Inc. v. AT&T Intellectual
`
`Property II, L.P., the Board granted the motion to terminate after oral argument
`
`had been conducted, stating that “there are strong public policy reasons to favor
`
`settlement between the parties to a proceeding” and “when . . . we have not entered
`
`a Final Written Decision on the merits, we generally expect that trial will terminate
`
`after the filing of a settlement agreement.” Cox Communications, Inc. v. AT&T
`
`Intellectual Property II, L.P., IPR2015-01536, Paper 65 at 3 (PTAB Dec. 8, 2016).
`
`The Board further agreed with the parties that “termination of the proceedings
`
`would save significant additional expenditures of resources by the Board and the
`
`parties, and would further serve the purpose of inter partes review proceedings to
`
`provide an efficient and less costly alternative forum for patent disputes.” Id.
`
`
`
` In light of the foregoing, the Parties respectfully submit that termination of
`
`this proceeding is warranted.
`
`III. Conclusion
`
`For the reasons above, Petitioners and Patent Owners jointly request that the
`
`3
`
`
`
`
`
`
`
`
`
`
`
`
`
`Case IPR2017-01434
`US Patent No. 5,886,035
`
`Board terminate this proceeding in its entirety as to both Petitioners and Patent
`
`Respectfully submitted,
`
`Owners.
`
`
`Dated: November 27, 2018
`
`
`
` /
`
`
`
`
`
` Arlene L. Chow /
`Arlene L. Chow
`Registration No. 47,489
`Eric J. Lobenfeld
`(pro hac vice)
`Ernest Yakob
`Registration No. 45,893
`Hogan Lovells US LLP
`875 Third Avenue
`New York, New York 10022
`Telephone: (212) 918-3000
`Fax: (212) 918-3100
`
`Counsel for Patent Owners
`Santen Pharmaceutical Co., Ltd.
`and Asahi Glass Co., Ltd.
`
` /
`
`
`
` Cedric C.Y. Tan /
`Cedric C.Y. Tan (Reg. No. 56,082)
`H. Keeto Sabharwal
`(admitted pro hac vice)
`Yun Wei (Reg. No. 70,744)
`Alton L. Hare (Reg. No. 68,638)
`PILLSBURY WINTHROP
`SHAW PITTMAN LLP
`1200 Seventeenth Street, NW
`Washington, DC 20036
`Tel.: (202) 663-8000
`Fax.: (202) 663-8007
`
`Sean M. Weinman (Reg. No. 69,515)
`PILLSBURY WINTHROP
`SHAW PITTMAN LLP
`1650 Tysons Boulevard, 14th Floor
`
`
`
`4
`
`
`
`
`
`
`
`
`
`Case IPR2017-01434
`US Patent No. 5,886,035
`
`McLean, VA 22102
`Tel.: (703) 770-7511
`Fax.: (703) 770-4856
`
`Counsel for Petitioners Micro Labs
`Limited and Micro Labs USA Inc.
`
`
`
`
`
`5
`
`
`
`
`
`
`
`
`
`Case IPR2017-01434
`US Patent No. 5,886,035
`
`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of the foregoing JOINT
`
`MOTION TO TERMINATE PROCEEDINGS PURSUANT TO 35 U.S.C. §
`
`317(a) was served on November 27, 2018, by filing this document through the
`
`Patent Trial and Appeal Board End to End System as well as delivering a copy via
`
`electronic mail upon the following attorneys of record for the Petitioners:
`
`Cedric C.Y. Tan, Reg. No. 56,082
`H. Keeto Sabharwal (pro hac vice)
`Yun Wei, Reg. No. 70,744
`Alton L. Hare, Reg. No. 68, 638
`PILLSBURY WINTHROP SHAW PITTMAN LLP
`1200 Seventeenth Street, NW
`Washington, DC 20036
`Tel.: (202) 663-8000
`Fax.: (202) 663-8007
`Email: cedric.tan@pillsburylaw.com
`Email: keeto.sabharwal@pillsburylaw.com
`Email: sophie.wei@pillsburylaw.com
`Email: alton.hare@pillsburylaw.com
`
`Sean M. Weinman, Reg. No. 69,515
`PILLSBURY WINTHROP SHAW PITTMAN LLP
`1650 Tysons Boulevard, 14th Floor
`McLean, VA 22102
`Tel.: (703) 770-7511
`Fax.: (703) 770-4856
`Email: sean.weinman@pillsburylaw.com
`
`MicroLabsIPR@pillsburylaw.com
`
`
`
`
`
`
`
`
`6
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Dated: November 27, 2018
`
`
`
`
`
`
`
`
`
`
`
`
`Case IPR2017-01434
`US Patent No. 5,886,035
`
`
`
`
`
`/ Arlene L. Chow /
`Arlene L. Chow
`Registration No. 47,489
`Hogan Lovells US LLP
`875 Third Avenue
`New York, New York 10022
`Telephone: (212) 918-3000
`Fax: (212) 918-3100
`
`Counsel for Patent Owners
`Santen Pharmaceutical Co., Ltd.
`and Asahi Glass Co., Ltd.
`
`
`
`
`7
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
