UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`Taro Pharmaceuticals U.S.A., Inc.
`Petitioner,
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`v.
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`Apotex Technologies, Inc.
`Patent Owner
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`Case No.: IPR2017-01446
`Patent No. 7,049,328
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`JOINT MOTION TO TERMINATE INTER PARTES REVIEW
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`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`Taro Pharmaceuticals U.S.A., Inc.
`Petitioner,
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`v.
`
`Apotex Technologies, Inc.
`Patent Owner
`
`
`Case No.: IPR2017-01446
`Patent No. 7,049,328
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`
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`
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`JOINT MOTION TO TERMINATE INTER PARTES REVIEW
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`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`TABLE OF CONTENTS
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`Page
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`I. STATEMENT OF RELIEF REQUESTED ................................................................................. 1
`II.
`STATEMENT OF FACTS ....................................................................................................... 1
`III. RELATED LITIGATION ........................................................................................................ 2
`IV. ARGUMENT ............................................................................................................................ 2
`A.
`The Board Should Terminate this IPR in its Entirety ........................................................... 3
`B. Written Settlement Agreement .............................................................................................. 5
`V.
`CONCLUSION ......................................................................................................................... 5
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`Cases
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`TABLE OF AUTHORITIES
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`Page(s)
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`Apex Med. Corp. v. Resmed Ltd.,
`IPR2013-00512, Paper 39 (P.T.A.B. Sept. 12, 2014) ................................................................4
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`Plaid Techs., Inc. v. Yodlee, Inc.,
`IPR2016-00273, Paper 29 (P.T.A.B. Feb. 8, 2017) ...................................................................4
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`Toyota Motor Corp. v. Blitzsafe Tex. LLC,
`IPR2016-00421, Paper 28 (P.T.A.B. Feb. 21, 2017) .................................................................4
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`Volution, Inc. v. Versata Software, Inc.,
`CBM2013-00018, Paper 52 (P.T.A.B. June 17, 2014) ..............................................................4
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`Statutes
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`35 U.S.C. 317(a) ..............................................................................................................................3
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`35 U.S.C. § 317 ................................................................................................................................3
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`35 U.S.C. § 317(a) .......................................................................................................................1, 2
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`35 U.S.C. § 317(b) ...........................................................................................................................5
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`Other Authorities
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`37 C.F.R. § 42.72 .............................................................................................................................3
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`37 C.F.R. § 42.74(c).....................................................................................................................1, 5
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`37 C.F.R. § 42.74(c), and a ..............................................................................................................5
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`37 C.F.R. § 42.107 ...........................................................................................................................1
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`77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012)..................................................................................3
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`2
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`I.
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`STATEMENT OF RELIEF REQUESTED
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`Pursuant to 35 U.S.C. § 317(a), Taro Pharmaceuticals USA, Inc. (“Taro” or
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`“Petitioner”) and Apotex Technologies, Inc. (“Apotex” or “Patent Owner”) jointly
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`move that the Board terminate this inter partes review (IPR) proceeding, which is
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`directed at U.S. Patent No. 7,049,328 (“the ’328 patent”), in its entirety as a result
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`of settlement between Petitioner and Patent Owner. See Ex. 1069 (Confidential).
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`The parties are concurrently filing a separate request that the settlement
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`agreement (Ex. 1069) 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
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`Petitioner filed this IPR petition on May 16, 2017. On September 11, 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 22, 2018, Patent Owner filed its Patent Owner Response. On July 17,
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`2018, per the parties’ respective requests, the Board ordered Oral Argument for
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`August 9, 2018. See Paper No. 58. On August 6, 2018, the Board granted the
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`parties’ request to file this motion and informed the parties that it would be issuing
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`an order cancelling oral argument and any related deadlines in due course.
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`On August 6, 2018, Petitioner and Patent Owner entered into a settlement
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`agreement. See Ex. 1069 (Confidential). Under the terms of the settlement
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`agreement, the parties agreed to jointly seek termination of IPR2017-01446, and
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`the parties agreed to dismiss related district court litigation, ApoPharma Inc. et al.
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`v. Taro Pharmaceutical Industries et al., Civil Action No. 2:16-cv-00528 (E.D.
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`Tex, filed May 18, 2016). Thus, this settlement agreement resolves all currently
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`pending Patent Office and District Court proceedings between the parties involving
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`the ’328 patent.
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`III. RELATED LITIGATION
`The following currently pending district court litigation proceedings involve
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`the ’328 patent:
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`(a) ApoPharma Inc. et al. v. Taro Pharmaceutical Industries et al., Civil
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`Action No. 2:16-cv-00528 (E.D. Tex, filed May 18, 2016). The
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`Complaint asserts infringement of U.S. Patent No. 7,049,328.
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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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`2
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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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`U.S.C. 317(a).” The Trial Practice Guide additionally counsels that “[t]here are
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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 yet to render a final
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`decision in this matter, and the parties have jointly requested the Board terminate
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`the proceeding in light of their settlement agreement. Ex. 1069 (Confidential).
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`Thus, the Board should terminate the proceeding with respect to Taro, the sole
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`Petitioner in this proceeding. Moreover, because no petitioner remains after
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`termination with respect to Taro, the Board should exercise its discretion and
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`terminate review in its entirety under 35 U.S.C. § 317.
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`3
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`The Board has terminated entire IPR proceedings based on joint motions to
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`terminate before institution, and even after the merits had been fully briefed and
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`the matter was ready for oral argument. See Toyota Motor Corp. v. Blitzsafe Tex.
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`LLC, IPR2016-00421, Paper 28, at 2-3 (P.T.A.B. Feb. 21, 2017) (granting motion
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`to terminate even after all substantive papers were filed, “particularly in light of the
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`fact that a final written decision is not due until more than four months from
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`now”); Plaid Techs., Inc. v. Yodlee, Inc., IPR2016-00273, Paper 29, at 2 (P.T.A.B.
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`Feb. 8, 2017) (granting motion to terminate because “[t]he parties’ joint motions to
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`terminate were filed prior to the oral hearings in these cases”); Apex Med. Corp. v.
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`Resmed Ltd., IPR2013-00512, Paper 39, at 2 (P.T.A.B. Sept. 12, 2014) (granting
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`joint motion to terminate after the parties had fully briefed the matter because “the
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`record is not yet closed, and the Board has not yet decided the merits of this
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`proceeding.”); Volution, Inc. v. Versata Software, Inc., CBM2013-00018, Paper
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`52, at 2-3 (P.T.A.B. June 17, 2014) (granting motion to terminate after oral
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`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. The parties now jointly seek termination of the
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`proceeding. Accordingly, termination of the instant IPR at this stage is appropriate
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`under PTAB precedent and would save the Board significant administrative and
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`judicial resources in issuing a final written decision. If the present motion is not
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`4
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`granted and the instant IPR is not terminated, Petitioner has agreed to no longer
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`contest the validity of the ’328 patent per the terms of the parties’ settlement
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`agreement. See Ex. 1069 (Confidential).
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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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`1069 a true copy of the complete settlement agreement entered between the parties
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`on August, 6, 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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`information it contains. The parties desire that the settlement agreement be
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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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`Dated: August 6, 2018
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`Respectfully submitted,
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`/W. Blake Coblentz/
`W. Blake Coblentz (Reg. No. 57,104)
`Aaron Lukas (Reg. No. 59,443)
`Barry Golob (pro hac vice)
`COZEN O’CONNOR
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`/Huiya Wu/
`Huiya Wu (Reg. No. 44,411)
`Sarah Fink (Reg. No. 64,886)
`GOODWIN PROCTER LLP
`620 Eighth Avenue
`5
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`
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`1200 Nineteenth Street, N.W.
`Washington, D.C. 20036
`Phone: (202) 912-4837
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`Counsel for Patent Owner
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`New York, NY 10018
`Phone: (212) 813-8800
`Fax: (212) 355-3333
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`Counsel for Petitioner
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`6
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), I certify that on this August 6, 2018, I
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`caused to be served a true and correct copy of the foregoing “JOINT MOTION TO
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`TERMINATE INTER PARTES REVIEW” via electronic mail on the following
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`By: /Ryan Curiel/
` Ryan Curiel
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`attorneys of record:
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`W. Blake Coblentz
`Aaron S. Lukas
`Barry Golob
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`Email:
`wcoblentz@cozen.com
`alukas@cozen.com
`bgolob@cozen.com
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