`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`
`WATSON LABORATORIES, INC.
`Petitioner
`
`v.
`
`UNITED THERAPEUTICS CORP.
`Patent Owner
`
`
`
`Patent No. 9,358,240
`Issue Date: June 7, 2016
`Patent No. 9,339,507
`Issue Date: May 17, 2016
`
`Title: TREPROSTINIL ADMINISTRATION BY INHALATION
`_______________
`
`Inter Partes Review No. 2017-01621
`Inter Partes Review No. 2017-01622
`____________________________________________________________
`
`JOINT MOTION TO TERMINATE PROCEEDINGS
`PURSUANT TO 35 U.S.C. § 3171
`
`
`
`
`
`
`
`1 A word-for-word identical document is being filed in IPR2017-01621 and
`IPR2017-1622.
`
`4812-6462-9872.1
`
`
`
`IPR2017-01621
`IPR2017-01622
`
`
`
`
`Joint Motion to Terminate
`
`As authorized in the Patent Trial and Appeal Board’s email dated August 14,
`
`2018 and pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. §§ 42.72 and 42.74, Patent
`
`Owner and Petitioner jointly and respectfully request that the inter partes reviews
`
`(IPR2017-01621 & IPR2017-01622) of U.S. Patent No. 9,358,240 (“the ’240
`
`patent”) and U.S. Patent No. 9,339,507 (“the ’507 patent”) be terminated.
`
`I.
`
`Statement of Relief Requested
`
`Pursuant to 35 U.S.C. § 317, 37 C.F.R. § 42.72, and 37 C.F.R. § 42.74, and
`
`pursuant to the authorization to file this motion provided by the Board’s email to
`
`the parties on August 14, 2018, Petitioner Watson Laboratories, Inc. and Patent
`
`Owner United Therapeutics Corp. (collectively, the “Parties”) jointly request the
`
`termination of the inter partes reviews of the ’240 patent and the ’507 patent in
`
`their entirety as a result of settlement between the Parties.
`
`The Parties have settled their dispute and executed a settlement agreement to
`
`terminate these inter partes reviews. The Parties’ settlement agreement has been
`
`made in writing, and a true and correct copy is being filed concurrently herewith as
`
`Exhibit 2212 (“Settlement Agreement”). The Parties are also filing concurrently
`
`herewith a joint request to treat the settlement agreement as business confidential
`
`information and keep it separate from the files of the inter partes reviews and the
`
`involved patents pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b) and (c).
`
`4812-6462-9872.1
`
`2
`
`
`
`IPR2017-01621
`IPR2017-01622
`
`II.
`
`
`
`Joint Motion to Terminate
`
`Statement of Facts
`Petitioner filed petitions requesting inter partes reviews of the ’240 patent
`
`and the ’507 patent on June 21, 2017. On January 11, 2018, the Board instituted
`
`review on claims 1-9 of the ’240 and claims 1-9 of the ’507 patent – in each case,
`
`on a single ground. Patent Owner submitted its responses based on these
`
`institution decisions on April 27, 2018. On April 30, 2018, the Board instituted
`
`review on the remaining grounds in both proceedings. Patent Owner submitted
`
`supplementary responses in both proceedings on July 11, 2018. On August 8,
`
`2018, the Parties entered into a settlement agreement in which they agreed to
`
`terminate these inter partes reviews. See Ex. 2212. Petitioner has not replied to
`
`Patent Owner’s Responses, nor has Petitioner deposed Patent Owner’s Declarants.
`
`The Board has not yet decided the merits of these pending proceedings.
`
`III. Argument
`35 U.S.C. § 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).
`
`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
`
`4812-6462-9872.1
`
`3
`
`
`
`IPR2017-01621
`IPR2017-01622
`
`trial is consolidated with another proceeding or pursuant to a joint request under 35
`
`Joint Motion to Terminate
`
`
`
`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).
`
`As noted in the Statement of Facts, oral argument has not yet occurred, nor
`
`has Petitioner replied to the Patent Owner’s Responses or deposed Patent Owner’s
`
`Declarants. Thus, the Board has not yet “decided the merits of the proceeding
`
`before the request for termination is filed.” 35 U.S.C. § 317(a); 77 Fed. Reg. at
`
`48,768 (“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.”). Furthermore, Petitioner will not participate in further proceedings
`
`should the inter partes reviews not be terminated. The Parties are unaware of any
`
`other matter before the Board that would be affected by the outcome of this
`
`proceeding.
`
`As required by the Settlement Agreement, the Parties are dismissing all
`
`other proceedings related to the challenged patents, i.e. United Therapeutics Corp.
`4
`
`4812-6462-9872.1
`
`
`
`IPR2017-01621
`IPR2017-01622
`
`v. Watson Laboratories, Inc., Civil Action No. 3:15cv-05723-PGS-LHG. Thus, no
`
`Joint Motion to Terminate
`
`
`
`dispute remains between the Parties involving the ’240 patent and the ’507 patent.
`
`Further, because 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 and limit unnecessary and counterproductive
`
`litigation costs. Termination would also further AIA’s purpose of providing an
`
`efficient and less costly alternative forum for patent disputes and its
`
`encouragement for settlement.
`
`Accordingly, the Parties respectfully request that the Board terminate the
`
`inter partes reviews of the ’240 patent and the ’507 patent.
`
`Dated: August 21, 2018
`
`/Michael K. Nutter/
`
`Michael K. Nutter
`Registration No. 44,979
`
`Kurt A. Mathas
`
`WINSTON & STRAWN LLP
`35 W. Wacker Dr.
`Chicago, IL 60601
`
`Andrew R. Sommer
`Registration No. 53,932
`
`WINSTON & STRAWN LLP
`1700 K Street, N.W.
`Washington, DC 20006-3817
`
`Respectfully submitted,
`
`/Stephen B. Maebius/
`
`Stephen B. Maebius
`Registration No. 35,264
`
`George E. Quillin
`Registration No. 32,792
`
`Foley & Lardner LLP
`3000 K Street, N.W.
`Suite 600
`Washington, D.C. 20007
`
`Shaun R. Snader
`Registration No. 59,987
`
`United Therapeutics Corporation
`
`4812-6462-9872.1
`
`5
`
`
`
`IPR2017-01621
`IPR2017-01622
`
`
`Counsel for Petitioner
`
`
`
`
`
`Joint Motion to Terminate
`
`1735 Connecticut Avenue, N.W.
`Second Floor
`Washington, DC 20009
`
`Counsel for Patent Owner
`
`4812-6462-9872.1
`
`6
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies that a copy of the foregoing Joint Motion to
`
`Terminate and accompanying Exhibit 2212 are being served on August 21, 2018,
`
`by filing them through the PTAB E2E System as well as delivering copies via
`
`email to the following counsel for the Petitioner:
`
`Michael K. Nutter (Reg. No. 44,979)
`WINSTON & STRAWN LLP
`35 W. Wacker Dr.
`Chicago, IL 60601
`Email: mnutter@winston.com
`
`Andrew R. Sommer (Reg. No. 53,932)
`WINSTON & STRAWN LLP
`1700 K Street, N.W.
`Washington, DC 20006-3817
`Email: asommer@winston.com
`
`Kurt A. Mathas
`WINSTON & STRAWN LLP
`35 W. Wacker Dr.
`Chicago, IL 60601
`Email: kmathas@winston.com
`
`
`
`4812-6462-9872.1
`
`/Stephen B. Maebius/
`Stephen B. Maebius
`Registration No. 35,264
`
`George E. Quillin
`Registration No. 32,792
`
`Shaun R. Snader
`Registration No. 59,987
`
`Counsel for Patent Owner
`
`
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