UNITED STATES PATENT AND TRADEMARK OFFICE
`
`__________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`__________
`
`
`PAR PHARMACEUTICAL, INC.,
`Petitioner
`
`v.
`
`HORIZON THERAPEUTICS, LLC,
`Patent Owner
`
`__________________
`
`
`Case IPR2017-01767
`Patent 9,254,278
`
`__________________
`
`
`JOINT MOTION TO TERMINATE INTER PARTES REVIEW
`
`
`
`
`
`
`
`
`
`__________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`__________
`
`
`PAR PHARMACEUTICAL, INC.,
`Petitioner
`
`v.
`
`HORIZON THERAPEUTICS, LLC,
`Patent Owner
`
`__________________
`
`
`Case IPR2017-01767
`Patent 9,254,278
`
`__________________
`
`
`JOINT MOTION TO TERMINATE INTER PARTES REVIEW
`
`
`
`
`
`
`
`
`
`IPR2017-01767
`U.S. Patent No. 9,254,278
`
`
`TABLE OF CONTENTS
`STATEMENT OF RELIEF REQUESTED .................................................... 1
`I.
`STATEMENT OF FACTS .............................................................................. 1
`II.
`III. RELATED LITIGATION AND INTER PARTES REVIEWS ...................... 3
`IV. ARGUMENT ................................................................................................... 4
`A.
`The Board Should Terminate this IPR in its Entirety ........................... 5
`B. Written Settlement Agreement .............................................................. 7
`CONCLUSION ................................................................................................ 7
`
`V.
`
`
`
`
`
`
`i
`
`
`
`IPR2017-01767
`U.S. Patent No. 9,254,278
`
`
`TABLE OF AUTHORITIES
`
`Cases
`Apex Med. Corp. v. Resmed Ltd.,
` IPR2013-00512, Paper 39, at 2 (P.T.A.B. Sept. 12, 2014) .................................... 6
`Plaid Techs., Inc. v. Yodlee, Inc.,
` IPR2016-00273, Paper 29, at 2 (P.T.A.B. Feb. 8, 2017) ....................................... 6
`Toyota Motor Corp. v. Blitzsafe Tex. LLC,
` IPR2016-00421, Paper 28, at 2-3 (P.T.A.B. Feb. 21, 2017) .................................. 5
`Volusion, Inc. v. Versata Software, Inc. et al.,
` CBM2013-00018, Paper 52, at 2-3 (P.T.A.B. June 17, 2014) ............................... 6
`Statutes
`35 U.S.C. § 317 .......................................................................................................... 5
`35 U.S.C. § 317(a) .................................................................................................1, 4
`35 U.S.C. § 317(b) ..................................................................................................... 7
`Other Authorities
`Office Patent Trial Practice Guide,
`77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012) ........................................................ 5
`Regulations
`37 C.F.R. § 42.107 ..................................................................................................... 1
`37 C.F.R. § 42.72 ...................................................................................................4, 5
`37 C.F.R. § 42.74 ....................................................................................................... 5
`37 C.F.R. § 42.74(c) ...............................................................................................1, 7
`
`ii
`
`
`
`STATEMENT OF RELIEF REQUESTED
`Pursuant to 35 U.S.C. § 317(a), Par Pharmaceutical, Inc. (“Par” or
`
`IPR2017-01767
`U.S. Patent No. 9,254,278
`
`
`I.
`
`“Petitioner”) and Horizon Therapeutics, LLC (“Horizon” or “Patent Owner”)
`
`jointly move that the Board terminate this inter partes review (IPR) proceeding,
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`which is directed at U.S. Patent No. 9,254,278 (“the ’278 patent”), in its entirety as
`
`a result of settlement between Petitioner and Patent Owner. See Ex. 2058
`
`(Confidential).
`
`The parties are concurrently filing a separate request that the settlement
`
`agreement (Ex. 2058) being filed herewith be treated as business confidential
`
`information and be kept separate from the files of the involved patent, pursuant to
`
`37 C.F.R. § 42.74(c).
`
`II.
`
`STATEMENT OF FACTS
`Petitioner filed this IPR petition on July 13, 2017. On November 6, 2017,
`
`Patent Owner filed its Preliminary Response under 37 C.F.R. § 42.107. The Board
`
`issued a decision instituting inter partes review on January 30, 2018. On May 9,
`
`2018, Patent Owner filed its Patent Owner Response, and on August 16, 2018,
`
`Petitioner filed its Reply. On September 5, 2018, the Board granted Patent
`
`Owner’s request for a sur-reply, which deadline is currently suspended pending the
`
`Board’s decision on further briefing from the parties regarding evidence in said
`
`1
`
`
`
`sur-reply. See Paper Nos. 37, 38. Oral argument, if requested, is currently set for
`
`IPR2017-01767
`U.S. Patent No. 9,254,278
`
`
`December 14, 2018. See Paper No. 28.
`
`On September 17, 2018, Petitioner and Patent Owner entered into a
`
`settlement agreement. See Ex. 2058 (Confidential). Under the terms of the
`
`settlement agreement, the parties agreed to jointly seek termination of IPR2017-
`
`01767 as well as related inter partes reviews IPR2017-01768 and IPR2017-01769,
`
`and the parties agreed to dismiss related district court litigation, Horizon
`
`Therapeutics Inc. v. Par Pharmaceutical Inc., Civil Action No. 1:16-cv-03910-
`
`RBK-JS (D.N.J. filed June 30, 2016). Thus, this settlement agreement resolves all
`
`currently pending Patent Office and District Court proceedings between the parties
`
`involving the ’278 patent and related U.S. Patent Nos. 9,095,559 (“the ’559
`
`patent”) and 9,326,966 (“the ’966 patent”).
`
`On September 21, 2018, per the request of the parties, the Board authorized
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`the parties to file the instant joint motion to terminate the proceedings by no later
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`than October 4, 2018. See Paper No. 41. Accordingly, no oral argument has been
`
`held and the Board has yet to issue a final decision in this matter.
`
`2
`
`
`
`IPR2017-01767
`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
`
`review proceedings involve the ’278 patent and/or are related to the instant IPR:
`
`(a)
`
`IPR2016-00829, petition filed April 1, 2016, by Lupin Ltd. and Lupin
`
`Pharmaceuticals Inc., directed at the ’559 patent, which is the parent
`
`of the patent at issue in this case. The Board instituted trial in an
`
`institution decision dated September 30, 2016, and issued a final
`
`written decision on September 26, 2017.
`
`(b) Horizon Therapeutics, LLC v. Iancu, Appeal No. 2018-1225 to the
`
`Federal Circuit from the Board’s Final Written Decision in IPR2016-
`
`00829 concerning the ’559 patent, the parent of the patent at issue in
`
`this case.
`
`(c)
`
`IPR2017-01768, directed at the ’559 patent, which is the parent of the
`
`patent at issue in this case. The petition was filed on July 13, 2017, by
`
`the present Petitioner and the Board issued a decision instituting trial
`
`on January 30, 2018.
`
`(d)
`
`IPR2017-01769, directed at the ’966 patent, which is a child of the
`
`patent at issue in this case. The petition was filed on July 13, 2017, by
`
`the present Petitioner and the Board issued a decision instituting trial
`
`on January 30, 2018.
`
`3
`
`
`
`(e) Horizon Therapeutics Inc. v. Par Pharmaceutical Inc., Civil Action
`
`IPR2017-01767
`U.S. Patent No. 9,254,278
`
`
`No. 1:16-cv-3910-RBK-JS (D.N.J. filed June 30, 2016). The
`
`Complaint asserts infringement of the ’559, ’278 and ’966 patents.
`
`On November 18, 2016, the district court stayed that case pending
`
`resolution of IPR2016-00829. On October 5, 2017, the district court
`
`continued the stay pending the resolution of Horizon’s Appeal No.
`
`2018-1225.
`
`IV. ARGUMENT
`Section 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). It
`
`further provides: “If no petitioner remains in the inter partes review, the Office
`
`may terminate the review or proceed to a final written decision under section
`
`318(a).” Id.
`
`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
`
`trial is consolidated with another proceeding or pursuant to a joint request under 35
`
`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”
`
`4
`
`
`
`and that the Board “expects that a proceeding will terminate after the filing of a
`
`IPR2017-01767
`U.S. Patent No. 9,254,278
`
`
`settlement agreement, unless the Board has already decided the merits of the
`
`proceeding.” Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768
`
`(Aug. 14, 2012).
`
`A. The Board Should Terminate this IPR in its Entirety
`As noted in the Statement of Facts, Patent Owner’s sur-reply has yet to be
`
`submitted, the Board has yet to hold oral argument or render a final decision in this
`
`matter, and the parties have jointly requested the Board terminate the proceeding in
`
`light of their settlement agreement. Ex. 2058 (Confidential). Pursuant to that
`
`agreement, Petitioner represents that it will no longer participate in this inter partes
`
`review and will file no further papers. Id. Thus, the Board should terminate the
`
`proceeding with respect to Par, the sole Petitioner in this proceeding. Moreover,
`
`because no petitioner remains after termination with respect to Par, the Board
`
`should exercise its discretion and terminate review in its entirety under 35 U.S.C. §
`
`317 and 37 C.F.R. §§ 42.72, 42.74.
`
`The Board has terminated entire IPR proceedings based on joint motions to
`
`terminate even after the merits had been fully briefed and the matter was ready for
`
`oral argument. See Toyota Motor Corp. v. Blitzsafe Tex. LLC, IPR2016-00421,
`
`Paper 28, at 2-3 (P.T.A.B. Feb. 21, 2017) (granting motion to terminate even after
`
`all substantive papers were filed, “particularly in light of the fact that a final
`
`5
`
`
`
`written decision is not due until more than four months from now”); Plaid Techs.,
`
`IPR2017-01767
`U.S. Patent No. 9,254,278
`
`
`Inc. v. Yodlee, Inc., IPR2016-00273, Paper 29, at 2 (P.T.A.B. Feb. 8, 2017)
`
`(granting motion to terminate because “[t]he parties’ joint motions to terminate
`
`were filed prior to the oral hearings in these cases”); Apex Med. Corp. v. Resmed
`
`Ltd., IPR2013-00512, Paper 39, at 2 (P.T.A.B. Sept. 12, 2014) (granting joint
`
`motion to terminate after submission of the petitioner’s reply because “the record
`
`is not yet closed, and the Board has not yet decided the merits of this
`
`proceeding.”); Volusion, Inc. v. Versata Software, Inc., et al., CBM2013-00018,
`
`Paper 52, at 2-3 (P.T.A.B. June 17, 2014) (granting motion to terminate after oral
`
`argument).
`
`Here, the parties entered into a settlement agreement prior to submission of
`
`Patent Owner’s sur-reply and in advance of the scheduled date for oral argument,
`
`currently set for December 14, 2018. See Paper Nos. 28, 38. The parties now
`
`jointly seek termination of the proceeding. Accordingly, termination of the instant
`
`IPR at this stage is appropriate under PTAB precedent and would save the Board
`
`significant administrative and judicial resources in reaching a decision on the
`
`parties’ briefing regarding evidence in Patent Owner’s sur-reply, preparing for oral
`
`argument and issuing a final written decision. If the present motion is not granted
`
`and the instant IPR is not terminated, Petitioner has agreed to no longer participate
`
`6
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`
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`in the instant IPR or any subsequent appeals, pursuant to the settlement agreement
`
`IPR2017-01767
`U.S. Patent No. 9,254,278
`
`
`between the parties. See Ex. 2058 (Confidential).
`
`B. Written Settlement Agreement
`Pursuant to 37 C.F.R. § 42.74(c), the parties are filing herewith as Exhibit
`
`2058 a true copy of the complete settlement agreement entered between the parties
`
`on September 17, 2018. The settlement agreement has been filed for access by the
`
`“Parties and Board Only” due to the highly sensitive business confidential
`
`information it contains. The parties desire that the settlement agreement be
`
`maintained as business confidential information under 35 U.S.C. § 317(b) and 37
`
`C.F.R. § 42.74(c), and a separate joint request for such is being filed concurrently.
`
`V. CONCLUSION
`Petitioner and Patent Owner respectfully request that the Board grant the
`
`parties’ Joint Motion to Terminate this proceeding in its entirety and grant the
`
`request to treat the settlement agreement between the parties as business
`
`confidential information.
`
`Date: 2018 September 28
`
`
`
`
`Robert F. Green
`Reg. No. 27,555
`Lead Counsel for Patent Owner
`
`Respectfully submitted,
`
` By: / M.C. Phillips /
`
`Matthew C. Phillips
`
`Registration No. 43,403
`Matthew C. Phillips
`Reg. No. 43,403
`Backup Counsel for Patent Owner
`
`7
`
`
`
`IPR2017-01767
`U.S. Patent No. 9,254,278
`
`LAURENCE & PHILLIPS IP LAW
`7327 SW Barnes Road #521
`Portland, Oregon 97225
`Phone: (503) 964-1129
`Fax: (703) 439-1624
`mphillips@lpiplaw.com
`
`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
`
`
`
`Date: 2018 September 28
`
`
`
` By: / David Silverman /
`
` David Silverstein
`
` Registration No. 61,948
`
`David H. Silverstein
`Reg. No. 61,948
`Lead Counsel for Petitioner
`
`AXINN, VELTROP & HARKRIDER
`LLP
`114 West 47th Street, 22nd Floor
`New York, NY 10036
` (212) 261-5651
`dsilverstein@axinn.com
`
`Aziz Burgy
`Reg. No. 51,514
`Backup Counsel for Petitioner
`
`AXINN, VELTROP & HARKRIDER
`LLP
`114 West 47th Street, 22nd Floor
`New York, NY 10036
`(212) 261-5651
`aburgy@axinn.com
`
`8
`
`
`
`IPR2017-01767
`U.S. Patent No. 9,254,278
`
`
`CERTIFICATE OF SERVICE
`
`I certify that on September 28, 2018, the foregoing JOINT MOTION TO
`
`TERMINATE INTER PARTES REVIEW, including all papers filed therewith,
`
`have been served on the petitioner’s counsel of record via email, as agreed to by
`
`counsel, as follows:
`
`David H. Silverstein:
`Aziz Burgy:
`
`Dan Feng Mei:
`
`Christopher M. Gallo:
`
`dsilverstein@axinn.com
`aburgy@axinn.com
`dmei@axinn.com; Ravicti@axinn.com
`cgallo@axinn.com
`
`By:/ M.C. Phillips /
`
`Matthew C. Phillips
`Registration No. 43,403
`
`
`
`
`
`9
`
`
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