UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________________
`
`MYLAN PHARMACEUTICALS INC.
`
`and
`
`DR. REDDY’S LABORATORIES, INC.,
`
`Petitioners
`
`v.
`
`HORIZON PHARMA USA, INC. and NUVO PHARMACEUTICALS
`(IRELAND) DESIGNATED ACTIVITY COMPANY,
`Patent Owners.
`____________________________
`
`Case No. IPR2017-019951
`U.S. Patent No. 9,220,698
`____________________________
`
`JOINT MOTION TO TERMINATE PETITIONER MYLAN
`PHARMACEUTICALS INC.
`
`
`
`
`1 Petitioner Dr. Reddy’s Laboratories, Inc. (“DRL”), from IPR2018-00894, has been
`
`joined as a Petitioner to this proceeding.
`
`
`
`____________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________________
`
`MYLAN PHARMACEUTICALS INC.
`
`and
`
`DR. REDDY’S LABORATORIES, INC.,
`
`Petitioners
`
`v.
`
`HORIZON PHARMA USA, INC. and NUVO PHARMACEUTICALS
`(IRELAND) DESIGNATED ACTIVITY COMPANY,
`Patent Owners.
`____________________________
`
`Case No. IPR2017-019951
`U.S. Patent No. 9,220,698
`____________________________
`
`JOINT MOTION TO TERMINATE PETITIONER MYLAN
`PHARMACEUTICALS INC.
`
`
`
`
`1 Petitioner Dr. Reddy’s Laboratories, Inc. (“DRL”), from IPR2018-00894, has been
`
`joined as a Petitioner to this proceeding.
`
`
`
`Pursuant to 35 U.S.C. § 317(a), Petitioner Mylan Pharmaceuticals Inc.
`
`(“Mylan”) and Patent Owners Horizon Pharma USA, Inc. and Nuvo Pharmaceuticals
`
`(Ireland) Designated Activity Co. (“Patent Owners”) jointly request termination of
`
`IPR2017-01995, which is directed to U.S. Patent No. 9,220,698 (the “’698 Patent”).
`
`I.
`
`STATEMENT OF PRECISE RELIEF REQUESTED
`
`Pursuant to 35 U.S.C. § 317(a), Mylan and Patent Owners jointly request
`
`termination of this inter partes review with respect to Mylan pursuant to a
`
`settlement.
`
`II.
`
`STATEMENT OF FACTS
`
`Mylan and Patent Owners have reached an agreement to settle this inter partes
`
`review proceeding. A “Joint Request That Settlement Agreement Be Treated as
`
`Business Confidential Information and Kept Separate Pursuant to 35 U.S.C.
`
`§ 317(b) and 37 C.F.R. § 42.74” is being filed concurrently with this Joint Motion
`
`to Terminate in reference to sealing of the settlement agreement. See 35 U.S.C.
`
`§ 317(b) (requiring parties to file agreements in writing with the Office). The Board
`
`provided authorization to file this motion during a teleconference held on July 24,
`
`2019. A joint motion to terminate generally must “(1) include a brief explanation as
`
`to why termination is appropriate; (2) identify all parties in any related litigation
`
`involving the patents at issue; (3) identify any related proceedings currently before
`
`the Office, and (4) discuss specifically the current status of each such related
`
`
`
`1
`
`
`
`litigation or proceeding with respect to each party to the litigation or proceeding.”
`
`Heartland Tanning, Inc. v. Sunless, Inc., IPR2014-00018, Paper 26 at 2 (PTAB July
`
`28, 2014).
`
`(1) Brief Explanation. Termination is appropriate in this case because
`
`the parties have settled their dispute.
`
`(2) Related Litigation. The following litigations concern the ’698
`
`patent:
`
`(a) Horizon Medicines LLC v. Mylan Pharmaceuticals Inc., No.
`
`2:16-cv-04921 (D.N.J.)
`
`(b) Horizon Pharma, Inc. v. Lupin Ltd., No. 2:16-cv-04920
`
`(D.N.J.)
`
`(c) Horizon Pharma, Inc. v. Dr. Reddy’s Laboratories Inc., No.
`
`2:16-cv-04918 (D.N.J.)
`
`(d) Horizon Medicines LLC v. Dr. Reddy’s Laboratories Inc., No.
`
`2:15-cv-03324 (D.N.J.)
`
`(e) Nuvo Pharmaceuticals v. Dr. Reddy's Laboratories Inc., No.
`
`19-1607 (Fed. Cir.) (consolidated)
`
`(3) Related Proceeding before the Patent Office and Its Status. There
`
`is currently one additional petition for inter partes review concerning
`
`the ’698 Patent, IPR2018-00894, which has been joined with this
`
`
`
`2
`
`
`
`proceeding. Patent Owners contend that, because the decision
`
`instituting inter partes review in Case IPR2018-00894 was vacated,
`
`IPR2018-00894 is no longer joined with this proceeding and as such
`
`Dr. Reddy’s Laboratories, Inc. is no longer a party to this proceeding.
`
`III. ARGUMENT
`
`The Board should terminate this proceeding as to Mylan as the parties jointly
`
`request, for the following reasons.
`
`First, Mylan and Patent Owners have met the statutory requirement that they
`
`file a “joint request” to terminate before the Office “has decided the merits of the
`
`proceeding.” 35 U.S.C. § 317(a). Under section 317(a), an inter partes review shall
`
`be terminated upon such joint request “unless the Office has decided the merits of
`
`the proceeding before the request for termination is filed.” There are no other
`
`preconditions of 35 U.S.C. § 317(a).
`
`Second, Mylan and Patent Owners have reached a settlement as to all the
`
`disputes in this proceeding and as to the ’698 Patent. A true copy of the settlement
`
`agreement is filed concurrently herewith. See Ex. 1059. Mylan and Patent Owners
`
`request that the settlement agreement be treated as business confidential information,
`
`and be kept separate from the files of this proceeding in accordance with 37 C.F.R.
`
`§ 42.74(c). No other such agreements, written or oral, exist between or among the
`
`parties.
`
`
`
`3
`
`
`
`Accordingly, Mylan and Patent Owners jointly certify that there are no other
`
`written or oral agreements or understandings, including any collateral agreements,
`
`between them, including but not limited to licenses, covenants not to sue,
`
`confidentiality agreements, payment agreements, or other agreements of any kind,
`
`that are made in connection with or in contemplation of, the termination of the instant
`
`proceeding.
`
`IV. CONCLUSION
`
`For the foregoing reasons, Mylan and Patent Owners respectfully request
`
`termination of this inter partes review of the ’698 Patent.
`
`Dated: July 29, 2019
`
`
`
`
`
`
`
`
`
`
`
`
`
`/Brandon M. White/
`Brandon M. White
`Reg. No. 52,354
`
`PERKINS COIE LLP
`700 13th Street, NW, Suite 600
`Washington, D.C. 20005
`Telephone: (202) 654-6206
`Facsimile: (202) 654-6211
`Email: bmwhite@perkinscoie.com
`
`Attorney for Mylan Pharmaceuticals Inc.
`
`
`
`4
`
`
`
`CERTIFICATE OF SERVICE
`The undersigned hereby certifies that the foregoing Joint Motion to Terminate
`
`Petitioner Mylan Pharmaceuticals Inc. was served electronically via email as
`
`follows:
`
`Thomas A. Blinka
`Jonathan G. Graves
`Ellen Scordino
`Cooley LLP
`zIPR2017-01995@cooley.com
`
`Margaret J. Sampson
`Stephen M. Hash
`Jeffrey S. Gritton
`Baker Botts LLP
`nuvo-vimovoBB@bakerbotts.com
`
`Alan H. Pollack
`Stuart D. Sender
`Louis H. Weinstein
`Windels Marx Lane & Mittendorf, LLP
`apollack@windelsmarx.com
`ssender@windelsmarx.com
`lweinstein@windelsmarx.com
`
`Date: July 29, 2019
`
`
`
`
`/Brandon M. White/
`Brandon M. White
`
`
`
`
`
`Attorney for Mylan Pharmaceuticals Inc.
`
`
`
`
`
`
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