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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`___________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`___________________
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`ARGENTUM PHARMACEUTICALS INC.,
`Petitioner,
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`v.
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`COSMO TECHNOLOGIES LIMITED,
`Patent Owner.
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`U.S. Patent No. 9,320,716 to Villa et al.
`Issue Date: April 26, 2016
`Title: Controlled Release and Taste Masking Oral Pharmaceutical Compositions
`___________________
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`Inter Partes Review No.: IPR2018-00080
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`___________________
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`JOINT MOTION TO TERMINATE PROCEEDINGS
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`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`10167053
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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), 37 C.F.R. § 42.72, and 37 C.F.R. § 42.74, and
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`the Board’s authorization email dated April 13, 2018, Petitioner Argentum
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`Pharmaceuticals, Inc. and Patent Owner Cosmo Technologies, Inc. jointly move that
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`the Board terminate the above captioned inter partes review (IPR) proceeding in its
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`entirety as a result of settlement between Petitioner and Patent Owner.
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`Petitioner represents that it will no longer participate in this inter partes
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`review and will file no further papers.
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`The parties are filing concurrently herewith a separate request that the
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`settlement agreement 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 October 20, 2018. On January 31, 2018,
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`Patent Owner filed its Preliminary Response under 37 C.F.R. § 42.107. The Board
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`has yet to issue a decision instituting (or denying instution) inter partes review.
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`On April 19, 2018, Petitioner and Patent Owner entered into a settlement
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`agreement. See Ex. 2043 (Confidential). Under the terms of the settlement
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`agreement, Petitioner agreed to terminate IPR No. IPR2018-00080.
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`III. Related District Court Litigation
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`U.S. Patent No. 9,320,716 (the "'716 patent") is currently the subject of the
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`following ongoing litigations: Cosmo Technologies Limited, Valeant
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`Pharmaceuticals International, and Valeant Pharmaceuticals Luxembourg S.A. R.L.
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`v Lupin Ltd. and Lupin Pharmaceuticals, Inc., 15-cv-00669 (D. Del.), which is
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`stayed, and Cosmo Technologies Limited, Valeant Pharmaceuticals International,
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`and Valeant Pharmaceuticals Luxembourg S.A. R.L. v Sun Pharmaceutical
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`Industries, Ltd., Sun Pharma Global FZE, and Sun Pharmaceutical Industries, Inc.,
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`15-cv-00669 (D.N.J.). The '716 patent was also the subject of Cosmo Technologies
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`Limited, Valeant Pharmaceuticals International, and Valeant Pharmaceuticals
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`Luxembourg S.A. R.L. v. Mylan Pharmaceuticals, Inc., 16-cv-00152 (D. Del.). The
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`parties, however, have settled that litigation out of court.
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`IV. Related Inter Partes Review
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`Prior to Petitioner's filing of IPR No. IPR2018-00080 concerning the ‘716
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`patent, Mylan Pharmaceuticals, Inc. ("Mylan") filed IPR No. IPR-01035 concerning
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`the '716 patent. Mylan also filed IPR No. IPR2017-01034 concerning U.S. Pat.
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`No. 8,784,888. The ’888 patent is related to the ’716 patent. The Board granted the
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`parties’ joint motion to terminate IPR No. IPR2017-01034 on September 20, 2017,
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`and granted the parties' joint motion to terminate IPR No. IPR2017-0135 on January
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`17, 2018.
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`V. Argument
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`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 further
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`provides: “If no petitioner remains in the inter partes review, the Office may
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`terminate the review or proceed to a final written decision under section 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).”
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`The Trial Practice Guide additionally counsels that “[t]here are strong public
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`policy reasons to favor settlement between the parties to proceeding” and that the
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`Board “expects that a proceeding will terminate after the filing of a settlement
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`agreement, unless the Board has already decided the merits of the proceeding. 35
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`U.S.C. 317(a), as amended, and 35 U.S.C. 327.” Office Patent Trial Practice Guide,
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`77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012).
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`Petitioner represents that it will no longer participate in this inter partes
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`review and will file no further papers.
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`A. The Board Should Terminate This IPR Proceeding In Its Entirety
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`As noted in the Statement of Facts, the Board has yet to render an institution
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`decision in this matter. Accordingly, the Board has not opined upon the merits of
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`the petition whatsoever. Thus, the Board should terminate the proceedings with
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`respect to Argentum, the sole Petitioner in this proceeding. Moreover, because no
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`petitioner remains after termination with respect to Argentum, the Board should
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`exercise its discretion and terminate review in its entirety under 35 U.S.C. § 317 and
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`37 C.F.R. §§ 42.72, 42.74.
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`In the past, the Board has terminated the entire proceedings based on joint
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`motions to terminate even after the merits had been fully briefed and the matter was
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`ready for oral argument, or even after oral argument. See Toyota Motor Corp. v.
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`Blitzsafe Tex. LLC, IPR2016-00421, Paper 28 (Feb. 21, 2017) (granting motion to
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`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 now”);
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`Plaid Techs., Inc. v. Yodlee, Inc., IPR2016-00273, Paper 29 (Feb. 8, 2017) (granting
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`motion to terminate because “the parties' joint motions to terminate were filed prior
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`to the oral hearings in these cases”); Apex v. Resmed, IPR201-00512, Paper 39
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`(Sept. 12, 2014) (granting joint motion to terminate after the parties had fully
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`briefed the matter); Rackspace Hosting, Inc. v. Clouding IP, LLC, CBM2014-00034,
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`Paper 28 (Dec. 9, 2014) (granting motion to terminate after close of evidentiary
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`record and less than ten days before trial); Volution v. Versata Software, CMB2013-
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`00018, Paper 52 (June 17, 2014) (granting motion to terminate after oral argument).
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`In contrast to these examples—examples in which the Board had instituted
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`inter partes review, had received full briefing of all issues, and in some cases had
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`even heard oral argument on the same yet nonetheless terminated the proceedings
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`upon the filing of a joint motion for termination—the Board has not even issued a
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`decision instituting (or denying institution) of inter partes review. Accordingly,
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`termination of the entire proceeding at this nascent stage would save the Board
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`significant administrative resources. Termination would also further the AIA’s
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`purpose of providing an efficient and less costly alternative forum for patent dispute
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`and its encouragement for settlement. Additionally, termination of the entire
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`proceedings would also save the parties costs related to this inter partes review.
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`The parties understand that if the Board terminates this IPR with respect to
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`Petitioner under 35 U.S.C. § 317(a), no estoppel under § 315(e) will attach to
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`Petitioner, or Petitioner’s privy, based on Petitioner seeking this IPR. The parties
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`also understand that if the Board terminates this IPR with respect to Petitioner
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`before a final written decision on patentability, no estoppel will attach to Petitioner,
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`or Petitioner’s privy, under 37 C.F.R. § 42.73(d)(1). The parties understand that if
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`the Board terminates this IPR before a final written decision on patentability, no
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`preclusion will attach to Patent Owner under 37 C.F.R. § 42.73(d)(3).
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`B. Written Settlement Statement
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`Pursuant to 37 C.F.R. § 42.74(c), the parties are filing herewith as
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`Exhibit 2043 a true copy of the settlement agreement entered between the parties on
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`April 19, 2018. The settlement agreement was entered into in contemplation of
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`termination of this proceeding.
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`VI. Conclusion
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`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 confidential
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`information.
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`Dated: April 20, 2018
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`Respectfully submitted,
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`/s/ Gary Frischling
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`Gary N. Frischling, Reg. No. 35,515
`Yite John Lu, Reg. No. 63,158
`Irell & Manella LLP
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`Attorneys for Patent Owner
`Cosmo Technologies Limited
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6, the undersigned certifies that on April 20, 2018,
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`a copy of the foregoing document was served upon the following, by email to:
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`ARGENTUM PHARMACEUTICALS LLC
`Tyler C. Liu, Reg. No. 72,126
`tliu@agpharm.com
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`LAURENCE & PHILLIPS IP LAW LLP
`Kevin Laurence, Reg. No. 38,219
`klaurence@lpiplaw.com
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`Matthew Phillips, Reg. No. 43,403
`mphillips@lpiplaw.com
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`Rachel Slade, Reg. No. 64,951
`rslade@lpiplaw.com
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`Dated: April 20, 2018
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`Respectfully submitted,
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`/s/ Pia Kamath
`Pia Kamath
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