UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`MYLAN PHARMACEUTICALS INC.,
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`Petitioner,
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`v.
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`BRISTOL-MYERS SQUIBB COMPANY and
`PFIZER INC.,
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`Patent Owners.
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`Case IPR2018-00892
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`Patent No. 9,326,945
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`JOINT MOTION TO TERMINATE PROCEEDING
`PURSUANT TO 35 U.S.C. § 317(a)
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`MYLAN PHARMACEUTICALS INC.,
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`Petitioner,
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`v.
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`BRISTOL-MYERS SQUIBB COMPANY and
`PFIZER INC.,
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`Patent Owners.
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`Case IPR2018-00892
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`Patent No. 9,326,945
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`JOINT MOTION TO TERMINATE PROCEEDING
`PURSUANT TO 35 U.S.C. § 317(a)
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`Pursuant to 35 U.S.C. § 317(a), Petitioner Mylan Pharmaceuticals Inc.
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`(“Mylan” or “Petitioner”) and Patent Owners Bristol-Myers Squibb Company
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`(“BMS”) and Pfizer Inc. (“Pfizer” and, collectively with BMS “Patent Owners”)
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`jointly request termination of IPR2018-00892, which is directed to U.S. Patent No
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`9,326,945 (the “’945 Patent”).
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`I.
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`STATEMENT OF PRECISE RELIEF REQUESTED
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`Pursuant to 35 U.S.C. § 317(a), Petitioner and Patent Owners jointly request
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`termination of this inter partes review pursuant to a settlement.
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`II.
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`STATEMENT OF FACTS
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`Petitioner and Patent Owners have reached an agreement to settle this inter
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`partes review proceeding. A “Joint Request That Settlement Agreements Be
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`Treated as Business Confidential Information and Kept Separate Pursuant to 35
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`U.S.C. § 317(b) and 37 C.F.R. § 42.74” is being filed concurrently with this Joint
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`Motion to Terminate in reference to sealing of the settlement agreements. See 35
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`U.S.C. § 317(b) (requiring parties to file agreements in writing with the Office).
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`The Board previously provided authorization to file this motion on January 9,
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`2019. (Paper 39.) A joint motion to terminate generally must “(1) include a brief
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`explanation as to why termination is appropriate; (2) identify all parties in any
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`related litigation involving the patents at issue; (3) identify any related proceedings
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`currently before the Office, and (4) discuss specifically the current status of each
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`such related litigation or proceeding with respect to each party to the litigation or
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`proceeding.” Heartland Tanning, Inc. v. Sunless, Inc., IPR2014-00018, Paper 26
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`at 2 (PTAB July 28, 2014).
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`(1) Brief Explanation. Termination is appropriate in this case because the
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`parties have settled their dispute. A “Joint Request That Settlement
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`Agreements Be Treated as Business Confidential Information and
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`Kept Separate Pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74”
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`is being filed concurrently with this Joint Motion to Terminate in
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`reference to sealing of the settlement agreements.
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`(2) Related Litigation. The following litigations concerning the ’945
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`patent are pending: Bristol-Myers Squibb Co. et al. v. Aurobindo
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`Pharma USA Inc., 1:17-cv-00374-LPS (D. Del.); Bristol-Myers
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`Squibb Co. et al. v. Sunshine Lake Pharma Co., Ltd. et al., 1:17-cv-
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`00380-LPS (D. Del.); Bristol-Myers Squibb Co. et al. v. Unichem
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`Laboratories, Ltd., 1:17-cv-00382-LPS (D. Del.); Bristol-Myers
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`Squibb Co. et al. v. Dr. Reddy’s Laboratories, Ltd. et al., 1:17-cv-
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`00401-LPS (D. Del.); Bristol-Myers Squibb Co. et al. v. Sandoz Inc.,
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`1:17-cv-00407-LPS (D. Del); Bristol-Myers Squibb Co. et al. v.
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`Sigmapharm Laboratories, LLC, 1:17-cv-00408-LPS (D. Del.); and
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`Bristol-Myers Squibb Co. et al. v. Zydus Pharmaceuticals (USA) Inc.,
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`1:17-cv-00412-LPS (D. Del.), each consolidated (1:17-cv-00374-LPS
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`(D. Del.).
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`(3)
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`(4) Related Proceeding before the Patent Office and Its Status. There
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`is currently no other proceeding before the Patent Office involving the
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`’945 patent.
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`III. ARGUMENT
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`The Board should terminate this case as the parties jointly request, for the
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`following reasons.
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`First, Petitioner and Patent Owners have met the statutory requirement that
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`they file a “joint request” to terminate before the Office “has decided the merits of
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`the proceeding.” 35 U.S.C. § 317(a). Under section 317(a), an inter partes review
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`shall be terminated upon such joint request “unless the Office has decided the
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`merits of the proceeding before the request for termination is filed.” There are no
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`other preconditions of 35 U.S.C. § 317(a).
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`Second, the parties have reached a settlement as to all the disputes in this
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`proceeding and as to the ’945 Patent. True copies of the settlement agreements are
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`filed concurrently herewith. See Exs. 1047, 1048. The parties request that the
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`settlement agreements be treated as business confidential information, and be kept
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`separate from the files of this proceeding in accordance with 37 C.F.R. § 42.74(c).
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`No other such agreements, written or oral, exist between or among the parties.
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`Accordingly, the parties in the present proceeding jointly certify that there
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`are no other written or oral agreements or understandings, including any collateral
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`agreements, between them, including but not limited to licenses, covenants not to
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`sue, confidentiality agreements, payment agreements, or other agreements of any
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`kind, that are made in connection with or in contemplation of, the termination of
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`the instant proceeding.
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`Third, a termination of this proceeding will conserve the Board’s resources
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`and obviate the need for any more Board involvement in this matter.
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`IV. CONCLUSION
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`For the foregoing reasons, Petitioner and Patent Owners respectfully request
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`termination of this inter partes review of the ’945 Patent.
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`January 9, 2019
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`Respectfully submitted,
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`By: /Robert L. Florence/
`Robert L. Florence
`Reg. No. 54,933
`PARKER POE ADAMS & BERNSTEIN
`LLP
`1180 Peachtree Street, N.E.
`Suite 3300
`Atlanta, GA 30309
`robertflorence@parkerpoe.com
`Tel: (678) 690-5701
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`Counsel for Petitioner Mylan
`Pharmaceuticals Inc.
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`Respectfully submitted,
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`By: /Heather M. Petruzzi/
`Heather M. Petruzzi
`Reg. No. 71,270
`WILMER CUTLER PICKERING
` HALE AND DORR LLP
`1875 Pennsylvania Avenue, NW
`Washington, DC 20006
`Heather.Petruzzi@wilmerhale.com
`Tel: (202) 663-6028
`Fax: (202) 663-6363
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`Counsel for Patent Owners Bristol-
`Myers Squibb Co. & Pfizer Inc.
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`January 9, 2019
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), I hereby certify that on January 9,
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`2019, the foregoing document is being served by E-mail by agreement of the
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`parties to the following counsel of record for the Patent Owners:
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`Heather M. Petruzzi
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`Michael E. Nelson
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`Amy K. Wigmore
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`Wilmer Cutler Pickering Hale and Dorr LLP
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`1875 Pennsylvania Ave, NW
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`Washington, DC 20006
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`E-mail: Heather.Petruzzi@wilmerhale.com
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`E-mail: Michael.Nelson@wilmerhale.com
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`E-mail: Amy.Wigmore@wilmerhale.com
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`Timothy A. Cook
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`Kevin M. Yurkerwich
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`Kevin S. Prussia
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`Wilmer Cutler Pickering Hale and Dorr LLP
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`60 State Street
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`Boston, MA 02109
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`E-mail: Tim.Cook@wilmerhale.com
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`E-mail: Kevin.Yurkerwich@wilmerhale.com
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`E-mail: Kevin.Prussia@wilmerhale.com
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`Jason M. Okun
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`Fitzpatrick, Cella, Harper & Scinto
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`1290 Avenue of the Americas
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`New York, NY 10104-3800
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`E-mail: JOkun@fchs.com
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`Respectfully submitted,
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`By: /Robert L. Florence/
`Robert L. Florence
`Reg. No. 54,933
`PARKER POE ADAMS & BERNSTEIN
`LLP
`1180 Peachtree Street, N.E., Suite
`3300
`Atlanta, GA 30309
`robertflorence@parkerpoe.com
`Tel: (678) 690-5701
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`Counsel for Petitioner Mylan
`Pharmaceuticals Inc.
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`January 9, 2019
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