`Filed: July 30, 2019
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
`AMNEAL PHARMACEUTICALS LLC,
`Petitioner
`v.
`ALKERMES PHARMA IRELAND LIMITED,
`Patent Owner
`______________________
`Case IPR2018-00943
`Patent 7,919,499
`______________________
`Joint Motion to Terminate Case No. IPR2018-00943
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`
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`Case IPR2018-00943
`
`I.
`
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`Precise Relief Requested
`Pursuant to 35 U.S.C. § 317(a) and 37 C.F.R § 42.74, Petitioner Amneal
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`Pharmaceuticals LLC and Patent Owner Patent Owner Alkermes Pharma Ireland
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`Limited (collectively, “the Parties”) jointly request termination of the above-
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`captioned Inter Partes Review of U.S. Patent No. 7,919,499 (“the Patent-at-
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`Issue”), Case No. IPR2018-00943.
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`II. Reasons for Granting the Motion
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`Generally, the Board expects that a proceeding will terminate after the filing
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`of a settlement agreement. See, e.g., Office Patent Trial Practice Guide, 77 Fed.
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`Reg. 48,756, 48,768 (Aug. 14, 2012). The Board authorized the filing of the
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`instant motion in an email communication dated July 29, 2019. Pursuant to that
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`authorization, this Joint Motion to Terminate Case No. IPR2018-00943:
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`(1) includes a brief explanation as to why termination is appropriate; (2) identifies
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`all parties in any related district court litigation involving the patent in dispute and
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`discusses the current status of each such related litigation with respect to each party
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`of the litigation; and (3) identifies the case numbers of any pending, related inter
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`partes review proceedings.
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`A. Brief Explanation of Why Termination Is Appropriate
`Termination of this proceeding is appropriate because (i) oral arguments
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`have not been presented to the Board, (ii) Petitioner will no longer be participating
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`in this proceeding, and (iii) the Board has not yet decided the merits of the
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`Case IPR2018-00943
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`proceeding. The Parties have settled their disputes and executed a Settlement and
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`License Agreement that authorizes the Parties to seek termination of this inter
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`partes review.
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`Pending District Court Litigations Involving the ’499 Patent
`B.
`As noted in the Parties’ Mandatory Notices, there are no related district court
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`litigations involving the ’499 patent.
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`C.
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`Pending Inter Partes Review Proceedings Involving the
`’499 Patent
`As noted in the Parties’ Mandatory Notices, there are no related inter partes
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`review proceedings involving the ’499 patent.
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`III. Settlement Agreement
`This motion is accompanied by Exhibit 2058, a true and correct written copy
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`of the Parties’ Settlement and License Agreement, as required by 35 U.S.C.
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`§ 317(b) and 37 C.F.R. § 42.74(b). No other such agreements, written or oral,
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`exist between or among the Parties.
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`Pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), and to the separate
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`request being concurrently filed herewith, the Parties jointly request that the
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`Settlement and License Agreement be treated as business confidential information
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`and be kept separate from the files of the above-captioned IPR and of the
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`’499 patent.
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`
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`IV. Conclusion
`For all of these reasons, the Parties respectfully request termination of this
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`Case IPR2018-00943
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`proceeding.
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`Dated: July 30, 2019
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`
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`
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`Respectfully submitted,
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`
`
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`
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`By: /Tedd W. Van Buskirk/
`Tedd W. Van Buskirk (Reg. No. 46,282)
`Counsel for Petitioner
`Amneal Pharmaceuticals LLC
`
`
`
`By: /Naveen Modi/
`Naveen Modi (Reg. No. 46,224)
`Counsel for Patent Owner
`Alkermes Pharma Ireland Limited
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`Case IPR2018-00943
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), I certify that I caused to be served on the
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`counsel for Petitioner a true and correct copy of the foregoing JOINT MOTION
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`TO TERMINATE CASE NO. IPR2018-00943, by electronic means, on July 30,
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`2019, at the following address of record:
`
`Michael H. Teschner
`Tedd W. Van Buskirk
`Lerner, David, Littenberg,
`Krumholz & Mentlik, LLP
`600 South Avenue West
`Westfield, NJ 07090
`
`MTeschner.ipr@ldlkm.com
`tvanbuskirk@lernerdavid.com
`litigation@lernerdavid.com
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`Dated: July 30, 2019
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`Respectfully submitted,
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`By: /Naveen Modi/
`Naveen Modi
`Reg. No. 46,224
`
`Counsel for Alkermes
`
`
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