UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
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`
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`PROLLENIUM US INC.,
`Petitioner
`
`v.
`
`ALLERGAN INDUSTRIE, SAS,
`Patent Owner
`
`
`
`IPR2019-01505 (Patent No. 8,450,475)
`IPR2019-01506 (Patent No. 8,357,795)
`IPR2019-01508 (Patent No. 9,238,013)
`IPR2019-01509 (Patent No. 9,358,322)
`IPR2019-01617 (Patent No. 8,822,676)
`IPR2019-01632 (Patent No. 8,357,795)
`IPR2020-00084 (Patent No. 9,089,519)
`
`
`JOINT MOTION TO TERMINATE PURSUANT TO 35 U.S.C. § 317 AND
`37 C.F.R. §§ 42.5, 42.71(a), 42.72, AND 42.741
`
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`1 Authorization for the use of a joint caption page was received on April 27,
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`2020. Neither party opposes the use of a joint caption page. An identical paper has
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`been filed in each case recited in the consolidated caption.
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`PROLLENIUM US INC.,
`Petitioner
`
`v.
`
`ALLERGAN INDUSTRIE, SAS,
`Patent Owner
`
`
`
`IPR2019-01505 (Patent No. 8,450,475)
`IPR2019-01506 (Patent No. 8,357,795)
`IPR2019-01508 (Patent No. 9,238,013)
`IPR2019-01509 (Patent No. 9,358,322)
`IPR2019-01617 (Patent No. 8,822,676)
`IPR2019-01632 (Patent No. 8,357,795)
`IPR2020-00084 (Patent No. 9,089,519)
`
`
`JOINT MOTION TO TERMINATE PURSUANT TO 35 U.S.C. § 317 AND
`37 C.F.R. §§ 42.5, 42.71(a), 42.72, AND 42.741
`
`
`1 Authorization for the use of a joint caption page was received on April 27,
`
`2020. Neither party opposes the use of a joint caption page. An identical paper has
`
`been filed in each case recited in the consolidated caption.
`
`
`
`
`
`
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`
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`Pursuant to 35 U.S.C. § 317, 37 C.F.R. §§ 42.5, 42.71(a), 42.72 and 42.74,
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`and the Board’s authorization received on February 18, 2021, Petitioner
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`Prollenium US Inc. (“Petitioner” or “Prollenium”) and Patent Owner Allergan
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`Industrie, SAS (“Patent Owner” or “Allergan”) jointly move to terminate the
`
`present inter partes review proceedings in light of Patent Owner and Petitioner’s
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`settlement of all pending litigation (i.e., district court, Patent Trial and Appeal
`
`Board, or otherwise) between the parties involving the patents at issue in these
`
`matters.
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`Petitioner and Patent Owner are concurrently filing a true and complete copy
`
`of their confidential written settlement materials (Confidential Exhibit 2250) in
`
`connection with this matter as required by statute. A joint request to treat the
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`settlement materials (Confidential Exhibit 2250) as business confidential
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`information kept separate from the file of the involved patents pursuant to 35
`
`U.S.C. § 317(b) is being filed concurrently.
`
`LEGAL STANDARD
`
`An inter partes review proceeding “shall be terminated with respect to any
`
`petitioner upon the joint request of the petitioner and the patent owner, unless the
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`Office has decided the merits of the proceeding before the request for termination
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`is filed.” 35 U.S.C. § 317(a). A joint motion to terminate generally “must (1)
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`
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`include a brief explanation as to why termination is appropriate; (2) identify all
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`parties in any related litigation involving the patents at issue; (3) identify any
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`related proceedings currently before the Office, and (4) discuss specifically the
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`current status of each such related litigation or proceeding with respect to each
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`party to the litigation or proceeding.” Heartland Tanning, Inc. v. Sunless, Inc.,
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`IPR2014-00018, Paper 26 at 2 (PTAB July 28, 2014).
`
`ARGUMENT
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`Termination of the present inter partes review proceedings is appropriate
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`because (1) Petitioner and Patent Owner have settled their disputes and have
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`agreed to terminate the proceedings, (2) the Office has not yet decided the merits
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`of the proceedings, and (3) public policy favors the termination.
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`First, the parties’ settlement completely resolves the controversy between
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`Patent Owner and Petitioner relating to U.S. Patent Nos. 8,450,475; 8,357,795;
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`9,238,013; 9,358,322; 8,822,676; and 9,089,519 before the Board and in the co-
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`pending district court litigation, which has been stayed pending disposition of these
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`proceedings. Allergan USA, Inc. v. Prollenium US Inc., C.A. No. 1-19-cv-126-
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`CFC (D. Del. May 20, 2020).
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`Second, the Office has not decided the merits of the proceedings. Third,
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`public policy favors the termination. As recognized by the rules of practice before
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`the Board:
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`2
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`
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`There are strong public policy reasons to favor settlement
`between the parties to a proceeding. The Board will be
`available to facilitate settlement discussions, and where
`appropriate, may require a settlement discussion as part
`of the proceeding. The Board expects that a proceeding
`will terminate after the filing of a settlement agreement,
`unless the Board has already decided the merits of the
`proceeding. 35 U.S.C. §§ 317(a), 327.
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`Consolidated Trial Practice Guide (Nov. 2019) at 86. Moreover, no public interest
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`or other factors militate against termination of this proceeding.
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`Following settlement, there will be no pending litigation or contested
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`proceeding in any forum (i.e., district court, Patent Trial and Appeal Board, or
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`otherwise) involving the patents at issue in these matters.
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`CONCLUSION
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`For the foregoing reasons, Petitioner and Patent Owner jointly and
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`respectfully request that the instant proceedings be terminated.
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`3
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`
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`Date: February 18, 2021
`
`
`
`/s/ Warren J. Thomas
`Christopher L. Curfman.
`(Reg. No. 52,787)
`William W. Cutchins (Reg. No. 63,451)
`Warren J. Thomas (Reg. No. 70,581)
`John Harbin (pro hac vice)
`MEUNIER CARLIN & CURFMAN LLC
`999 Peachtree Street NE, Suite 1300
`Atlanta, GA 30309
`ccurfman@mcciplaw.com
`wcutchins@mcciplaw.com
`wthomas@mcciplaw.com
`mcc.prollenium.ipr@mcciplaw.com
`
`Attorneys for Petitioner Prollenium US
`Inc.
`
`
`Respectfully submitted,
`
`
`
`/s/ Anthony M. Insogna
`Anthony M. Insogna (Reg. No. 35,203)
`Tamera M. Weisser (Reg. No. 47,856)
`S. Christian Platt (Reg. No. 46,998)
`aminsogna@jonesday.com
`tweisser@jonesday.com
`cplatt@jonesday.com
`JONES DAY
`4655 Executive Drive, Suite 1500
`San Diego, CA 92121-3134
`Tel.: (858) 314-1200
`Fax.: (844) 345-3178
`
`Sarah A. Geers (Reg. No. 69,123)
`sgeers@jonesday.com
`JONES DAY
`250 Vesey Street
`New York, NY 10281
`Telephone: 212-326-3939
`Fax: 212-755-7306
`
`Jennifer M. Hartjes (Reg. No. 77,687)
`jhartjes@jonesday.com
`JONES DAY
`90 South Seventh Street, Suite 4950
`Minneapolis, MN 55402
`Telephone: 612-217-8800
`Fax: 844-345-3178
`
`Attorneys for Patent Owner Allergan
`Industrie, SAS
`
`
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`4
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`CERTIFICATE OF SERVICE
`
`The undersigned hereby certifies that a copy of the foregoing JOINT
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`MOTION TO TERMINATE PURSUANT TO 35 U.S.C. § 317 AND 37 C.F.R.
`
`§§ 42.5, 42.71(A), 42.72, AND 42.74 was served on February 18, 2021 by e-
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`mailing copies to the following counsel of record for Petitioner Prollenium US
`
`Inc.:
`
`Christopher L. Curfman (ccurfman@mcciplaw.com)
`Warren J. Thomas (wthomas@mcciplaw.com)
`William W. Cutchins (wcutchins@mcciplaw.com)
`John Harbin (mcc.prollenium.ipr@mcciplaw.com)
`
`
`
`
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`Date: February 18, 2021
`
`
`
`
`/s/ Anthony M. Insogna
`Anthony M. Insogna (Reg. No. 35,203)
`JONES DAY
`4655 Executive Drive, Suite 1500
`San Diego, CA 92121-3134
`Tel: (858) 314-1200
`
`Attorney for Patent Owner
`Allergan Industrie, SAS
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