UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
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`MYLAN INSTITUTIONAL LLC and PFIZER INC,
`Petitioners,
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`v.
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`NOVO NORDISK A/S,
`Patent Owner.
`________________
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`IPR2020-003241
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`Patent 8,114,833 B2
`__________________
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`PATENT OWNER AND PETITIONER MYLAN INSTITUTIONAL LLC’S
`JOINT MOTION TO TERMINATE AS TO PETITIONER MYLAN
`INSTITUTIONAL LLC PURSUANT TO 35 U.S.C. § 317
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`1 IPR2020-01252 has been joined with this proceeding.
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`________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
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`MYLAN INSTITUTIONAL LLC and PFIZER INC,
`Petitioners,
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`v.
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`NOVO NORDISK A/S,
`Patent Owner.
`________________
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`IPR2020-003241
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`Patent 8,114,833 B2
`__________________
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`PATENT OWNER AND PETITIONER MYLAN INSTITUTIONAL LLC’S
`JOINT MOTION TO TERMINATE AS TO PETITIONER MYLAN
`INSTITUTIONAL LLC PURSUANT TO 35 U.S.C. § 317
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`1 IPR2020-01252 has been joined with this proceeding.
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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) and 37 C.F.R. § 42.72, Petitioner Mylan
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`Institutional LLC (“Mylan”) and Patent Owner Novo Nordisk A/S (“Patent Owner”)
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`jointly move the Patent Trial and Appeal Board (“Board”) to terminate this
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`proceeding as to Petitioner Mylan.
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`Petitioner Pfizer Inc. takes no position with respect to this Motion to
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`Terminate.
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`Mylan and Patent Owner first notified the Board of their settlement on March
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`26, 2021, and received authorization to file this Motion to Terminate on April 6,
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`2021.
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`II.
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`STATEMENT OF FACTS
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`In support of the Motion to Terminate as to Mylan, Mylan and Patent Owner
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`state as follows:
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`Mylan filed its petition for inter partes review on December 19, 2019, and
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`Patent Owner filed a preliminary response on March 30, 2020. On June 23, 2020,
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`the Board instituted this inter partes review. Mylan and Patent Owner have settled
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`their dispute and all litigation relating to U.S. Patent No. 8,114,833, and have agreed
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`to move to terminate this inter partes review with respect to Mylan.
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`The agreement settling this matter and all litigation relating to U.S. Patent No.
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`8,114,833 between Mylan and Patent Owner has been made in writing (the
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`1
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`“Settlement Agreement”), and a true and correct copy will be concurrently filed with
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`the Board as business confidential information pursuant to 35 U.S.C. § 317(b) as
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`Exhibit 2098. There are no collateral agreements. Because the Settlement
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`Agreement is confidential, Mylan and Patent Owner respectfully request that it be
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`treated as business confidential information, be kept separate from the underlying
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`patent file, and be made available only as provided in 35 U.S.C. § 317(b) and 37
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`C.F.R. § 42.74(c), and have filed herewith a separate paper setting forth this request.
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`III. RELATED LITIGATION
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`The district court litigation involving U.S. Patent No. 8,114,833 between
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`Patent Owner and Mylan, Novo Nordisk Inc. et al. v. Mylan Institutional LLC, C.A.
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`No. 19-cv-01551 (D. Del.), was also resolved by the Settlement Agreement. The
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`court ordered the parties’ jointly filed stipulation of dismissal of the district court
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`litigation on April 6, 2021. The other currently-pending district court litigation
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`involving U.S. Patent No. 8,114,833 is Novo Nordisk Inc. et al. v. Sandoz, Inc., Case
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`No. 1:20-cv-00747 (D. Del.).
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`The other currently-pending inter partes review involving U.S. Patent No.
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`8,114,833 is Pfizer Inc. v. Novo Nordisk, A/S, IPR2020-01252, which has been
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`joined with this inter partes review. This proceeding will continue with Pfizer Inc.
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`as a petitioner.
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`2
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`IV. ARGUMENT
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`The statutory provision on a settlement relating to inter partes reviews
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`provides that an inter partes review “shall be terminated with respect to any
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`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 is
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`filed.” 35 U.S.C. § 317(a). Here, the Board has not decided the merits of the
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`proceeding. Oral argument occurred only on March 26, 2021, and no final decision
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`on any of the merits of the Petition has issued. Therefore, under 35 U.S.C. § 317,
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`the Board shall terminate Mylan’s involvement in this proceeding upon this joint
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`request of the parties.
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`For the avoidance of doubt, in other proceedings, the Board has granted
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`motions to terminate, after oral argument and within a similar period of time before
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`the statutory deadline.
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` For example, in Petroleum Geo-Services Inc. v.
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`WesternGeco LLC, the Board terminated the proceeding in its entirety after oral
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`argument had already been conducted, and after the parties requested permission to
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`move to terminate five days before the statutory one-year deadline and filed their
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`motion to terminate (as authorized by the Board) two days before the statutory
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`deadline. See Petroleum Geo-Services Inc. v. WesternGeco LLC, IPR2016-00407,
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`Paper 29 at 2-4 (P.T.A.B. July 5, 2017) (granting termination of the entire
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`proceeding, notwithstanding that “the record . . . is closed, and the Board was ready
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`to issue a final written decision”; “Generally . . . the Board expects that a proceeding
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`will terminate after the filing of a settlement agreement” (citing Office Patent Trial
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`Practice Guide, 77 Fed. Reg. 48756, 48768 (Aug. 14, 2012)); see also Prollenium
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`U.S., Inc. v. Allergan Industrie, SAS, IPR2019-01505, Paper 70 (P.T.A.B. Feb. 19,
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`2021) (granting termination after oral argument); Taiwan Semiconductor Mfg. Co.
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`Ltd. v. Godo Kaisha IP Bridge 1, IPR2017-01862, Paper 39 (P.T.A.B. Jan. 24, 2019)
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`(granting termination of proceeding in view of settlement two months after oral
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`argument); Volusion, Inc. v. Versata Software, Inc. et. al., CBM2013-00018, Paper
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`52 at 2 (P.T.A.B. June 17, 2014) (granting full termination of proceeding after oral
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`argument; “[w]hile this case is in the late stages of the trial, no final written decision
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`has been made”); Lam Research Corp. v. Flamm, IPR2015-01764, Paper 27 at 4, 6
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`(P.T.A.B. Dec. 15, 2016) (granting full termination of proceeding after oral
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`argument despite “extremely advanced nature” of proceeding, when “substantial
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`resources—both on the part of the Board, as well as the parties—have been invested
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`in this matter”).
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`Indeed, the Board has stated an expectation that proceedings such as this will
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`be terminated as to Mylan after the filing of a settlement agreement: “[t]here are
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`strong public policy reasons to favor settlement between the parties to a proceeding
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`. . . . The Board expects that a proceeding will terminate after the filing of a
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`settlement agreement, unless the Board has already decided the merits of the
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`4
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`proceeding.” Patent Trial and Appeal Board Consolidated Trial Practice Guide
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`(Nov. 2019), 86 (emphasis added), citing 35 U.S.C. §§ 317(a), 327; see also
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`Petroleum Geo-Services Inc., Paper 29 at 2-3. For at least the reasons discussed
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`herein, the Board’s expectation that such proceedings should be terminated, at least
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`in this case as to Mylan, is proper and well justified.
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`First, applying here the Board’s expectation that these proceedings should be
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`terminated as to Mylan promotes the Congressional goal of “establish[ing] a more
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`efficient and streamlined patent system” that, inter alia, “limit[s] unnecessary and
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`counterproductive litigation costs.” See Changes to Implement Inter partes Review
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`Proceedings, Post-Grant Review Proceedings, and Transitional Program for
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`Covered Business Method Patents, Final Rule, 77 Fed. Reg. 48680, 48680 (Aug. 14,
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`2012). By permitting termination of the review as to Mylan, upon settlement of the
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`dispute and prior to a decision on the merits, the Patent Office provides a measure
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`of certainty as to the outcome of such proceedings – helping to promote settlements
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`and creating a timely, cost-effective alternative to litigation. In contrast, should the
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`Board decide to continue the present proceedings as to Mylan, the Congressional
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`goal of speedy and less costly dispute resolutions and the Board’s stated goal of
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`promoting settlement would be chilled (by, inter alia, giving parties less incentive to
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`resolve disputes, and by adding to the burdens to both the parties and the Office in
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`addressing any subsequent appeals).
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`5
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`Second, applying the Board’s expectation that these proceedings should be
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`terminated as to Mylan is also consistent with the adjudicatory nature of inter partes
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`review proceedings recognized by the Board and the Federal Circuit, as contrasted
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`with the examinational nature of the inter partes reexamination proceedings they
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`replaced. See, e.g., Idle Free Sys., Inc. v. Bergstrom, Inc., IPR2012-00027, Paper
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`26 at 6 (June 11, 2013) (“An inter partes review is more adjudicatory than
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`examinational, in nature.”); Abbott Labs. v. Cordis Corp., 710 F.3d 1318, 1326 (Fed.
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`Cir. 2013) (“In 2011, Congress replaced inter partes reexamination with a new
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`proceeding called inter partes review . . . . The purpose of this reform was to
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`‘convert[] inter partes reexamination from an examinational to an adjudicative
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`proceeding,’ . . . .”) (citations omitted); see also SAS Inst. Inc. v. Iancu, 138 S. Ct.
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`1348, 1355 (2018) (“rather than create (another) agency led, inquisitorial process for
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`reconsidering patents, Congress opted for a party-directed, adversarial process.”).
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`V. CONCLUSION
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`Wherefore, Mylan and Patent Owner respectfully request that the Board grant
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`the parties’ Joint Motion to Terminate IPR2020-00324 as to Mylan, and grant the
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`request to treat the Settlement Agreement between the parties as business
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`confidential information. Mylan and Patent Owner are available at the Board’s
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`convenience to discuss these related matters in more detail or answer any additional
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`questions raised by this joint motion.
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`6
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`Dated: April 7, 2021
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`
`/Jeffrey J. Oelke/
`
`Jeffrey J. Oelke (Reg. No. 37,409)
`joelke@fenwick.com
`Ryan P. Johnson
`ryan.johnson@fenwick.com
`Laura T. Moran
`laura.moran@fenwick.com
`Fenwick & West LLP
`902 Broadway, Suite 14
`New York, NY 10010
`Telephone: (212) 430-2600
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`Attorneys for Novo Nordisk A/S
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` /Brandon M. White/
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`Brandon M. White (Reg. No. 52,354)
`Perkins Coie LLP
`700 Thirteenth Street, N.W., Suite 800
`Washington, D.C. 20005
`Telephone: (202) 654-6206
`BMWhite@perkinscoie.com
`White-ptab@perkinscoie.com
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`Lara Dueppen (Reg. No. 65,002)
`Perkins Coie LLP
`1888 Century Park East
`Suite 1700
`Los Angeles, CA 90067
`Telephone: (310) 788-3349
`LDueppen@perkinscoie.com
`Dueppen-ptab@perkinscoie.com
`Liraglutide@perkinscoie.com
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`Emily J. Greb (Reg. No. 68,244)
`Perkins Coie LLP
`33 East Main Street, Suite 201
`Madison, WI 53703
`Telephone: (308) 663-7494
`Fax: (608) 283-4494
`greb-ptab@perkinscoie.com
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`Attorneys for Mylan Institutional LLC
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`7
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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 April 7, 2021, the
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`foregoing document is being served by filing this document through the Patent Trial
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`and Appeal Board End to End System, as well as delivering a copy via electronic
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`mail upon the following attorneys of record for the Petitioners:
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`Brandon M. White (Reg. No. 52,354)
`Perkins Coie LLP
`700 Thirteenth Street, N.W., Suite 600
`Washington, D.C., 20005
`Telephone: (202) 654-6206
`Fax: (202) 654-9681
`BMWhite@perkinscoie.com
`White-ptab@perkinscoie.com
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`Lara Dueppen (Reg. No. 65,002)
`Perkins Coie LLP
`1888 Century Park East
`Suite 1700
`Los Angeles, CA 90067
`Telephone: (310) 788-3349
`Fax: (310) 788-3399
`LDueppen@perkinscoie.com
`Dueppen-ptab@perkinscoie.com
`Liraglutide@perkinscoie.com
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`Emily J. Greb (Reg. No. 68,244)
`Perkins Coie LLP
`33 East Main Street, Suite 201
`Madison, WI 53703
`Telephone: (308) 663-7494
`Fax: (608) 283-4494
`greb-ptab@perkinscoie.com
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`8
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`Thomas J. Meloro (Reg. No. 33,538)
`Michael W. Johnson (Reg. No. 63,731)
`Willkie Farr & Gallagher LLP
`787 Seventh Avenue
`New York, NY 10019
`Telephone: (212) 728-8428
`Fax: (212) 728-8111
`tmeloro@willkie.com
`mjohnson1@willkie.com
`amoore@willkie.com
`mao-ny@willkie.com
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`Date: April 7, 2021
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`Respectfully submitted,
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`/Jeffrey J. Oelke/
`Jeffrey J. Oelke (Reg. No. 37,409)
`Lead Counsel
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`9
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