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`UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
`
`PFIZER INC,1
`Petitioner,
`
`v.
`
`NOVO NORDISK A/S,
`Patent Owner.
`________________
`
`IPR2020-003242
`
`Patent 8,114,833 B2
`__________________
`
`PATENT OWNER AND PETITIONER PFIZER INC.’S
`JOINT MOTION TO TERMINATE PURSUANT TO 35 U.S.C. § 317
`
`
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`1 The proceeding has been terminated as to the original petitioner, Mylan
`Institutional LLC. Paper 67.
`2 IPR2020-01252 has been joined with this proceeding. Paper 33.
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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 Pfizer Inc.
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`(“Pfizer”) and Patent Owner Novo Nordisk A/S (“Novo Nordisk”) jointly move the
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`Patent Trial and Appeal Board (“Board”) to terminate this proceeding in full.
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`Petitioner Mylan Institutional LLC (“Mylan”)’s participation in this
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`proceeding was terminated on April 16, 2021. Paper No. 67.
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`Pfizer and Novo Nordisk first notified the Board of their settlement on April
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`16, 2021, and received authorization to file this Joint Motion to Terminate on June
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`17, 2021.
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`II.
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`STATEMENT OF FACTS
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`In support of the Joint Motion to Terminate, Pfizer and Novo Nordisk state as
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`follows:
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`Petitioner Mylan filed IPR2020-00324 on December 19, 2019. The Board
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`instituted Mylan’s petition on June 23, 2020. Pfizer filed its petition for inter
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`partes review and a motion for joinder with IPR2020-00324 on July 22, 2020. On
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`December 4, 2020, the Board instituted Pfizer’s inter partes review and joined it
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`with IPR2020-00324.
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`The parties engaged in oral argument on March 26, 2021. See Paper No. 68.
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`At oral argument, Mylan’s counsel informed the Board that Mylan and Novo
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`Nordisk had reached a settlement and would be seeking the Board’s permission to
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`1
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`file a motion to terminate as to Mylan. Paper No. 68 at 53-54. On April 6, 2021,
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`the Board authorized Mylan and Novo Nordisk to file a motion to terminate as to
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`Mylan. On April 7, 2021, Mylan and Novo Nordisk filed a Joint Motion to
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`Terminate as to Mylan.
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` Paper No. 66.
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` The Board terminated Mylan’s
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`involvement in this inter partes review on April 16, 2021. Paper No. 67. The
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`Board has not yet issued a final written decision in this proceeding; pursuant to 37
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`C.F.R. § 42.100(c), such a decision is expected by June 23, 2021.
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`Pfizer and Novo Nordisk have now also settled their dispute concerning U.S.
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`Patent No. 8,114,833, and have agreed to jointly move to terminate this inter partes
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`review in full. The agreement settling this matter between Pfizer and Novo
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`Nordisk, dated April 15, 2021 (the “Settlement Agreement”) was made in writing,
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`and is being concurrently filed with the Board, pursuant to 35 U.S.C. § 317(b), as
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`Exhibit 2102. Exhibit 2102 is a true and complete copy of the Settlement
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`Agreement, and there are no other written or oral agreements or understandings
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`between Pfizer and Novo Nordisk that are made in connection with, or in
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`contemplation of, the termination of the instant proceeding.
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` Because the
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`Settlement Agreement is confidential, Pfizer and Novo Nordisk respectfully request
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`that it be treated as business confidential information, be kept separate from the
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`underlying patent file, and be made available only as provided in 35 U.S.C. § 317(b)
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`2
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`and 37 C.F.R. § 42.74(c), and have filed herewith a separate paper setting forth this
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`request.
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`III. RELATED LITIGATION
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`There is no pending district court litigation involving U.S. Patent No.
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`8,114,833 between Pfizer and Novo Nordisk.
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`A district court litigation involving U.S. Patent No. 8,114,833 between Novo
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`Nordisk and Mylan, Novo Nordisk Inc. et al. v. Mylan Institutional LLC, C.A. No.
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`19-cv-01551 (D. Del.), was resolved by the settlement between Novo Nordisk and
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`Mylan discussed above. The district court dismissed that case on April 6, 2021.
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`Another district court litigation involving U.S. Patent No. 8,114,833 between
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`Novo Nordisk and Teva, Novo Nordisk Inc. et al. v. Teva Pharms. USA, Inc., C.A.
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`No. 17-cv-00227 (D. Del.), was resolved by settlement, and was dismissed on March
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`18, 2019.
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`The only pending district court litigation involving U.S. Patent No. 8,114,833
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`is Novo Nordisk Inc. et al. v. Sandoz, Inc., C.A. No. 1:20-cv-00747 (D. Del.).
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`There are no other pending inter partes reviews involving U.S. Patent No.
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`8,114,833.
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`3
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`IV. ARGUMENT
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`Novo Nordisk and Pfizer jointly request that the Board terminate this
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`proceeding in its entirety, under 35 U.S.C. § 317(a), for at least the reasons set forth
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`below.
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`First, Pfizer is the only remaining petitioner in this proceeding, in which the
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`Board has not yet issued a final written decision. Thus, should the Board terminate
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`Pfizer from the proceeding, no petitioner will remain, and the Board may terminate
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`the review in its entirety. 35 U.S.C. § 317(a). See, e.g., Nissan North America,
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`Inc. et al. v. BlitzSafe Texas, LLC, IPR2016-00418, Paper No. 50 at 2 (P.T.A.B. Mar.
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`10, 2017) (“[A]lthough this proceeding is in a late stage and we have heard oral
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`argument, the Board has not yet issued a Final Written Decision. . . . With the
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`exception of Petitioner. . . and Patent Owner, the Board has terminated all other
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`remaining entities. . . we exercise our discretion to terminate this proceeding in its
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`entirety.”).
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`Terminating proceedings after settlement, as requested here, promotes the
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`Congressional goal of “establish[ing] a more efficient and streamlined patent
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`system” that, inter alia, “limit[s] unnecessary and counterproductive litigation
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`costs.” See Changes to Implement Inter Partes Review Proceedings, Post-Grant
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`Review Proceedings, and Transitional Program for Covered Business Method
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`Patents, Final Rule, 77 Fed. Reg. 48680, 48680 (Aug. 14, 2012). By terminating a
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`4
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`review upon settlement of the dispute, the Patent Office provides a measure of
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`certainty as to the outcome of such proceedings, helping to promote settlements and
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`creating a timely, cost-effective alternative to litigation.
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`In fact, the Board has exercised its discretion to terminate proceedings even
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`on the eve of issuing a final written decision when it has found good reason to do so.
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`For example, in Petroleum Geo-Services Inc. v. WesternGeco LLC, the Board
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`terminated an IPR two days before the statutory deadline to render a final written
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`decision, even though “the Board was ready to issue a final written decision,” where
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`the parties to that IPR had reached a settlement of their dispute. IPR2016-00407,
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`Paper 29 at 2-4 (P.T.A.B. July 5, 2017) (citing Office Patent Trial Practice Guide,
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`77 Fed. Reg. 48756, 48768 (Aug. 14, 2012)). The Board explained that it was
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`terminating the proceeding because it “expects that a proceeding will terminate after
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`the filing of a settlement agreement,” and that doing so “promotes efficiency and
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`minimizes unnecessary costs.” Id. In contrast, continuing this proceeding despite
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`the parties’ settlement would frustrate the Congressional goal of speedy and cost-
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`effective dispute resolution, particularly because continuing this proceeding would
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`lead to further expenditures of time and resources by the parties and the Board should
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`the decision be appealed. Continuing this proceeding despite settlement would also
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`have a chilling effect on future settlements and undermine the possibility of efficient
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`resolution of future patent disputes.
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`5
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`Furthermore, terminating this proceeding aligns with the adjudicatory nature
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`of the inter partes review, which has been recognized by the Board and the Federal
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`Circuit, as contrasted with the examinational nature of the inter partes reexamination
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`proceedings they replaced. See, e.g., Idle Free Sys., Inc. v. Bergstrom, Inc.,
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`IPR2012-00027, Paper 26 at 6 (P.T.A.B. June 11, 2013) (“An inter partes review is
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`more adjudicatory than examinational, in nature.”); Abbott Labs. v. Cordis Corp.,
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`710 F.3d 1318, 1326 (Fed. Cir. 2013) (“In 2011, Congress replaced inter partes
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`reexamination with a new proceeding called inter partes review . . . . The purpose
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`of this reform was to ‘convert[] inter partes reexamination from an examinational to
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`an adjudicative proceeding,’ . . . .”) (citations omitted); see also SAS Inst. Inc. v.
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`Iancu, 138 S. Ct. 1348, 1355 (2018) (“rather than create (another) agency led,
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`inquisitorial process for reconsidering patents, Congress opted for a party-directed,
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`adversarial process.”). Should Pfizer’s participation be terminated, there will be no
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`counterparty in this proceeding. Continuing this proceeding without an adversary,
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`or after the parties have resolved their dispute, would undermine the fundamentally
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`adjudicatory nature of this inter partes review. See, e.g., 35 U.S.C. § 316(e) (“In
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`an inter partes review instituted under this chapter, the petitioner shall have the
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`burden of proving a proposition of unpatentability by a preponderance of the
`
`evidence.”) (emphasis added); 157 Cong. Rec. S1375 (daily ed. Mar. 8, 2011)
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`(statement of Sen. Kyl) (noting that the new procedures were intended to be strictly
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`6
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`adjudicative in nature, where “the petitioner, rather than the Office, bears the burden
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`of showing unpatentability”).
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`In view of these considerations, the Board has, on numerous occasions,
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`granted motions to terminate that were filed after oral argument. For example, in
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`Weatherford Int’l, LLC v. Baker Hughes Oilfield Operations, LLC, the Board
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`terminated the proceeding in view of settlement almost three months after oral
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`argument. IPR2019-00768, Papers 43, 46 (P.T.A.B. Aug. 26, 2020) (“[a]lthough
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`the deadline for entering a final decision in this processing is approaching. . . we
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`determine that it is appropriate to enter judgment and terminate the trial without
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`rendering a final written decision”); see also Prollenium U.S., Inc. v. Allergan
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`Industrie, SAS, IPR2019-01505, Paper 70 (P.T.A.B. Feb. 19, 2021) (granting
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`termination after oral argument); Comcast Cable Comm’ns, LLC v. Rovi Guides,
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`Inc., IPR2019-01421, Paper 42 (P.T.A.B. Nov. 24, 2020) (granting termination
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`nearly a month after oral argument); Pfenex Inc. v. GlaxoSmithKline Biologicals SA,
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`IPR2019-01028, Paper 62, at 3 (P.T.A.B. Nov. 12, 2020) (granting termination two
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`months after oral argument); Taiwan Semiconductor Mfg. Co. Ltd. v. Godo Kaisha
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`IP Bridge 1, IPR2017-01862, Paper 39 (P.T.A.B. Jan. 24, 2019) (same); Lam
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`Research Corp. v. Flamm, IPR2015-01764, Paper 27 at 4, 6 (P.T.A.B. Dec. 15,
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`2016) (granting termination after oral argument despite “extremely advanced
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`nature” of proceeding, and despite the fact that “substantial resources—both on the
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`part of the Board, as well as the parties—have been invested in this matter”); TRW
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`Automotive U.S. LLC v. Magna Electronics, Inc., IPR2014-01499, Paper 27 at 2
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`(P.T.A.B. Feb. 22, 2016) (granting termination two months after oral argument);
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`Clio USA, Inc. v. The Procter & Gamble Co., IPR2013-00438, Paper 57 at 2-3
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`(P.T.A.B. Oct. 31, 2014) (granting termination approximately three months after oral
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`argument).
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`For at least the reasons above, the request to terminate is proper and well
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`justified, and the parties respectfully ask the Board to exercise its discretion to
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`terminate the review in full.
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`V. CONCLUSION
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`Wherefore, Pfizer and Novo Nordisk respectfully request that the Board grant
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`the parties’ Joint Motion to Terminate IPR2020-00324 in its entirety, and grant the
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`request to treat the Settlement Agreement between the parties as business
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`confidential information. Pfizer and Novo Nordisk 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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`8
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`Dated: June 18, 2021
`
`
`/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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`
` /Michael W. Johnson/
`
`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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`Attorneys for Pfizer Inc.
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`9
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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 June 18, 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 Petitioner:
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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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`
`
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`Date: June 18, 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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