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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
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`FRESENIUS KABI USA, LLC, Petitioner,
`
`v.
`
`NOVO NORDISK A/S, Patent Owner.
`
`
`
`Case No. IPR2022-00657
`
`Patent No. 8,114,833
`
`
`
`NOVO NORDISK A/S AND FRESENIUS KABI USA,
`LLC’S JOINT MOTION TO TERMINATE
`
`
`
`
`
`IPR2022-00657
`Patent No. 8,114,833
`
`
`
`
`
`
`I.
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`STATEMENT OF RELIEF REQUESTED
`
`Pursuant to 35 U.S.C. § 317(a), 37 C.F.R. § 42.72, and 37 C.F.R. § 42.74,
`
`Petitioner Fresenius Kabi USA, LLC (“Petitioner”) and Patent Owner Novo
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`Nordisk A/S (“Patent Owner”) jointly request termination of IPR2022-00657,
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`which is directed to U.S. Patent No. 8,114,833.
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`Petitioner and Patent Owner notified the Board of their settlement on
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`September 1, 2022 and received authorization to file this Motion to Terminate on
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`September 2, 2022. The parties are filing this Motion in advance of the deadline
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`of September 8, 2022 set by the Board.
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`II.
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`STATEMENT OF FACTS
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`In support of the Motion to Terminate, Petitioner and Patent Owner state as
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`follows:
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`Petitioner filed its petition for inter partes review on March 3, 2022. The
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`Board has not yet issued a decision on institution. Petitioner and Patent Owner
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`have settled their dispute relating to U.S. Patent No. 8,114,833. As part of their
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`settlement, the parties agreed to move to terminate this proceeding.
`
`The Settlement Agreements between Petitioner and Patent Owner have been
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`made in writing, and true and correct copies will be concurrently filed with this
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`Office as business confidential information pursuant to 35 U.S.C. § 317(b) and 37
`
`1
`
`
`
`IPR2022-00657
`Patent No. 8,114,833
`
`
`C.F.R. § 42.74 as Exhibits 2007 and 2008. There are no collateral agreements.
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`Because the Settlement Agreements are confidential, Petitioner and Patent Owner
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`respectfully request that they be treated as business confidential information, be
`
`kept separate from the underlying patent file, and be made available only in
`
`accordance with 35 U.S.C. § 317(b) and 37 C.F.R. §42.74(c). The parties have
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`filed herewith a separate paper setting forth this request for treatment of the
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`Settlement Agreements as business confidential information.
`
`
`
`III. RELATED LITIGATION
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`U.S. Patent No. 8,114,833 is currently being asserted in the following
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`litigations: Novo Nordisk Inc. v. Mylan Pharmaceuticals, Inc., 1:22-cv-00023
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`(N.D.W. Va.)1; Novo Nordisk Inc. v. Teva Pharmaceuticals, Inc., 1:21-cv-01782
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`(D. Del.); Novo Nordisk Inc. v. Hikma Pharmaceuticals USA, Inc., 1:21-cv-01783
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`(D. Del.); Novo Nordisk Inc. v. Orbicular Pharmaceutical Technologies Pvt. Ltd.,
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`1:22-cv-00856 (D. Del.); Novo Nordisk Inc. v. Sun Pharmaceutical Industries Ltd.,
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`1:22-cv-00896 (D. Del.); Novo Nordisk Inc. v. Sun Pharmaceutical Industries Ltd.,
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`1:22-cv-00897 (D. Del.); Novo Nordisk Inc. v. Biocon Pharma Ltd, 1:22-cv-00936
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`(D. Del.); and Novo Nordisk Inc. v. Biocon Pharma Ltd, 1:22-cv-00937. (D. Del.).
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`
`1 Consolidated for all pretrial purposes in In Re: Ozempic (Semaglutide) Patent
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`Litigation, MDL No. 22-MD-3038 (CFC).
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`2
`
`
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`IPR2022-00657
`Patent No. 8,114,833
`
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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
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`is filed.” 35 U.S.C. § 317(a). Here, termination is appropriate because the parties
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`have settled their dispute, the Board has not decided whether to institute an inter
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`partes review, and the Board has not decided the merits of the proceeding.
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`The Board has stated its expectation that proceedings such as this will be
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`terminated after the filing of a settlement agreement: “[t]here are strong public
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`policy reasons to favor settlement between the parties to a proceeding. . . . The
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`Board expects that a proceeding will terminate after the filing of a settlement
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`agreement, unless the Board has already decided the merits of the proceeding.”
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`PTAB Consolidated Trial Practice Guide November 2019, at 86 (emphasis added)
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`(citing 35 U.S.C. 317(a)); see also 77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012)
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`(same); Petroleum Geo- Services Inc. v. WesternGeco LLC, IPR2016-00407, Paper
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`29 at 3 (P.T.A.B. July 5, 2017) (“Generally, however, the Board expects that a
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`proceeding will terminate after the filing of a settlement agreement.”). A
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`termination of the proceeding will conserve the Board’s resources and obviate the
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`need for any more Board involvement in this matter.
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`3
`
`
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`IPR2022-00657
`Patent No. 8,114,833
`
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`V. CONCLUSION
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`In light of the foregoing, Petitioner and Patent Owner respectfully request
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`that the Board grant the parties’ Joint Motion to Terminate IPR2022-00657 and
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`grant the request to treat the Settlement Agreements between the parties as
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`business confidential information. Petitioner and Patent Owner are available at the
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`Board’s convenience to discuss these related matters in more detail or answer any
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`additional questions raised by this joint motion.
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`
`
`
`
`4
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`
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`IPR2022-00657
`Patent No. 8,114,833
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`
`
`
`
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`Dated: September 7, 2022
`
`
` /Jeffrey J. Oelke/
`
`Jeffrey J. Oelke, Reg. No. 37,409
`Ryan P. Johnson
`Laura T. Moran
`Fenwick & West LLP
`902 Broadway, Suite 14
`New York, NY 10010
`(212) 430-2600 (tel)
`joelke@fenwick.com
`ryan.johnson@fenwick.com
`laura.moran@fenwick.com
`
`Attorneys for Novo Nordisk A/S
`
`
`
`
`
`
`
`
` /Linnea P. Cipriano/
`
`Linnea P. Cipriano, Reg. No. 67,729
`Goodwin Procter LLP
`The New York Times Building
`620 Eighth Avenue
`New York, New York 10018
`lcipriano@goodwinlaw.com
`(212) 459-7258 (tel)
`Daryl Wiesen
`100 Northern Avenue
`Boston, MA 02210
`(617) 570-1396 (tel)
`dwiesen@goodwinlaw.com
`
`Attorney for Fresenius Kabi USA, LLC
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`5
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