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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`————————————————
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`APOTEX INC.,
`Petitioner
`v.
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`CELGENE CORPORATION,
`Patent Owner
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`————————————————
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`Case IPR2023-00512
`U.S. Patent No. 8,846,628
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`JOINT MOTION TO TERMINATE PROCEEDING
`PURSUANT TO 35 U.S.C. § 317(a)
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`Joint Motion to Terminate Proceeding
`IPR2023-00512
`Pursuant to 35 U.S.C. § 317(a), Petitioner Apotex Inc. (“Apotex” or
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`“Petitioner”) and Patent Owner Celgene Corporation (“Celgene” or “Patent
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`Owner”) jointly request termination of IPR2023-00512, which is directed to U.S.
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`Patent No 8,846,628 (the “’628 Patent”).
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`I.
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`STATEMENT OF PRECISE RELIEF REQUESTED
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`Pursuant to 35 U.S.C. § 317(a), Petitioner and Patent Owner jointly request
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`termination of this inter partes review pursuant to a settlement.
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`II.
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`STATEMENT OF FACTS
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`No final written decision has been issued yet in this case. Further, Petitioner
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`and Patent Owner have reached an agreement to settle this inter partes review
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`proceeding. A “Joint Request That the Settlement Agreement Be Treated as
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`Business Confidential Information and Kept Separate Pursuant to 35 U.S.C. §
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`317(b) and 37 C.F.R. § 42.74” is being filed concurrently with this Joint Motion to
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`Terminate in reference to sealing of the settlement agreement. See 35 U.S.C. §
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`317(b) (requiring parties to file agreements in writing with the Office). The Board
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`previously provided authorization to file this motion on January 3, 2024. (Jan. 3,
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`2024, email from E. Goldschlager on behalf of the Board).
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`A joint motion to terminate generally must “(1) include a brief explanation
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`as to why termination is appropriate; (2) identify all parties in any related litigation
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`involving the patents at issue; (3) identify any related proceedings currently before
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`Joint Motion to Terminate Proceeding
`IPR2023-00512
`the Office, and (4) discuss specifically the current status of each such related
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`litigation or proceeding with respect to each party to the litigation or proceeding.”
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`Heartland Tanning, Inc. v. Sunless, Inc., IPR2014-00018, Paper 26 at 2 (PTAB
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`Jul. 28, 2014).
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`(1) Brief Explanation. Termination is appropriate in this case because the
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`parties have settled their dispute. A “Joint Request That the Settlement Agreement
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`Be Treated as Business Confidential Information and Kept Separate Pursuant to 35
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`U.S.C. § 317(b) and 37 C.F.R. § 42.74” is being filed concurrently with this Joint
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`Motion to Terminate in reference to sealing of the settlement agreement.
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`(2) Related Litigation. The challenged patent is or was the subject of the
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`following district court cases: Celgene Corp. and Celgene Int’l Sàrl v. Accord
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`Healthcare, Inc., Case No. 21-cv-1795-RGA (D. Del.), filed December 22, 2022
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`(“Accord”); Celgene Corp., Celgene Int’l Sàrl, and Bristol-Myers Squibb Co. v.
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`MSN Labs. Private Ltd. and MSN Pharms., Inc., Case No. 23-cv-00699-RGA (D.
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`Del.), filed June 27, 2023 (“MSN”); Celgene Corp., Celgene Int’l Sàrl, and
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`Bristol-Myers Squibb Co. v. Teva Pharms., Inc., Case No. 23-cv-1008-RGA (D.
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`Del.), filed September 13, 2023 (“Teva”); and Celgene Corp., Celgene Int’l Sàrl,
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`and Bristol-Myers Squibb Co. v. Natco Pharma Ltd., Case No. 23-cv-1019-RGA
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`(D. Del.), filed September 18, 2023 (“Natco”). On August 31, 2023, the district
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`court consolidated the Accord and MSN proceedings as Case No. 21-cv-1795-
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`Joint Motion to Terminate Proceeding
`IPR2023-00512
`RGA (D. Del.). On November 27, 2023, the district court entered a consent
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`judgment and order of dismissal in the Accord case pursuant to the parties’
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`stipulation. Fact discovery is currently set to close on January 31, 2024 in the
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`MSN case, and the court has scheduled a bench trial for September 23, 2024. The
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`district court has not yet set a schedule for the Teva and Natco cases.
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`(3) Related Proceeding before the Patent Office and Its Status. There is
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`currently no related proceeding before the Patent Office.
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`III. ARGUMENT
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`The Board should terminate this case as the parties jointly request, for the
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`following reasons.
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`First, Petitioner and Patent Owner have met the statutory requirement that
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`they file a “joint request” to terminate before the Office “has decided the merits of
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`the proceeding.” 35 U.S.C. § 317(a). Under section 317(a), an inter partes review
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`shall be terminated upon such joint request “unless the Office has decided the
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`merits of the proceeding before the request for termination is filed.” There are no
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`other preconditions of 35 U.S.C. § 317(a).
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`Second, the parties have reached a settlement as to all the disputes in this
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`proceeding and as to the ’628 Patent. A true copy of the settlement agreement is
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`filed concurrently herewith. See Exhibit 1060. The parties request that the
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`settlement agreement be treated as business confidential information, and be kept
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`Joint Motion to Terminate Proceeding
`IPR2023-00512
`separate from the files of this proceeding in accordance with 37 C.F.R. § 42.74(c).
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`No other such agreements, written or oral, exist between or among the parties.
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`Accordingly, the parties in the present proceeding jointly certify that there
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`are no other written or oral agreements or understandings, including any collateral
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`agreements, between them, including but not limited to licenses, covenants not to
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`sue, confidentiality agreements, payment agreements, or other agreements of any
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`kind, that are made in connection with or in contemplation of, the termination of
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`the instant proceeding.
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`Third, a termination of this proceeding will conserve the Board’s resources
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`and obviate the need for any more Board involvement in this matter.
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`IV. CONCLUSION
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`For the foregoing reasons, Petitioner and Patent Owner respectfully request
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`termination of this inter partes review of the ’628 Patent.
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`Dated: January 4, 2024
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`Respectfully submitted,
`/s/ Vishal C. Gupta/
`Vishal C. Gupta (Reg. No. 67,284)
`Steptoe LLP
`1114 Avenue of the Americas
`New York, NY 10036
`Tel: (212) 506-3900
`Counsel for Petitioner Apotex Inc.
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`Dated: January 4, 2024
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`Joint Motion to Terminate Proceeding
`IPR2023-00512
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`Respectfully submitted,
`/s/ Heather M. Petruzzi/
`Heather M. Petruzzi (Reg. No. 71,270)
`Wilmer Cutler Pickering Hale and Dorr
`LLP
`2100 Pennsylvania Avenue NW
`Washington, DC 20037
`Tel: (202) 663-6000
`Counsel for Celgene Corporation
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`Joint Motion to Terminate Proceeding
`IPR2023-00512
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`CERTIFICATE OF SERVICE
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`I hereby certify that on January 4, 2024, I caused a true and correct copy of
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`the foregoing Joint Motion to Terminate Proceeding Pursuant to 35 U.S.C. § 317(a)
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`to be served via e-mail on all counsel of record.
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`/s/ Vishal Gupta
`By:
`Vishal Gupta (Reg. No. 7,284)
`Steptoe LLP
`1114 Avenue of the Americas
`New York, NY 10036
`Tel: (212) 506-3900
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