`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`SANOFI-AVENTIS U.S. LLC and
`SANOFI-AVENTIS DEUTSCHLAND GMBH,
`Petitioners,
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`v.
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`ASTRAZENECA PHARMACEUTICALS LP and
`AMYLIN PHARMACEUTICALS, LLC,
`Patent Owners.
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`Cases IPR2016-00353 (Patent 7,691,963 B2),
`IPR2016-00354 (Patent 8,445,647 B2), and
`IPR2016-00355 (Patent 8,951,962 B2)1
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`Filed: October 6, 2016
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`JOINT MOTION TO TERMINATE FOR SETTLEMENT
`PURSUANT TO 35 U.S.C. § 317
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`1 The word-for-word identical paper is filed in each proceeding identified in the
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`heading.
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`Case IPR2016-00353 (U.S. Patent No. 7,691,963)
`Case IPR2016-00354 (U.S. Patent No. 8,445,647)
`Case IPR2016-00355 (U.S. Patent No. 8,951,962)
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`PRECISE RELIEF REQUESTED
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`Petitioners sanofi-aventis U.S. LLC and Sanofi-Aventis Deutschland GmbH
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`I.
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`(“Sanofi”) and Patent Owners AstraZeneca Pharmaceuticals LP and Amylin
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`Pharmaceuticals, LLC (“AstraZeneca”) (Sanofi and AstraZeneca collectively
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`identified as “the Parties”), by and through their respective counsel, jointly request
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`termination of the above-captioned inter partes review proceedings of U.S. Patent
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`Nos. 7,691,963, 8,445,647, and 8,951,962 pursuant to 35 U.S.C. § 317(a), 37
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`C.F.R. § 42.72, and 37 C.F.R. § 42.74. The parties have fully and finally resolved
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`the dispute between them and entered into a Settlement Agreement effective
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`September 28, 2016 (“Agreement”) formally settling the dispute.
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`On October 5, 2016, the Parties emailed the Board to request the Board’s
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`authorization to file a joint motion to terminate the above-captioned inter partes
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`review proceedings. The Parties also sought the Board’s authorization to file with
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`the motion to terminate a request to treat the written Agreement as business
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`confidential information. Later on October 5, 2016, the Board authorized the
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`Parties to file both a motion to terminate and a request to treat the agreement as
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`business confidential information.
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`II. REASONS FOR GRANTING THE MOTION
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`Generally, the Board expects that a proceeding will terminate after the filing
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`of a settlement agreement. See, e.g., Office Patent Trial Practice Guide, 77 Fed.
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`Case IPR2016-00353 (U.S. Patent No. 7,691,963)
`Case IPR2016-00354 (U.S. Patent No. 8,445,647)
`Case IPR2016-00355 (U.S. Patent No. 8,951,962)
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`Reg. 48,756, 48,768 (Aug. 14, 2012). The Board authorized filing of the instant
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`motion on October 5, 2016. Guidance as to the content of a motion to terminate is
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`provided in IPR2015-00293, Paper No. 7. There, the Board indicated that a joint
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`motion, such as this one, should (a) include a brief explanation as to why
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`termination is appropriate; (b) identify all parties in any related litigation involving
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`the patent at issue; (c) identify any related proceedings currently before the Office;
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`and (d) discuss specifically the current status of each such related litigation or
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`proceeding with respect to each party to the litigation or proceeding. Id. at 2. This
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`motion satisfies each of the above requirements and is accompanied by the
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`Agreement made in connection with termination of these proceedings, as required
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`by 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74 (b).
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`A. Brief Explanation of Why Termination is Appropriate
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`Termination is appropriate because these proceedings are in their very early
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`stages: Patent Owners have not filed their Patent Owners’ Responses to the
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`Petitions, Petitioners have not filed their Replies to the Patent Owners’ Responses,
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`the Parties have not filed motions to exclude, oral argument has not been held, the
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`Board has not decided the merits of the proceeding, and a final written decision has
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`not been issued. By virtue of the Agreement, the dispute between the Parties has
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`been resolved, including the Parties’ related litigation. Per the Agreement, the
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`Parties filed a Stipulation of Dismissal with Prejudice of the related litigation on
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`Case IPR2016-00353 (U.S. Patent No. 7,691,963)
`Case IPR2016-00354 (U.S. Patent No. 8,445,647)
`Case IPR2016-00355 (U.S. Patent No. 8,951,962)
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`October 3, 2016 and the Court approved entry of the stipulated dismissal with
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`prejudice on October 5, 2016. There are no other pending cases involving U.S.
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`Patent No. 7,691,963, 8,445,647, or 8,951,962.
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`B. All Parties in Any Pending Related Litigation Involving the
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`Patent at Issue
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`In addition, Petitioners were the named Plaintiffs in the above-referenced
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`litigation and Patent Owners were the named Defendants. That litigation has been
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`dismissed in its entirety. No future litigation amongst the Parties or their affiliates
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`involving the U.S. Patent No. 7,691,963, 8,445,647, or 8,951,962 is contemplated.
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`C. Related Proceedings Currently Before the Office
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`There are a total of three related IPRs before the PTAB - Cases IPR2016-
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`00353 (Patent 7,691,963 B2), IPR2016-00354 (Patent 8,445,647 B2), and
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`IPR2016-00355 (Patent 8,951,962 B2). The Parties are seeking to dismiss all three
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`of these IPRs.
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`III. Agreement
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`Pursuant to 35 U.S.C. § 317(b) and 37 C.F. R. § 42.74(b), the Agreement is
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`in writing, and a true and correct copy is being filed concurrently herewith as
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`Case IPR2016-00353 (U.S. Patent No. 7,691,963)
`Case IPR2016-00354 (U.S. Patent No. 8,445,647)
`Case IPR2016-00355 (U.S. Patent No. 8,951,962)
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`Exhibit A.2 The parties are also filing concurrently herewith a joint request under
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`35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c) to treat the Agreement as business
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`confidential information to be kept separate from the file of the involved patents.
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`IV. CONCLUSION
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`For all these reasons, the Parties respectfully request termination of the Inter
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`Partes Review of Cases IPR2016-00353 (Patent 7,691,963 B2), IPR2016-00354
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`(Patent 8,445,647 B2), and IPR2016-00355 (Patent 8,951,962 B2).
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`Respectfully submitted this 6 day of October, 2016.
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`By:
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`By:
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`/s/ Paul H. Berghoff
`Paul H. Berghoff
`Reg. No. 30,243
`Lead Counsel for Petitioner
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`/s/ David I. Berl
`David I. Berl
`Reg. No. 72,751
`Lead Counsel for Patent Owner
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`2 The Agreement is being filed via the PTAB E2E (End to End) system with access
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`to the “Parties and Board only.”
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`Case IPR2016-00353 (U.S. Patent No. 7,691,963)
`Case IPR2016-00354 (U.S. Patent No. 8,445,647)
`Case IPR2016-00355 (U.S. Patent No. 8,951,962)
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`CERTIFICATE OF SERVICE
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`I hereby certify that on October 6, 2016, a copy of the foregoing document
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`was filed using the PTAB E2E (End to End), which will automatically send email
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`notification of such filing to the following attorneys of record.
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`/s/ Paul H. Berghoff
`Paul H. Berghoff
`Reg. No. 30,243
`Lead Counsel for Petitioner
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`By:
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`David Berl
`dberl@wc.com
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`Dov Grossman
`dgrossman@wc.com
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`Dated: October 6, 2016