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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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`LUPIN LTD. AND LUPIN PHARMACEUTICALS INC.,
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`Petitioner
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`v.
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`HORIZON THERAPEUTICS, LLC,
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`Patent Owner
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`Case IPR2018-00459
`Patent 9,561,197
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`__________________
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`JOINT MOTION TO TERMINATE INTER PARTES REVIEW
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`IPR2018-00459
`U.S. Patent No. 9,561,197
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`TABLE OF CONTENTS
`STATEMENT OF RELIEF REQUESTED .................................................... 1
`I.
`STATEMENT OF FACTS .............................................................................. 1
`II.
`III. RELATED LITIGATION AND INTER PARTES REVIEWS ...................... 2
`IV. ARGUMENT ................................................................................................... 2
`A.
`The Board Should Terminate this IPR in its Entirety ........................... 3
`B. Written Settlement Agreement .............................................................. 5
`CONCLUSION ................................................................................................ 5
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`V.
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`
`i
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`IPR2018-00459
`U.S. Patent No. 9,561,197
`
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`TABLE OF AUTHORITIES
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`Cases
`Apex Med. Corp. v. Resmed Ltd.,
`IPR2013-00512, Paper 39 (P.T.A.B. Sept. 12, 2014) ............................................ 4
`Plaid Techs., Inc. v. Yodlee, Inc.,
`IPR2016-00273, Paper 29 (P.T.A.B. Feb. 8, 2017) ............................................... 4
`Samsonite, LLC v. Otter Products, LLC,
` IPR2015-00507, Paper 13 (P.T.A.B. July 31, 2015) .............................................. 4
`Toyota Motor Corp. v. Blitzsafe Tex. LLC,
`IPR2016-00421, Paper 28 (P.T.A.B. Feb. 21, 2017) ............................................. 4
`Volution v. Versata Software,
`CBM2013-00018, Paper 52 (P.T.A.B. June 17, 2014) .......................................... 4
`Statutes
`35 U.S.C. § 317 .......................................................................................................... 4
`35 U.S.C. § 317(a) ............................................................................................ 1, 2, 3
`35 U.S.C. § 317(b) ..................................................................................................... 5
`Other Authorities
`Office Patent Trial Practice Guide,
`77 Fed. Reg. 48,756 (Aug. 14, 2012) .................................................................3, 5
`Regulations
`37 C.F.R. § 42.107 ..................................................................................................... 1
`37 C.F.R. § 42.72 ...................................................................................................3, 4
`37 C.F.R. § 42.74 ....................................................................................................... 4
`37 C.F.R. § 42.74(c) ...............................................................................................1, 5
`
`
`
`ii
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`
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`STATEMENT OF RELIEF REQUESTED
`Pursuant to 35 U.S.C. § 317(a), Lupin Ltd. and Lupin Pharmaceuticals Inc.
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`IPR2018-00459
`U.S. Patent No. 9,561,197
`
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`I.
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`(collectively “Lupin” or “Petitioner”) and Horizon Therapeutics, LLC (“Horizon”
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`or “Patent Owner”) jointly move that the Board terminate this inter partes review
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`(IPR) proceeding, which is directed at U.S. Patent No. 9,561,197 (“the ’197
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`patent”), in its entirety as a result of settlement between Petitioner and Patent
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`Owner. See Ex. 2021 (Confidential).
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`The parties are concurrently filing a separate request that the settlement
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`agreement (Ex. 2021) being filed herewith be treated as business confidential
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`information and be kept separate from the files of the involved patent, pursuant to
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`37 C.F.R. § 42.74(c).
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`II.
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`STATEMENT OF FACTS
`Petitioner filed this IPR petition on January 12, 2018. On May 23, 2018,
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`Patent Owner filed its Preliminary Response under 37 C.F.R. § 42.107. The Board
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`has yet to issue a decision instituting inter partes review. Accordingly, no oral
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`argument has been held and the Board has yet to issue a final decision in this
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`matter.
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`On June 27, 2018, Petitioner and Patent Owner entered into a settlement
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`agreement. See Ex. 2021 (Confidential). Under the terms of the settlement
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`agreement, the parties agreed to jointly seek termination of IPR2018-00459, and
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`1
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`the parties agreed to dismiss related district court litigation, Horizon Therapeutics,
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`IPR2018-00459
`U.S. Patent No. 9,561,197
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`LLC v. Lupin Ltd. and Lupin Pharmaceuticals, Inc., Civil Action No. 2:17-cv-
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`05900-KM-MAH (D.N.J., filed Aug. 8, 2017). Thus, this settlement agreement
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`resolves all currently pending Patent Office and District Court proceedings
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`between the parties involving the ’197 patent.
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`III. RELATED LITIGATION
`The following currently pending district court litigation proceedings involve
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`the ’197 patent:
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`(a) Horizon Therapeutics, LLC v. Lupin Ltd. and Lupin Pharmaceuticals,
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`Inc., Civil Action No. 2:17-cv-05900-KM-MAH (D.N.J., filed Aug.
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`08, 2017). The Complaint asserts infringement of U.S. Patent No.
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`9,561,197.
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`(b) Horizon Therapeutics, LLC v. Par Pharmaceutical, Inc., Civil Action
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`No. 2:17-cv-05901-KM-MAH (D.N.J. filed Aug. 08, 2017). The
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`Complaint asserts infringement of U.S. Patent No. 9,561,197.
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`IV. ARGUMENT
`Section 317(a) provides: “An inter partes review instituted under this chapter
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`shall be terminated with respect to any petitioner upon the joint request of the
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`petitioner and the patent owner, unless the Office has decided the merits of the
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`proceeding before the request for termination is filed.” 35 U.S.C. § 317(a). It
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`2
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`further provides: “If no petitioner remains in the inter partes review, the Office
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`IPR2018-00459
`U.S. Patent No. 9,561,197
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`may terminate the review or proceed to a final written decision under section
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`318(a).” Id.
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`Similarly, 37 C.F.R. § 42.72 provides that “[t]he Board may terminate a trial
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`without rendering a final written decision, where appropriate, including where the
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`trial is consolidated with another proceeding or pursuant to a joint request under 35
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`U.S.C. 317(a).” The Trial Practice Guide additionally counsels that “[t]here are
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`strong public policy reasons to favor settlement between the parties to proceeding”
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`and that 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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`proceeding.” Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768
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`(Aug. 14, 2012).
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`A. The Board Should Terminate this IPR in its Entirety
`As noted in the Statement of Facts, the instant IPR proceeding is in its initial
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`stages wherein the Board has yet to issue a decision instituting review, and the
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`parties have jointly requested the Board terminate the proceeding in light of their
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`settlement agreement. Ex. 2021 (Confidential). Thus, the Board should terminate
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`the proceeding with respect to Lupin, the sole Petitioner in this proceeding.
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`Moreover, because no petitioner remains after termination with respect to Lupin,
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`3
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`the Board should exercise its discretion and terminate review in its entirety under
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`IPR2018-00459
`U.S. Patent No. 9,561,197
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`35 U.S.C. § 317 and 37 C.F.R. §§ 42.72, 42.74.
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`The Board has terminated entire IPR proceedings based on joint motions to
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`terminate before institution, and even after the merits had been fully briefed and
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`the matter was ready for oral argument. See Samsonite, LLC v. Otter Products,
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`LLC, IPR2015-00507, Paper 13, at 2 (P.T.A.B. July 31, 2015) (granting motion to
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`terminate pre-institution); Toyota Motor Corp. v. Blitzsafe Tex. LLC, IPR2016-
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`00421, Paper 28, at 2-3 (P.T.A.B. Feb. 21, 2017) (granting motion to terminate
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`even after all substantive papers were filed, “particularly in light of the fact that a
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`final written decision is not due until more than four months from now”); Plaid
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`Techs., Inc. v. Yodlee, Inc., IPR2016-00273, Paper 29, at 2 (P.T.A.B. Feb. 8, 2017)
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`(granting motion to terminate because “[t]he parties’ joint motions to terminate
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`were filed prior to the oral hearings in these cases”); Apex Med. Corp. v. Resmed
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`Ltd., IPR2013-00512, Paper 39, at 2 (P.T.A.B. Sept. 12, 2014) (granting joint
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`motion to terminate after the parties had fully briefed the matter because “the
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`record is not yet closed, and the Board has not yet decided the merits of this
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`proceeding.”); Volution, Inc. v. Versata Software, Inc., CBM2013-00018, Paper
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`52, at 2-3 (P.T.A.B. June 17, 2014) (granting motion to terminate after oral
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`argument).
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`4
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`IPR2018-00459
`U.S. Patent No. 9,561,197
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`Here, the parties have entered into a settlement agreement well in advance of
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`even a decision on institution, which is not due for over another month. See Trial
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`Practice Guide, 77 Fed. Reg. at 48757. The parties now jointly seek termination of
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`the proceeding. Accordingly, termination of the instant IPR at this early stage is
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`appropriate under PTAB precedent and would save the Board significant
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`administrative and judicial resources in issuing an institution decision, reviewing
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`additional briefing by the parties, holding oral argument, and issuing a final written
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`decision.
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`B. Written Settlement Agreement
`Pursuant to 37 C.F.R. § 42.74(c), the parties are filing herewith as Exhibit
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`2021 a true copy of the complete settlement agreement entered between the parties
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`on June 27, 2018. The settlement agreement has been filed for access by the
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`“Parties and Board Only” due to the highly sensitive business confidential
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`information it contains. The parties desire that the settlement agreement be
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`maintained as business confidential information under 35 U.S.C. § 317(b) and 37
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`C.F.R. § 42.74(c), and a separate joint request for such is being filed concurrently.
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`V. CONCLUSION
`Petitioner and Patent Owner respectfully request that the Board grant the
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`parties’ Joint Motion to Terminate this proceeding in its entirety and grant the
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`5
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`request to treat the settlement agreement between the parties as business
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`IPR2018-00459
`U.S. Patent No. 9,561,197
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`confidential information.
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` Respectfully submitted,
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` By: / M.C. Phillips /
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`Matthew C. Phillips
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`Registration No. 43,403
`Matthew C. Phillips
`Reg. No. 43,403
`Backup Counsel for Patent Owner
`LAURENCE & PHILLIPS IP LAW
`7327 SW Barnes Road #521
`Portland, Oregon 97225
`Phone: (503) 964-1129
`Fax: (703) 439-1624
`mphillips@lpiplaw.com
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`Date: 2018 July 9
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`
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`Robert F. Green
`Reg. No. 27,555
`Lead Counsel for Patent Owner
`GREEN, GRIFFITH & BORG-BREEN, LLP
`City Place, Suite 3900
`676 N Michigan Avenue
`Chicago, Illinois 60611
`Phone: (312) 883-8000
`Fax: (312) 883-8001
`rgreen@greengriffith.com
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`Date: 2018 July 9
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`
`
` By: / Elizabeth J. Holland /
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` Elizabeth J. Holland
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` Registration No. 47,657
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`Elizabeth J. Holland
`Reg. No. 47,657
`Lead Counsel for Petitioner
`GOODWIN PROCTER LLP
`The New York Times Building
`620 Eighth Avenue
`New York, NY 10018-1405
`eholland@goodwinlaw.com
`Tel: 212-459-7230
`Fax: 212-355-3333
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`Cynthia Lambert Hardman
`Reg. No. 53,179
`Backup Counsel for Petitioner
`GOODWIN PROCTER LLP
`The New York Times Building
`620 Eighth Avenue
`New York, NY 10018-1405
`chardman@goodwinlaw.com
`Tel: 212-459-7295
`Fax: 212-355-3333
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`6
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`IPR2018-00459
`U.S. Patent No. 9,561,197
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`CERTIFICATE OF SERVICE
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`I certify that on July 9, 2018, the foregoing JOINT MOTION TO
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`TERMINATE INTER PARTES REVIEW, including all papers filed therewith, have
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`been served on the petitioner’s counsel of record via email, as agreed to by counsel,
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`as follows:
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`Elizabeth J. Holland: EHolland@goodwinlaw.com
`Cynthia Lambert Hardman: CHardman@goodwinlaw.com
`Andrew E. Riley: Ariley@goodwinlaw.com
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`By: / M.C. Phillips /
`Matthew C. Phillips
`Registration No. 43,403
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`7
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