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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`CIPLA LIMITED,
`Petitioner,
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`v.
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`ALCON RESEARCH LTD.,
`Patent Owner.
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`Case IPR2018-01021
`U.S. Patent No. 9,533,053
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`JOINT MOTION TO TERMINATE PROCEEDINGS
`UNDER 35 U.S.C. § 317(a)
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`Pursuant to 35 U.S.C. § 317(a), 37 C.F.R. §§ 42.72 and 42.74, and the
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`Board’s authorizing order, Petitioner Cipla Limited and Patent Owner Alcon
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`Research Ltd. jointly request termination of this uninstituted proceeding seeking
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`inter partes review of U.S. Patent No. 9,533,053.
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`The parties have resolved their dispute with respect to U.S. Patent No.
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`9,533,053—as described in the Agreement by the parties filed herewith as Exhibit
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`1042. Other than as indicated in the Agreement, there are no written or oral
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`agreements or understandings, including any collateral agreements, between the
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`parties, including but not limited to licenses, covenants not to sue, confidentiality
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`agreements, or other agreements of any kind, that are made in connection with, or
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`in contemplation of, the termination of this proceeding. See, e.g., General Growth
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`Properties, Inc. et al. v. Peschke, IPR2013-00400, Paper 35 at 2-3 (Apr. 9, 2014).
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`The parties are also filing concurrently herewith a joint request to treat the
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`Agreement as business confidential information and to keep it separate from the
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`files of the IPR and the involved patent under 35 U.S.C. § 317(b) and 37 C.F.R.
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`§ 42.74(c).
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`Termination of this proceeding is proper under 35 U.S.C. § 317(a), because
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`the Board has not instituted trial, let alone decided the merits of the proceeding.
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`Further, the parties are unaware of any matter before the USPTO that would be
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`affected by the outcome of this proceeding. The only related matter in the USPTO
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`2
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`is IPR2018-01020, which involves U.S. Patent No. 8,791,154. The parties are
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`concurrently requesting termination of that proceeding. Likewise, the parties are
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`concurrently seeking dismissal of all claims relating to U.S. Patent Nos. 8,791,154
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`and 9,533,053 in connection with Alcon Research, Ltd. v. Cipla Limited et al.,
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`1:17-cv-01244 (D. Del.). Accordingly, the parties respectfully request termination
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`of this proceeding.
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`The Patent Trial and Appeal Board is hereby authorized to charge any fees
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`associated with the filing to Deposit Account 501710 (Customer ID No. 27160).
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`Dated: September 14, 2018
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`Respectfully submitted,
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`/Christopher A. Suarez/
`Lead Attorney for Alcon Research Ltd.
`Reg. No. 72,553
`Williams & Connolly LLP
`725 Twelfth Street, N.W.
`Washington, DC 20005
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`/s/ Jitendra Malik
`Jitendra Malik, Ph.D.
`Lead Attorney for Cipla Limited
`Reg. No. 55,823
`Katten Muchin Rosenman LLP
`555 S. Tryon Street, Suite 2900
`Charlotte, NC 28202-4213
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that the above-captioned Joint Motion to
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`Terminate Proceedings Under 35 U.S.C. § 317(a), along with Exhibit 1042, were
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`served on September 14, 2018 by filing this document through the Patent Review
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`Processing System as well as delivering a copy via electronic mail upon the
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`following attorneys of record for the Petitioner and Patent Owner:
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`Jitendra Malik, Ph.D.
`Reg. No. 55,823
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`Brian Sodikoff
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`Reg. No. 54,697
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`Alissa M. Pacchioli
`Reg. No. 74,252
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`KATTEN MUCHIN ROSENMAN LLP WILLIAMS & CONNOLLY LLP
`555 S. Tryon Street, Suite 2900
`725 Twelfth Street, NW
`Charlotte, NC 28202-4213
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`Washington, D.C. 20005
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`jitty.malik@kattenlaw.com
`brian.sodikoff@kattenlaw.com
`alissa.pacchioli@kattenlaw.com
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`Dated: September 14, 2018
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`Christopher A. Suarez
`Reg. No. 72,553
`David M. Krinsky
`Reg. No. 72,338
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`csuarez@wc.com
`dkrinsky@wc.com
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`Respectfully submitted,
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`/s/ Jitendra Malik
`Jitendra Malik, Ph.D.
`Lead Attorney for Cipla Limited
`Reg. No. 55,823
`Katten Muchin Rosenman LLP
`555 S. Tryon Street, Suite 2900
`Charlotte, NC 28202-4213
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`4
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