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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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`PAR PHARMACEUTICAL, 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 IPR2018-01550
`Patent 9,561,197
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`__________________
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`JOINT MOTION TO TERMINATE INTER PARTES REVIEW
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`IPR2018-01550
`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 ............................................................................... 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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`IPR2018-01550
`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, at 2 (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
`Volusion v. Versata Software,
`CBM2013-00018, Paper 52 (P.T.A.B. June 17, 2014) .......................................... 4
`Statutes
`35 U.S.C. § 317 .......................................................................................................... 3
`35 U.S.C. § 317(a) .................................................................................................1, 2
`35 U.S.C. § 317(b) ..................................................................................................... 5
`Other Authorities
`Office Patent Trial Practice Guide,
`77 Fed. Reg. 48,756 (Aug. 14, 2012) ..................................................................... 3
`Regulations
`37 C.F.R. § 42.72 ....................................................................................................... 3
`37 C.F.R. § 42.74 ....................................................................................................... 3
`37 C.F.R. § 42.74(c) ...............................................................................................1, 5
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`
`
`ii
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`
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`STATEMENT OF RELIEF REQUESTED
`Pursuant to 35 U.S.C. § 317(a), Par Pharmaceutical, Inc. (“Par” or
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`IPR2018-01550
`U.S. Patent No. 9,561,197
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`I.
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`“Petitioner”) and Horizon Therapeutics, LLC (“Horizon” or “Patent Owner”)
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`jointly move that the Board terminate this inter partes review (IPR) proceeding,
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`which is directed at U.S. Patent No. 9,561,197 (“the ’197 patent”), in its entirety as
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`a result of settlement between Petitioner and Patent Owner. See Ex. 2001
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`(Confidential).
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`The parties are concurrently filing a separate request that the settlement
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`agreement (Ex. 2001) 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 August 16, 2018. Patent Owner has yet
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`to file its Preliminary Response, which is not due until November 30, 2018 (see
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`Paper No. 5), and the Board has yet to issue a decision instituting inter partes
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`review. Accordingly, no oral argument has been held and the Board has yet to
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`issue a final decision in this matter.
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`On September 17, 2018, Petitioner and Patent Owner entered into a
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`settlement agreement. See Ex. 2001 (Confidential). Under the terms of the
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`settlement agreement, the parties agreed to jointly seek termination of IPR2018-
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`1
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`01550, and the parties agreed to dismiss related district court litigation, Horizon
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`IPR2018-01550
`U.S. Patent No. 9,561,197
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`Therapeutics, LLC v. Par Pharmaceutical, Inc., Civil Action No. 1:17-cv-05901-
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`MAH-KM (D.N.J. filed Aug. 08, 2017). Thus, this settlement agreement resolves
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`all currently pending Patent Office and District Court proceedings between the
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`parties involving the ’197 patent.
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`III. RELATED LITIGATION
`The following currently pending district court litigation proceeding involves
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`the ’197 patent:
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`(a) Horizon Therapeutics, LLC v. Par Pharmaceutical, Inc., Civil Action
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`No. 1:17-cv-05901-MAH-KM (D.N.J. filed Aug. 08, 2017). The
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`Complaint asserts infringement of the ’197 patent.
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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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`further provides: “If no petitioner remains in the inter partes review, the Office
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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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`2
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`IPR2018-01550
`U.S. Patent No. 9,561,197
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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. 2001 (Confidential). Pursuant to that agreement,
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`Petitioner represents that it will no longer participate in this inter partes review and
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`will file no further papers. Id. Thus, the Board should terminate the proceeding
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`with respect to Par, the sole Petitioner in this proceeding. Moreover, because no
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`petitioner remains after termination with respect to Par, the Board should exercise
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`its discretion and terminate review in its entirety under 35 U.S.C. § 317 and 37
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`C.F.R. §§ 42.72, 42.74.
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`3
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`The Board has terminated entire IPR proceedings based on joint motions to
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`IPR2018-01550
`U.S. Patent No. 9,561,197
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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 submission of the petitioner’s reply because “the record
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`is not yet closed, and the Board has not yet decided the merits of this
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`proceeding.”); Volusion, Inc. v. Versata Software, Inc., et al., CBM2013-00018,
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`Paper 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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`Here, the parties have entered into a settlement agreement well in advance of
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`an institution decision and even the deadline for the Patent Owner’s Preliminary
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`Response, which is not due for approximately two months. See Paper No. 5. The
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`4
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`parties now jointly seek termination of the proceeding. Accordingly, termination
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`IPR2018-01550
`U.S. Patent No. 9,561,197
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`of the instant IPR at this early stage is appropriate under PTAB precedent and
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`would save the Board significant administrative and judicial resources in issuing an
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`institution decision, reviewing additional briefing by the parties, holding oral
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`argument, and issuing a final written decision. If the present motion is not granted
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`and the instant IPR is not terminated, Petitioner has agreed to no longer participate
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`in the instant IPR or any subsequent appeals, pursuant to the settlement agreement
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`between the parties. See Ex. 2001. (Confidential).
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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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`2001 a true copy of the complete settlement agreement entered between the parties
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`on September 17, 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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`IPR2018-01550
`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 September 28
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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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`
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`Date: 2018 September 28
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` By: / David Silverstein /
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` David Silverstein
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` Registration No. 61,948
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`David H. Silverstein
`Reg. No. 61,948
`Lead Counsel for Petitioner
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`AXINN, VELTROP & HARKRIDER
`LLP
`114 West 47th Street, 22nd Floor
`New York, NY 10036
` (212) 261-5651
`dsilverstein@axinn.com
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`Aziz Burgy
`Reg. No. 51,514
`Backup Counsel for Petitioner
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`AXINN, VELTROP & HARKRIDER
`LLP
`114 West 47th Street, 22nd Floor
`New York, NY 10036
`(212) 261-5651
`aburgy@axinn.com
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`6
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`IPR2018-01550
`U.S. Patent No. 9,561,197
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`CERTIFICATE OF SERVICE
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`I certify that on September 28, 2018, the foregoing JOINT REQUEST TO
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`TERMINATE, including all papers filed therewith, have been served on the
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`petitioner’s counsel of record via email, as agreed to by counsel, as follows:
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`David H. Silverstein:
`Aziz Burgy:
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`Dan Feng Mei:
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`Christopher M. Gallo:
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`dsilverstein@axinn.com
`aburgy@axinn.com
`dmei@axinn.com; Ravicti@axinn.com
`cgallo@axinn.com
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`By:/ M.C. Phillips /
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`Matthew C. Phillips
`Registration No. 43,403
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`7
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