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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`PATENT TRIAL AND APPEAL BOARD
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`ADAMIS PHARMACEUTICALS CORPORATION
`Petitioner
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`v.
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`BELCHER PHARMACEUTICALS, LLC
`Patent Owner
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`_____________________
`CASE: IPR2019-01021
`U.S. PATENT NO. 9,283,197
`_____________________
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`JOINT MOTION TO TERMINATE PURSUANT TO 35 U.S.C. § 317(b)
`AND 37 C.F.R. § 42.74(c)
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`I.
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`PRECISE RELIEF REQUESTED
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`Pursuant to 35 U.S.C. § 317(a), Petitioner Adamis Pharmaceuticals
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`Corporation, LLC (“Petitioner”) and Patent Owner Belcher Pharmaceuticals, LLC
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`(“Patent Owner”) jointly request termination of the inter partes review of U.S. Patent
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`No. 9,283,197 (“the ’197 patent”), Case IPR2019-01021, based on a settlement and
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`license agreement between Petitioner and Patent Owner.
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`II. REASONS FOR GRANTING THE MOTION
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`Pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. § 42.72, an inter partes review
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`proceeding “shall be terminated with respect to any petitioner upon the joint request
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`of the petitioner and the patent owner, unless the Office has decided the merits of
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`the proceeding before the request for termination is filed.”
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`The Board authorized the filing of the instant joint motion and request in its
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`e-mail to the parties on July 26, 2019. Consistent with the Board’s standing practice,
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`the Board’s notice of authorization instructs the parties that their joint motion should:
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`(1) include a brief explanation as to why termination is appropriate; (2) identify all
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`parties in any related district court litigation involving the patents in dispute and
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`discuss the current status of each such related litigation with respect to each party to
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`the litigation, and (3) identify the case numbers of any pending, related inter partes
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`review proceedings. This motion satisfies each of the above requirements and is
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`also accompanied by a true copy of the Parties’ fully-executed settlement and license
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`agreement, as required by 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b).
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`1.
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`Termination is Appropriate
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`Termination is appropriate because the Parties have settled their dispute and
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`this inter partes review has not been instituted. Petitioner filed its petition for inter
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`partes review on April 26, 2019. Patent Owner has not filed a preliminary response.
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`The Parties have settled their dispute, and have reached agreement to terminate this
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`inter partes review proceeding.
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`2.
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`All Parties in any Pending Related Litigation Involving the
`Patent at Issue and the Current Status of each Related
`Litigation with Respect to each Party to the Litigation
`Petitioner filed an action for a declaratory judgment of non-infringement
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`against the ’197 Patent in the Middle District of Florida Case No. 8:18-cv-02379-
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`WFJ-AAS. On July 25, 2019, Petitioner filed an Unopposed Stipulation to Dismiss
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`with Prejudice Case No. 8:18-cv-02379. On July 29, 2019, the District Court
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`dismissed the case with prejudice.
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`Patent Owner is presently asserting the ‘197 Patent against International
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`Medication System Limited and Hospira, Inc. in the District of Delaware, Case Nos.
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`1-18-cv-00960 and 1-17-cv-00775, respectively. A bench trial was held in Case No.
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`1-17-cv-00775 against Hospira, Inc. on June 19 and 20, 2019. The court has not yet
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`issued its ruling following the bench trial. Case No. 1-18-cv-00960 against
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`International Medication System Limited is currently stayed pending the outcome
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`of Case No. 1-17-cv-00775.
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`3.
`Related Inter Partes Review Proceedings
`Aside from this inter partes review proceeding, the ‘197 Patent is not involved
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`in any pending, related post grant review proceedings, or any other proceeding
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`currently before the Patent Office.
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`III. SETTLEMENT AGREEMENT
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`Pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(b), the Parties’
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`Settlement Agreement has been made in writing, and a true and correct copy is being
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`filed concurrently herewith as Exhibit 1026.1
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`Pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), and the Board’s
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`authorization of the filing of this joint request in its email to the Parties on July 26,
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`2019, the Parties jointly request that the true copy of the Settlement Agreement filed
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`concurrently herewith as Exhibit 1026 be treated as business confidential
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`information, which shall be kept separate from the file of U.S. Patent No. 9,283,197.
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`1 The Settlement Agreement is being filed via the Patent Review Processing
`System (PRPS) with access to “Parties and Board Only.”
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`The Parties further request the Board to not make Exhibit 1026 available to any third
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`party, except as provided for in 35 U.S.C. § 327(b) and 37 C.F.R. § 42.74(c).
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`IV. CONCLUSION
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`For all of these reasons, Petitioner and Patent Owner respectfully request
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`termination of the inter partes review of U.S. Patent No. 9,283,197, Case IPR2019-
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`01021.
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`Dated: July 29, 2019
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`Respectfully submitted,
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`/Jason A. Engel/
`Jason A. Engel
`Reg. No. 51,654
`Customer No. 24573
`Jason.Engel.PTAB@klgates.com
`T: (312) 807-4236
`F: (312) 827-8145
`K&L Gates LLP
`70 W. Madison Street, Suite 3100
`Chicago, IL 60602
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`Counsel for Petitioner
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`CERTIFICATE OF SERVICE
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` hereby certify that a true and correct copy of the foregoing, JOINT MOTION TO
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` I
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`TERMINATE PURSUANT TO 35 U.S.C. § 317(b) AND 37 C.F.R. § 42.74(c)
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`were served on July 29, 2019 via electronic mail on the following counsel of record
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`for Patent Owner:
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`Cole Y. Carlson
`cole.carlson@gray-robinson.com
`Stefan V. Stein
`stefan.stein@gray-robinson.com
`ptotpa@gray-robinson.com
`GrayRobinson, P.A.
`401 E. Jackson Street, Suite 2700
`Tampa, FL 33602
`Telephone: (813) 273-5000
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`By:
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`/Jason A. Engel/
`Jason A. Engel
`Reg. No. 51,654
`Customer No. 24573
`Jason.Engel.PTAB@klgates.com
`T: (312) 807-4236
`F: (312) 827-8145
`K&L Gates LLP
`70 W. Madison Street, Suite 3100
`Chicago, IL 60602
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