`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`TEVA PHARMACEUTICALS USA, INC. AND WATSON
`LABORATORIES, INC.
`Petitioners,
`v.
`MERCK SHARP & DOHME CORP.
`Patent Owner.
`_______________
`Case IPR2020-01045
`Patent 7,326,708
`_______________
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`JOINT MOTION TO TERMINATE IPR PURSUANT TO 35 U.S.C. § 317
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`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`
`
`
`Case IPR2020-01045
`Patent No. 7,326,708
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`Pursuant to 35 U.S.C. § 317 and C.F.R. § 42.74, and pursuant to the
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`authorization to file this motion provided by the Board in an email dated November
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`20, 2020, Petitioners Teva Pharmaceuticals USA, Inc. and Watson Laboratories, Inc.
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`(collectively “Teva”) and Patent Owner Merck Sharp & Dohme Corp. (“Merck”)
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`jointly request the termination of this inter partes review of U.S. Patent
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`No. 7,326,708. Pursuant to the Board’s November 20, 2020 e-mail, Teva and Merck
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`confirm that the grant of this Joint Motion to Terminate will fully dispose of
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`IPR2020-01045.
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`Teva and Merck have settled their dispute and have reached agreement to
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`terminate this inter partes review. Pursuant to 35 U.S.C. § 317(b) and 37 C.F.R.
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`§ 42.74(b), the parties’ settlement agreements have been made in writing, and a true
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`and correct copy is being filed concurrently herewith as Exhibit 1023. The parties
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`state that there are no other agreements, oral or written, between the parties made in
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`connection with, or in contemplation of, the termination of the proceeding, beyond
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`the written agreements submitted as Ex. 1023. The parties are also filing
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`concurrently herewith a joint request to treat the settlement agreements, Ex. 1023,
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`as business confidential information and to keep Ex. 1023 separate from the files of
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`the IPR and the involved patent pursuant to 35 U.S.C. §317(b) and 37 C.F.R.
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`§ 42.74(b).
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`1
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`Case IPR2020-01045
`Patent No. 7,326,708
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`Termination of this inter partes review is proper under 35 U.S.C. § 317(a)
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`because the Board has not yet decided the merits of the proceeding.
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`No other party’s rights will be prejudiced by the termination of this inter
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`partes review.
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`The pending litigation related to this patent between Teva and Merck has been
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`settled.
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`For the foregoing reasons, Teva and Merck respectfully jointly request
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`termination of this inter partes review.
`
`Date: November 24, 2020
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`2
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`Respectfully submitted,
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`
`
`/Stanley E. Fisher/
`Stanley E. Fisher (Reg. No. 55,820)
`Bruce R. Genderson (Pro Hac Vice
`motion to be submitted)
`Jessamyn S. Berniker (Reg. No.
`72,328)
`Alexander S. Zolan (Pro Hac Vice
`motion to be submitted)
`Elise M. Baumgarten (Pro Hac Vice
`motion to be submitted)
`Shaun P. Mahaffy (Reg. No. 75,534)
`Anthony H. Sheh (Reg. No. 70,576)
`WILLIAMS & CONNOLLY LLP
`725 Twelfth Street, N.W.
`Washington, DC 20005
`T: (202) 434-5000
`F: (202) 434-5029
`sfisher@wc.com
`bgenderson@wc.com
`jberniker@wc.com
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`
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`Case IPR2020-01045
`Patent No. 7,326,708
`
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`Counsel for Patent Owner
`Merck Sharp & Dohme Corp.
`
`/Keith A. Zullow/
`Keith A. Zullow (Reg. No. 37,975)
`Goodwin Procter LLP
`The New York Times Building
`620 Eighth Avenue
`New York, NY 10018-1405
`Tel: 212-813--8800
`Fax: 212-355-3333
`kzullow@goodwinlaw.com
`
`Counsel for Petitioners Teva
`Pharmaceuticals USA,
`Inc. and
`Watson Laboratories, Inc.
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`3
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`Case IPR2020-01045
`Patent No. 7,326,708
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`CERTIFICATION OF SERVICE ON PATENT OWNER
`Pursuant to 37 C.F.R. §§ 42.6(e), the undersigned certifies service of the
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`foregoing Joint Motion to Terminate IPR Pursuant to 35 U.S.C. § 317 on the counsel
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`of record for the Patent Owner via electronic mail to the following addresses:
`
`Stanley E. Fisher
`Jessamyn S. Berniker
`Bruce R. Genderson
`Alexander S. Zolan
`Elise M. Baumgarten
`Shaun P. Mahaffy
`Anthony H. Sheh
`Williams & Connolly LLP
`725 Twelfth Street, N.W.
`Washington, DC 20005
`sfisher@wc.com
`jberniker@wc.com
`bgenderson@wc.com
`azolan@wc.com
`ebaumgarten@wc.com
`smahaffy@wc.com
`asheh@wc.com
`MerckSitagliptin@wc.com
`
`
`
`/Keith A. Zullow /
`Keith A. Zullow (Reg. No. 37,975)
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`4
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`Dated: November 24, 2020
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