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`IN THE UNITED STATES DISTRICT COURT
`FOR THE NORTHERN DISTRICT OF ILLINOIS
`EASTERN DIVISION
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`HOSPIRA, INC.
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`Plaintiff,
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`v.
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`FRESENIUS KABI USA, LLC
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`Defendant.
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`C.A. Nos. 1:16-cv-00651
`1:17-cv-07903
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`Hon. Rebecca R. Pallmeyer
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`[PROPOSED] CONSENT JUDGMENT AND STIPULATED DISMISSAL
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`WHEREAS, Plaintiff Hospira, Inc. (“Hospira”) filed Complaints against Defendant
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`Fresenius Kabi USA, LLC (“Fresenius Kabi”), captioned Hospira, Inc. v. Fresenius Kabi USA,
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`LLC, 16-cv-651 and 17-cv-7903 for alleged infringement of U.S. Patent Nos. 8,242,158 (“the ’158
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`patent”); 8,338,470 (“the ’470 patent”); 8,455,527 (“the ’527 patent”); U.S. Patent No. 8,648,106
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`(“the ’106 patent”); U.S. Patent No. 9,320,712 (“the ’712 patent”); and U.S. Patent No. 9,616,049
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`(“the ’049 patent”) (collectively “the asserted patents”), related to Fresenius Kabi’s September 30,
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`2015 submission of Abbreviated New Drug Application No. 208129 and all amendments and
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`supplements thereto (“ANDA No. 208129”) seeking approval to market dexmedetomidine
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`hydrochloride products;
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`WHEREAS, Fresenius Kabi filed Counterclaims alleging that the asserted patents are
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`invalid and/or will not be infringed by the manufacture, use, sale, offering for sale, or importation
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`of dexmedetomidine hydrochloride products described in ANDA No. 208129 (“Fresenius Kabi
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`ANDA Products”);
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`WHEREAS, Hospira and Fresenius Kabi stipulated to the narrowing of asserted claims by
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`way of stipulation entered on January 29, 2018. D.I. 93 in Case No. 16 C 651;
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`Case: 1:16-cv-00651 Document #: 183 Filed: 12/20/18 Page 2 of 3 PageID #:6316
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`WHEREAS, Hospira informed Fresenius Kabi as of June 17, 2018 that it would further
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`narrow the asserted claims that it would continue to assert;
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`WHEREAS, in Hospira, Inc. v. Amneal Pharmaceuticals LLC, Civ. Action No. 1:15-cv-
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`00697-RGA (D. Del.), the court entered judgment finding, inter alia, that claims 3 and 4 of the
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`’158 patent, claim 4 of the ’470 patent, and claim 5 of the ’527 patent are invalid. D.I. 121;
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`WHEREAS, Hospira will not appeal that court’s judgment with respect to the ’158, ’470,
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`and ’527 patents;
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`WHEREAS, Fresenius Kabi received Tentative Approval on March 26, 2018 with regard
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`to ANDA No. 208129;
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`IT IS HEREBY ORDERED AND ADJUDGED:
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`That claims 3 and 4 of the ’158 patent are invalid, that Hospira did not assert any of the
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`remaining claims of the ’158 patent against the Fresenius Kabi ANDA Products, and that patent is
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`dismissed with prejudice;
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`That claim 4 of the ’470 patent is invalid, that Hospira did not assert any of the remaining
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`claims of the ‘470 patent against the Fresenius Kabi ANDA Products, and that patent is dismissed
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`with prejudice;
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`That claim 5 of the ’527 patent is invalid, that Hospira did not assert any of the remaining
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`claims of the ’527 patent against the Fresenius Kabi ANDA Products, and that patent is dismissed
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`with prejudice;
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`The parties stipulate that the Fresenius Kabi ANDA Products do not infringe claim 5 of the
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`’712 patent, that Hospira did not assert any of the remaining claims of the ’712 patent against the
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`Fresenius Kabi ANDA Products, and that patent is dismissed with prejudice;
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`Case: 1:16-cv-00651 Document #: 183 Filed: 12/20/18 Page 3 of 3 PageID #:6317
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`That this judgment shall finally conclude and dispose of all claims related to the ’158
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`Patent, the ’470 Patent, the ’527 Patent, and the ’712 patent as to Fresenius Kabi and Hospira with
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`regard to the Fresenius Kabi ANDA Products. All claims, counterclaims, affirmative defenses, and
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`demands related to these patents are dismissed with prejudice;
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`That this judgment is a final adjudication on the merits with respect to all claims related to
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`the ’158 Patent, the ’470 Patent, the ’527 Patent, and the ’712 Patent as to Fresenius Kabi and
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`Hospira with respect to the Fresenius Kabi ANDA Products; and
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`That this judgment constitutes a final, non-appealable judgment.
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`Dated: December 20, 2018
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`Respectfully submitted,
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`Respectfully submitted,
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`/s/ Sara T. Horton
`Bradford P. Lyerla
`Sara T. Horton
`Yusuf Esat
`JENNER & BLOCK
`353 N. Clark St.
`Chicago, IL 60654
`Telephone: 312 222-9350
`blyerla@jenner.com
`shorton@jenner.com
`yesat@jenner.com
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`Attorneys for Hospira, Inc.
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` /s/ Imron Aly
`Imron T. Aly
`Kevin M. Nelson
`Joel M. Wallace
`Tara L. Kurtis
`233 South Wacker Drive, Suite 7100
`Chicago, Illinois 60606
`(312) 258-5500
`ialy@schiffhardin.com
`knelson@schiffhardin.com
`jwallace@schiffhardin.com
`tkurtis@schiffhardin.com
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`Ahmed M.T. Riaz (pro hac vice)
`666 Fifth Avenue, 17th Floor
`New York, NY 10103
`(212) 753-5000
`ariaz@schiffhardin.com
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`Attorneys for Defendant Fresenius Kabi USA, LLC
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