Case: 1:16-cv-00651 Document #: 93 Filed: 01/29/18 Page 1 of 4 PageID #:2563
`
`HOSPIRA, INC.
`
`
`
`
`
`FRESENIUS KABI USA, LLC
`
`
`
`
`
`v.
`
`
`
`
`
`
`
`
`
`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE NORTHERN DISTRICT OF ILLINOIS
`EASTERN DIVISION
`
`)
`)
`)
`)
`)
`)
`)
`)
`
`)
`
`
`
`JOINT STIPULATION
`
`
`
`
`
`C.A. No. 16-cv-651
`C.A. No. 17-cv-7903
`
`Hon. Judge Rebecca R. Pallmeyer
`
`Plaintiff,
`
`Defendant.
`
`This stipulation is made by and between Plaintiff Hospira, Inc. (“Hospira”) and
`
`Defendant Fresenius Kabi USA, LLC (“Fresenius Kabi”).
`
`WHEREAS, on January 15, 2016, Hospira filed a Complaint against Fresenius Kabi for
`
`infringement of U.S. Patent Nos. 8,242,158; 8,338,470; 8,455,527; and 8,648,106, captioned
`
`Hospira, Inc. v. Fresenius Kabi USA, LLC, C.A. No. 16-cv-651 (“the First Action”), related to
`
`Fresenius Kabi’s submission of Amended New Drug Application No. 208129 (“ANDA
`
`208129”) to the Food and Drug Administration seeking approval to market dexmedetomidine
`
`hydrochloride for injection, 80 mcg/20 mL, 200 mcg/50 mL, and 400 mcg/100 mL (“Fresenius
`
`Kabi’s Proposed ANDA Products”);
`
`WHEREAS, on November 1, 2017, Hospira filed a Complaint against Fresenius Kabi for
`
`infringement of later-issued U.S. Patent No. 9,616,049, captioned Hospira, Inc. v. Fresenius
`
`Kabi USA, LLC, C.A. No. 17-cv-7903 (“the Second Action”), related to Fresenius Kabi’s
`
`submission of ANDA 208129 to the Food and Drug Administration seeking approval to market
`
`Fresenius Kabi’s Proposed ANDA Products;
`
`
`
`HOSPIRA, INC.
`
`
`
`
`
`FRESENIUS KABI USA, LLC
`
`
`
`
`
`v.
`
`
`
`
`
`
`
`
`
`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE NORTHERN DISTRICT OF ILLINOIS
`EASTERN DIVISION
`
`)
`)
`)
`)
`)
`)
`)
`)
`
`)
`
`
`
`JOINT STIPULATION
`
`
`
`
`
`C.A. No. 16-cv-651
`C.A. No. 17-cv-7903
`
`Hon. Judge Rebecca R. Pallmeyer
`
`Plaintiff,
`
`Defendant.
`
`This stipulation is made by and between Plaintiff Hospira, Inc. (“Hospira”) and
`
`Defendant Fresenius Kabi USA, LLC (“Fresenius Kabi”).
`
`WHEREAS, on January 15, 2016, Hospira filed a Complaint against Fresenius Kabi for
`
`infringement of U.S. Patent Nos. 8,242,158; 8,338,470; 8,455,527; and 8,648,106, captioned
`
`Hospira, Inc. v. Fresenius Kabi USA, LLC, C.A. No. 16-cv-651 (“the First Action”), related to
`
`Fresenius Kabi’s submission of Amended New Drug Application No. 208129 (“ANDA
`
`208129”) to the Food and Drug Administration seeking approval to market dexmedetomidine
`
`hydrochloride for injection, 80 mcg/20 mL, 200 mcg/50 mL, and 400 mcg/100 mL (“Fresenius
`
`Kabi’s Proposed ANDA Products”);
`
`WHEREAS, on November 1, 2017, Hospira filed a Complaint against Fresenius Kabi for
`
`infringement of later-issued U.S. Patent No. 9,616,049, captioned Hospira, Inc. v. Fresenius
`
`Kabi USA, LLC, C.A. No. 17-cv-7903 (“the Second Action”), related to Fresenius Kabi’s
`
`submission of ANDA 208129 to the Food and Drug Administration seeking approval to market
`
`Fresenius Kabi’s Proposed ANDA Products;
`
`
`
`Case: 1:16-cv-00651 Document #: 93 Filed: 01/29/18 Page 2 of 4 PageID #:2564
`
`WHEREAS, on December 1, 2017, Fresenius Kabi filed a Counterclaim in the Second
`
`Action asking for declaratory judgment of non-infringement and invalidity of U.S. Patent No.
`
`9,320,712 and Hospira answered the Counterclaim on December 22, 2017;
`
`WHEREAS, on November 27, 2017, the Court issued its Claim Construction Opinion
`
`and Order (D.I. 69) in the First Action, which the parties agree applies to the same claim terms in
`
`the Second Action;
`
`WHEREAS, the parties jointly agreed to limit the number of claims asserted from each
`
`patent in the First and Second Action to simplify issues for expert discovery and trial;
`
`It is hereby STIPULATED AND AGREED, subject to the approval of the Court, that:
`
`1.
`
`Hospira asserts only these claims from all asserted patents and waives the
`
`assertion of all other claims: claims 6, 8, and 13 of U.S. Patent No. 8,455,527; claims 6 and 9 of
`
`U.S. Patent No. 8,648,106; claim 5 of U.S. Patent No. 9,320,712 and claims 4, 8, 13, and 14 of
`
`U.S. Patent No. 9,616,049. Fresenius Kabi will not assert counterclaims of non-infringement or
`
`invalidity of any other claims.
`
`2.
`
`Fresenius Kabi hereby stipulates, in the First Action, that Fresenius Kabi’s
`
`Proposed ANDA Products described in ANDA 208129, and/or the use of Fresenius Kabi’s
`
`Proposed ANDA Products, would meet the limitations of claim 6 of U.S. Patent No. 8,455,527;
`
`and claims 6 and 9 of U.S. Patent No. 8,648,106 under 35 U.S.C. § 271(e) under the claim
`
`constructions entered in this action, to the extent these claims are valid and enforceable. This
`
`Stipulation does not limit or otherwise affect Fresenius Kabi’s ability to defend against Hospira’s
`
`asserted claims on any other ground, including, but not limited to, asserted defenses of invalidity
`
`and/or unenforceability.
`
`
`
`2
`
`
`
`Case: 1:16-cv-00651 Document #: 93 Filed: 01/29/18 Page 3 of 4 PageID #:2565
`
`3.
`
`Fresenius Kabi hereby stipulates, in the Second Action, that Fresenius Kabi’s
`
`Proposed ANDA Products described in ANDA 208129, and/or the use of Fresenius Kabi’s
`
`Proposed ANDA Products, would meet the limitations claim 5 of U.S. Patent No. 9,320,712 and
`
`claims 4, 8, 13, and 14 of U.S. Patent No. 9,616,049 under 35 U.S.C. § 271(e) under the claim
`
`constructions entered in this action, to the extent these claims are valid and enforceable. This
`
`Stipulation does not limit or otherwise affect Fresenius Kabi’s ability to defend against Hospira’s
`
`asserted claims on any other ground, including, but not limited to, asserted defenses of invalidity
`
`and/or unenforceability.
`
`
`Fresenius Kabi withdraws the following invalidity theories that are the subject of
`
`4.
`
`Hospira’s Motion to Strike Untimely Invalidity Contentions (see D.I. 81 at 5-6):
`
`• Alleged invalidating prior use under 35 U.S.C. § 102(b) based on
`Investigational New Drug Application (“IND”) No. 32,934 (Pages 35-37
`of Fresenius Kabi’s Amended Final Invalidity Contentions); and
`
`• Alleged prior invention under Section 102(g) based on work relating to the
`IND (Pages 120-125 of Fresenius Kabi’s Amended Final Invalidity
`Contentions).
`
`The Revised Scheduling Order (Case No. 17-7903, D.I. 23) is amended as
`
`
`5.
`
`follows:
`
`Event
`
`Fresenius Kabi’s Non-Infringement Contentions (of ‘527 Claims
`8 and 13)
`
`Hospira’s Response to Fresenius Kabi’s Amended Final
`Invalidity Contentions
`
`Close of Fact Discovery
`
`Opening expert reports [Pl. Infringement, Secondary
`Considerations; Def. Invalidity]
`
`
`Date
`
`March 26, 2018
`
`March 26, 2018
`
`April 2, 2018
`
`April 16, 2018
`
`
`
`3
`
`
`
`Case: 1:16-cv-00651 Document #: 93 Filed: 01/29/18 Page 4 of 4 PageID #:2566
`
`Responsive expert reports [Pl. Validity; Def. Non-
`infringement, Secondary Considerations]
`
`Close expert discovery
`
`Hospira’s draft Pre-trial Order
`
`Final Pre-trial Order
`
`Bench Trial
`
`Fresenius Kabi Will Not Launch (Without Opinion) Before
`
`
`
`
`
`
`
`
`
`Date: January 29, 2018
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`May 21, 2018
`
`June 13, 2018
`
`June 20, 2018
`
`July 2, 2018
`
`July 16-20, 2018
`
`August 17, 2018
`
`ENTER:
`
`_______________________________________
`REBECCA R. PALLMEYER
`United States District Judge
`
`
`
`4
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
