UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`FRESENIUS KABI USA, LLC
`Petitioner
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`v.
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`CUBIST PHARMACEUTICALS, INC.
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`Patent Owner
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`Case IPR2015-01570
`(Patent No. 8,058,238)
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`JOINT MOTION TO TERMINATE PURSUANT TO 35 U.S.C. § 317
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`
`
`FRESENIUS KABI USA, LLC
`Petitioner
`
`v.
`
`CUBIST PHARMACEUTICALS, INC.
`
`Patent Owner
`
`Case IPR2015-01570
`(Patent No. 8,058,238)
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`JOINT MOTION TO TERMINATE PURSUANT TO 35 U.S.C. § 317
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`I.
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`Statement of Relief Requested
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`Pursuant to 35 U.S.C. § 317(a), 37 C.F.R. § 42.72, and the Board’s June 8,
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`2016 email authorization, Petitioner Fresenius Kabi USA, LLC (“Fresenius”) and
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`Patent Owner Cubist Pharmaceuticals, Inc. (“Cubist”) jointly request termination
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`of this inter partes review (“IPR”), which concerns U.S. Patent No. 8,058,238 (the
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`“’238 patent”).
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`II.
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`Statement of Facts
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`1.
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`2.
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`On July 10, 2015, Fresenius filed the petition in this IPR.
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`On January 28, 2016, IPR2015-01570 was instituted on claim 98 of
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`the ’238 patent.
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`3.
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`4.
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`Cubist has not yet filed its Patent Owner Response in this IPR.
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`There is only one other proceedings currently pending before the
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`Board relating to the ’238 patent, IPR2015-01571. The parties are simultaneously
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`moving for termination of this proceeding.
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`5.
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`In 2012, Cubist filed suits against Hospira, asserting that Hospira
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`infringed the ’238 patent, among other patents. The cases were consolidated as
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`Cubist Pharmaceuticals, Inc. v. Hospira, Inc., 1:12-cv-00367-GMS (D. Del.)
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`(“the Hospira Case”). In the Hospira Case, the district court found claim 98 of
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`the ’238 patent (among other claims) invalid, a decision that was affirmed on
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`1
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`appeal. Cubist Pharmaceuticals, Inc. v. Hospira, Inc., Nos. 2015-1197, -1204, -
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`1259 (Fed. Cir.) (“the Hospira Appeal”).
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`6.
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`In 2014, Cubist filed suit against Fresenius, asserting infringement of
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`the ’238 patent, among other patents. Cubist Pharmaceuticals, Inc. v. Fresenius-
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`Kabi USA LLC, 1:14-cv-00914-GMS (D. Del.) (“the Fresenius Case”). On
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`February 2, 2016, as a result of the Federal Circuit’s affirmance of invalidity in
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`the Hospira Appeal, Cubist and Fresenius consented to the entry of judgment that
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`claims 91, 98, and 187 of the ’238 patent, the only claims of the ’238 patent that
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`Cubist was asserting in the Fresenius Case, were invalid. Exhibit 1043.
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`7.
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`Cubist filed a petition for certiorari of the Hospira Appeal to the
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`United States Supreme Court. It also appealed the consent judgment from the
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`Fresenius Case to the Federal Circuit while its petition for certiorari in the
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`Hospira Appeal was pending (“the Fresenius Appeal”).
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`8.
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`On May 24, 2016, the Federal Circuit summarily affirmed the
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`judgment in the Fresenius Appeal.
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`9.
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`On May 31, 2016, the Supreme Court denied certiorari in the
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`Hospira Appeal. A true and correct copy of the Supreme Court’s May 31, 2016
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`Order List is being filed contemporaneously as Exhibit 1044 (see page 6).
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`2
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`10. There is no district court litigation currently pending relating to the
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`’238 patent.
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`III. Termination of this IPR is Appropriate
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`The Board should terminate this IPR for at least the following reasons.
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`First, there is no longer any dispute between the parties regarding the
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`validity of claim 98 of the ’238 patent. The district court’s decision of invalidity
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`of this claim in the Hospira case was affirmed by the Federal Circuit. The
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`Supreme Court subsequently denied certiorari to review the judgment in the
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`Hospira Appeal. As a result, the parties’ dispute concerning validity of claim 98
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`of the ’238 patent has been resolved.
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`In light of the final holding that the only claim at issue in this IPR is
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`invalid, further consideration of the instant Petition by the Board is unnecessary.
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`The parties accordingly seek termination of this IPR.
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`Second, the statutory condition for termination under 35 U.S.C. § 317(a) is
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`satisfied, as this joint request for termination is being filed before the Board has
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`decided the merits of the proceeding. The Board has adopted a general policy
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`that, in such circumstances, a proceeding should be terminated prior to the
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`issuance of a final written decision. See, e.g., Office Patent Trial Practice Guide,
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`77 Fed. Reg. 48,756, 48,768 (Aug. 14, 2012) (“The Board expects that a
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`3
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`proceeding will terminate after the filing of a settlement agreement, unless the
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`Board has already decided the merits of the proceeding.”).
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`Third, concluding this review at this early juncture promotes efficiency and
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`conserves the resources of the Board and the parties. The merits of the petition
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`have not yet been determined. Although the IPR has been instituted, Cubist has
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`not yet filed its Patent Owner’s Response. Termination of this proceeding at this
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`time conserves resources because it will obviate the need for the Board to take
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`further action including preparation of a final written decision.
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`Upon termination of this proceeding, there will be no pending proceedings
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`before the Board involving the ’238 patent.
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`For the foregoing reasons, the parties respectfully request termination of
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`this IPR without rendering a final written decision.
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`To the extent the joint motion to terminate is not granted, Petitioner intends
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`to continue fully participating in this proceeding. Patent Owner will not take any
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`further action in the proceeding.
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`4
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`Dated: June 10, 2016
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`Respectfully submitted,
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`/Elizabeth J. Holland/
`Elizabeth J. Holland
`Registration No. 47,657
`GOODWIN PROCTER LLP
`The New York Times Building
`620 Eighth Avenue
`New York, NY 10019-1405
`Tel: 212-813-8800
`Fax: 212-355-3333
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`Counsel for Fresenius Kabi USA LLC
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`/Emily R. Whelan/
`Emily R. Whelan
`Registration No. 50,391
`Wilmer Cutler Pickering Hale and Dorr LLP
`60 State Street
`Boston, MA 02109
`Tel: 617-526-6000
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`Counsel for Cubist Pharmaceuticals, LLC
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`5
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that I caused the JOINT MOTION TO
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`TERMINATE PURSUANT TO 35 U.S.C. § 317 and Exhibits 1043-1044 to be
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`served electronically via e-mail on June 10, 2016 on the following:
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`Emily R. Whelan - Emily.Whelan@wilmerhale.com
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`Gerard M. Devlin, Jr. - Gerard.Devlin@merck.com
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`Lisa A. Jakob - Lisa.Jakob@merck.com
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`Dated:
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`June 10, 2016
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`/Cynthia Lambert Hardman/
`Cynthia Lambert Hardman
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`6
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