`571–272–7822
`
`
`
`
`
` Paper No. 12
`Entered: September 15, 2015
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FRESENIUS KABI USA LLC,
`Petitioner,
`
`v.
`
`CUBIST PHARMACEUTICALS, INC,
`Patent Owner.
`____________
`
`IPR2015-01566 (Patent No. 8,129,342)
`IPR2015-01570 (Patent No. 8,058,238)
`IPR2015-01571 (Patent No. 8,058,238)
`IPR2015-01572 (Patent No. 8,058,238)
`____________
`
`
`Before BRIAN P. MURPHY, JON B. TORNQUIST, and
`TINA E. HULSE, Administrative Patent Judges.
`
`TORNQUIST, Administrative Patent Judge.
`
`
`
`ORDER
`Motions to Limit Petitions
`37 C.F.R. § 42.71
`
`
`
`
`
`
`
`IPR2015-01566 (Patent No. 8,129,342)
`IPR2015-01570 (Patent No. 8,058,238)
`IPR2015-01571 (Patent No. 8,058,238)
`IPR2015-01572 (Patent No. 8,058,238)
`
`On September 1, 2015, the parties filed joint motions to limit the
`
`Petition in each of IPR2015-01566 (Paper 12), IPR2015-01570 (Paper 9),
`IPR2015-01571 (Paper 12), and IPR2015-01572 (Paper 12), pursuant to a
`Joint Stipulation and Agreement between the parties (Ex. 1041 (unredacted
`version), Ex. 1042 (redacted version)). The parties also filed joint requests
`to treat the Stipulation and Agreement as business confidential information,
`to be kept separate from the files of the involved patents. See, e.g.,
`IPR2015-01566, Paper 13.
`In IPR2015-01566 the parties’ seek to remove from consideration
`claims 1–22, 24–52, and 54 of U.S. Patent No. 8,129,342 and, thereby, to
`limit the Petition to claims 23 and 53. IPR2015-01566, Paper 12, 3.
`In IPR2015-01570 the parties seek to remove from consideration
`claims 3–7, 21–25, 27–33, 35–44, 48–52, 55–57, 61–63, 66, 85, 87–89, 92–
`97, 99–109, 113, 115–121, 123–151, 153–159, 161, 162, 164–167, 175–184,
`189, and 190 of U.S. Patent No. 8,058,238 and, thereby, to limit the Petition
`to claim 98. IPR2015-01570, Paper 9, 3–4.
`In IPR2015-01571 the parties seek to remove from consideration
`claims 1–19, 21–44, 48–51, 53, 92–97, 99–107, 112–146, 151–167, 176,
`177, 179, 183–186, 188, and 189 of U.S. Patent No. 8,058,238 and, thereby,
`to limit the Petition to claims 98 and 187. IPR2015-01571, Paper 12, 3–4.
`In IPR2015-01572 the parties seek to remove from consideration
`claims 20, 45–47, 49–52, 54–90, 108–111, 147–150, 168–175, 178, 180–
`183, and 190–192 of U.S. Patent No. 8,058,238 and, thereby, to limit the
`Petition to claim 91. IPR2015-01572, Paper 12, 3–4.
`
`
`
`2
`
`
`
`IPR2015-01566 (Patent No. 8,129,342)
`IPR2015-01570 (Patent No. 8,058,238)
`IPR2015-01571 (Patent No. 8,058,238)
`IPR2015-01572 (Patent No. 8,058,238)
`
`
`The above-identified proceedings are still in their preliminary stages,
`and a decision whether to institute trial has not yet been made. The
`narrowing of issues at this preliminary stage of the proceedings would serve
`to both conserve judicial resources and facilitate the Board’s goal of
`resolving inter partes reviews in a just, speedy, and inexpensive manner.
`37 C.F.R. § 42.1(b). Accordingly, we grant the parties’ joint motion to limit
`the Petition in each of the above-identified proceedings.
`Based on the foregoing, it is:
`ORDERED, that the parties’ joint motions to limit the Petitions filed
`in IPR2015-01566, IPR2015-01570, IPR2015-01571, and IPR2015-01572
`are GRANTED; and
`FURTHER ORDERED that the Petition in IPR2015-01566 is limited
`to claims 23 and 53 of U.S. Patent No. 8,129,342;
`FURTHER ORDERED that the Petition in IPR2015-01570 is limited
`to claim 98 of U.S. Patent No. 8,058,238;
`FURTHER ORDERED that the Petition in IPR2015-01571 is limited
`to claims 98 and 187 of U.S. Patent No. 8,058,238;
`FURTHER ORDERED that the Petition in IPR2015-01572 is limited
`to claim 91 of U.S. Patent No. 8,058,238; and
`
`FURTHER ORDERED that the parties’ request that the joint
`Stipulation and Agreement (Ex. 1041) be treated as business confidential
`information and kept separate from the patent files, is GRANTED.
`
`
`
`
`
`
`
`3
`
`
`
`IPR2015-01566 (Patent No. 8,129,342)
`IPR2015-01570 (Patent No. 8,058,238)
`IPR2015-01571 (Patent No. 8,058,238)
`IPR2015-01572 (Patent No. 8,058,238)
`
`PETITIONER:
`
`Elizabeth Holland
`Cynthia Hardman
`GOODWIN PROCTER LLP
`eholland@goodwinprocter.com
`chardmani@goodwinprocter.com
`
`PATENT OWNER:
`Emily R. Whelan
`Andrej Barbic
`WILMER CUTLER PICKERING HALE AND DORR LLP
`Emily.Whelan@wilmerhale.com
`Andrej.Barbic@wilmerhale.com
`
`Gerard M. Devlin, Jr.
`Lisa A. Jakob
`MERCK & CO., INC.
`Gerard.Devlin@merck.com
`Lisa.Jakob@merck.com
`
`
`
`4
`
`
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