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