`Tel: 571-272-7822
`
`Paper No. 30
`
`
` Entered: June 14, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`FRESENIUS KABI USA LLC,
`Petitioner,
`
`v.
`
`CUBIST PHARMACEUTICALS LLC,
`Patent Owner.
`____________
`
`Cases: IPR2015-01566 (Patent 8,129,342 B2)
`IPR2015-01570 (Patent 8,058,238 B2)
`IPR2015-01571 (Patent 8,058,238 B2)
`____________
`
`
`Before BRIAN P. MURPHY, JON B. TORNQUIST, and
`TINA E. HULSE, Administrative Patent Judges.
`
`MURPHY, Administrative Patent Judge.
`
`
`ORDER
`Termination of the Proceedings
`35 U.S.C. § 317(a), 37 C.F.R. § 42.72
`
`
`
`IPR2015-01566 (Patent 8,129,342 B2)
`IPR2015-01570 (Patent 8,058,238 B2)
`IPR2015-01571 (Patent 8,058,238 B2)
`
`On June 8, 2016, we authorized Fresenius Kabi USA LLC
`(“Petitioner”) and Cubist Pharmaceuticals LLC (“Patent Owner”) to file a
`joint motion to terminate the above-identified proceedings. On June 10,
`2016, pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. § 42.72, the parties filed
`a Joint Motion to terminate these proceedings. Paper 28 (“Joint Motion” or
`“Joint Mot.”).1 The parties also filed exhibits in support of their Joint
`Motion. Ex. 1043 (“Consent Judgment”);2 Ex. 1044 (“Cert. Denial”).
`“An inter partes review instituted under this chapter shall be
`terminated with respect to any petitioner upon the joint request of the
`petitioner and the patent owner, unless the Office has decided the merits of
`the proceeding before the request for termination is filed.” 35 U.S.C.
`§ 317(a). The Board has not yet decided the merits of these proceedings,
`and final written decisions have not been entered. Petitioner and Patent
`Owner represent that there are no other related proceedings currently
`pending before the Board involving the patents at issue. Joint Mot. ¶ 4.
`Petitioner and Patent Owner identify related, co-pending U.S. district
`court proceedings, Cubist Pharmaceuticals, Inc. v. Hospira, Inc., 1:12-cv-
`00367-GMS (D. Del.) (“the Hospira Case”). Id. ¶ 5. In the Hospira Case,
`the district court found the presently challenged claims of U.S. Patent No.
`8,129,342 and U.S. Patent No. 8,058,238 invalid, a decision that was
`
`
`1 For ease of reference, all citations are to the papers and exhibits filed in
`IPR2015-01566. Similar papers and exhibits were filed in the other
`proceedings.
`2 We note Exhibit 1043 is marked “CONFIDENTIAL–FILED UNDER
`SEAL,” but the exhibit has not been filed as Parties and Board Only in
`PRPS, and the parties have not requested that the document be treated as
`business confidential information. 35 U.S.C. § 317(b).
`2
`
`
`
`
`
`IPR2015-01566 (Patent 8,129,342 B2)
`IPR2015-01570 (Patent 8,058,238 B2)
`IPR2015-01571 (Patent 8,058,238 B2)
`
`affirmed on appeal. Id. Patent Owner’s petition for certiorari to the
`Supreme Court was denied on May 31, 2016. Id. ¶ 9; Ex. 1044, 6. The
`parties represent that their disputes concerning the validity of the challenged
`claims in these inter partes review proceedings have been resolved. Joint
`Mot. 3.
`Accordingly, we determine that good cause exists to terminate these
`proceedings.
`
`IV. ORDER
`
`
`
`For the foregoing reasons, it is
`
`ORDERED that the Joint Motions in IPR2015-01566 (Paper 28),
`
`IPR2015-01570 (Paper 25), and IPR2015-01571 (Paper 28) are granted; and
`FURTHER ORDERED that the above-identified inter partes review
`
`proceedings are hereby terminated.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`3
`
`
`
`IPR2015-01566 (Patent 8,129,342 B2)
`IPR2015-01570 (Patent 8,058,238 B2)
`IPR2015-01571 (Patent 8,058,238 B2)
`
`FOR PETITIONER:
`Elizabeth J. Holland
`Robert V. Cerwinski
`Cynthia Lambert Hardman
`Goodwin Procter LLP
`eholland@goodwinprocter.com
`rcerwinski@goodwinprocter.com
`chardman@goodwinprocter.com
`
`
`FOR PATENT OWNER:
`Emily R. Whelan
`Heather M. Petruzzi
`Gerard N. Devlin, Jr.
`Lisa A. Jakob
`Wilmer Cutler Pickering Hale and Dorr LLP
`emily.whelan@wilmerhale.com
`Heather.Petruzzi@wilmerhale.com
`gerard.devlin@wilmerhale.com
`lisa.jakob@wilmerhale.com
`
`
`
`
`
`4
`
`
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