IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`FRESENIUS KABI USA LLC
`
`Petitioner,
`
`
`
`v.
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`
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`CUBIST PHARMACEUTICALS, INC.
`
`Patent Owner.
`
`
`
`Case: IPR2015-01571
`Patent No. 8,058,238
`
`
`JOINT MOTION TO LIMIT PETITION UNDER 37 C.F.R. § 42.71
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`
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`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 LIMIT PETITION UNDER 37 C.F.R. § 42.71
`
`
`
`
`
`
`
`
`
`
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`
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`I.
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`
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`STATEMENT OF THE PRECISE RELIEF REQUESTED
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`Pursuant to 37 C.F.R. § 42.25 and an email authorizing this motion in Inter
`
`Partes Review IPR2015-01571, which concerns U.S. Patent No. 8,058,238 (“the
`
`’238 Patent”)1 Petitioner Fresenius Kabi USA LLC (“Fresenius”) and Patent
`
`Owner Cubist Pharmaceuticals LLC (“Cubist”) jointly request that the Board (1)
`
`limit the petition to claims 98 and 187, and (2) remove 1-19, 21-44, 48-51, 53, 92-
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`97, 99-107, 112-146, 151-167, 176, 177, 179, 183-186 and 188-189 of the ’238
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`Patent from this consideration in this proceeding.
`
`II.
`
`STATEMENT OF FACTS
`
`Fresenius filed a petition for inter partes review on July 10, 2015, requesting
`
`review of claims 1-19, 21-44, 48-51, 53, 92-107, 112-146, 151-167, 176, 177, 179,
`
`and 183-189 of the ’238 Patent. This proceeding is still in its preliminary stages,
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`and the Board has not yet decided whether to institute trial.
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`Fresenius and Cubist are parties to a litigation concerning the ’238 patent in
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`the United States District Court for
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`the District of Delaware, Cubist
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`Pharmaceuticals, Inc., v. Fresenius Kabi USA, LLC, C.A. No. 14-914-GMS
`
`
`1
`August 25, 2015 email from Maria Vignone, Paralegal Operations manager,
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`Patent Trial and Appeal Board to Cynthia Lambert Hardman and other.
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`1
`
`
`
`
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`(D.Del.).2 In the Delaware Litigation, on August 10, 2015, Fresenius and Cubist
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`filed, under seal, a Stipulation and Agreement to Narrow Issues in the Litigation
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`and IPR Proceedings and Covenant Not to Sue (“Stipulation and Agreement”),
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`wherein the parties agreed to narrow the issues in dispute in both the litigation and
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`in this inter partes review by, inter alia, seeking to remove claims 1-19, 21-44, 48-
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`51, 53, 92-97, 99-107, 112-146, 151-167, 176, 177, 179, 183-186 and 188-189 of
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`the ’238 patent from consideration in this proceeding.3
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`III. ARGUMENT
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`A. Limiting the Petition in IPR2015-01571 is Appropriate
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`The parties respectfully submit that the Board should limit the petition in
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`IPR2015-01571 for at least the following reasons.
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`
`2
`The district court litigation also involves U.S. Patent Nos. 6,468,967,
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`6,852,689, and 8,129,342, and Fresenius has filed petitions for inter partes review
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`concerning each of these patents, and additional petitions on the ’238 patent. See
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`IPR2015-00223, IPR2015-00227, IPR2015-01566, IPR2015-01570, and IPR2015-
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`01572.
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`3
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`A redacted public version of the Stipulation and Agreement was filed on
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`August 17, 2015.
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`
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`2
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`
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`First, the parties are filing this joint motion before the Board has decided the
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`merits of the proceeding. Indeed, the Patent Owner’s Preliminary Response is not
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`yet due, and the Board has not yet decided whether to institute trial.
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`Second, the parties have agreed to limit this proceeding in connection with a
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`broader agreement
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`to narrow
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`the disputed
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`issues
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`in several co-pending
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`proceedings, including multiple inter partes reviews and a district court litigation.
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`Third, because the merits of the petition have not been determined, reducing
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`the number of claims at this early juncture promotes efficient use of the resources
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`of the Board, and saves expenses for the parties.
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`B. A Copy of the Stipulation is Provided
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`The Stipulation and Agreement has been made in writing, and a true copy is
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`filed herewith as business confidential information pursuant to 35 U.S.C. § 317(b)
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`and 37 C.F.R. § 42.74, as Exhibit 1041. A Joint Request to File an Agreement as
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`Business Confidential Information under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74
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`is also being filed herewith. The redacted public version of the Stipulation and
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`Agreement filed in the district court litigation is also submitted herewith as Exhibit
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`1042.
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`C.
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`Summary
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`For the foregoing reasons, Fresenius and Cubist respectfully request that the
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`Board limit the petition to claims 98 and 187, and remove claims 1-19, 21-44, 48-
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`
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`3
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`51, 53, 92-97, 99-107, 112-146, 151-167, 176, 177, 179, 183-186 and 188-189
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`from consideration in this proceeding.
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`
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`Respectfully submitted,
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`/Elizabeth J. Holland/
`Elizabeth J. Holland
`Reg. No. 47,657
`Lead Attorney for Petitioner Fresenius Kabi
`USA LLC
`
`
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`Respectfully submitted,
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`/Emily R. Whelan/
`Emily R. Whelan
`Reg. No. 50,391
`Lead Attorney for Patent Owner Cubist
`Pharmaceuticals LLC
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`4
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`
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`Dated: September 1, 2015
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`Dated: September 1, 2015
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`CERTIFICATE OF SERVICE
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`I hereby certify that “Joint Motion to Limit Petition Under 37 C.F.R. §
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`42.71,” “Fresenius Kabi USA LLC’s Updated Exhibit List,” and Exhibits 1041 and
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`1042 were served via electronic mail on September 1, 2015, upon:
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`Emily R. Whelan, Emily.Whelan@wilmerhale.com
`Andrej Barbic, Ph.D., Andrej.Barbic@wilmerhale.com
`Gerard M. Devlin, Jr., Gerard.Devlin@merck.com
`Lisa A. Jakob, Lisa.Jakob@merck.com
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`
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`Dated: September 1, 2015
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`
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`/Ryan C. Curiel/
`Ryan C. Curiel
`GOODWIN PROCTER LLP
`The New York Times Building
`620 Eighth Avenue
`New York, New York 10018-1405
`Tel: 212-813-8800
`Fax: 212-355-3333
`rcuriel@goodwinprocter.com
`
`
`
`5
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