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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`FRESENIUS KABI USA LLC
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`Petitioner,
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`v.
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`CUBIST PHARMACEUTICALS, INC.
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`Patent Owner.
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`Case: IPR2015-01572
`Patent No. 8,058,238
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`JOINT MOTION TO LIMIT PETITION UNDER 37 C.F.R. § 42.71
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`I.
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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
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`Partes Review IPR2015-01572, which concerns U.S. Patent No. 8,058,238, (“the
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`’238 Patent”)1 Petitioner Fresenius Kabi USA LLC (“Fresenius”) and Patent
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`Owner Cubist Pharmaceuticals LLC (“Cubist”) jointly request that the Board (1)
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`limit the petition to claim 91; and (2) remove claims 20, 45-47, 49-52, 54-90, 108-
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`111, 147-150, 168-175, 178, 180-183, and 190-192 of the ’238 Patent from
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`consideration in this proceeding.
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`II.
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`STATEMENT OF FACTS
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`Fresenius filed a petition for inter partes review on July 10, 2015, requesting
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`review of claims 20, 45-47, 49-52, 54-91, 108-111, 147-150, 168-175, 178, 180-
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`183 and 190-192 of the ’238 Patent. This proceeding is still in its preliminary
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`stages 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
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`1
`August 25, 2015 email from Maria Vignone, Paralegal Opearations
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`Manager, Patent Trial and Appeal Board, to Cynthia Lambert Hardman and others.
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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 20, 45-47, 49-
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`52, 54-90, 108-111, 147-150, 168-175, 178, 180-183, and 190-192 of the ’238
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`patent from consideration in this proceeding.3
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`III. ARGUMENT
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`A. Limiting the Petition in IPR2015-01572 is Appropriate
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`The parties respectfully submit that the Board should limit the petition in
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`IPR2015-01572 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 also filed petitions for inter partes
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`review concerning each of these patents, and additional petitions on the ’238
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`patent. See IPR2015-00223, IPR2015-00227, IPR2015-01566, IPR2015-01570,
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`and IPR2015-01571.
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`3 A redacted public version of the Stipulation and Agreement was filed on
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`August 17, 2015.
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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 instituted 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 claim 91, and remove claims 20, 45-47, 49-52, 54-90,
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`108-111, 147-150, 168-175, 178, 180-183, and 190-192 from consideration in this
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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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`proceeding.
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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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`Dated: September 1, 2015
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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
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`5