`IPR2016-00111 (Paper No. 14)
`Joint Motion to Terminate
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`________________
`
`FRESENIUS KABI, USA, LLC,
`Petitioner
`
`v.
`
`CEPHALON, INC.,
`Patent Owner
`
`________________
`
`Case IPR2016-00098 (Patent No. 8,791,270 B2)
`Case IPR2016-00111 (Patent 8,895,756 B2)1
`
`________________
`
`JOINT MOTION TO TERMINATE
`PROCEEDINGS PURSUANT TO 35 U.S.C. § 317
`
`1
`
`The word-for-word identical paper is filed in each proceeding identified in
`the caption.
`
`
`
`IPR2016-00098 (Paper No. 17)
`IPR2016-00111 (Paper No. 14)
`Joint Motion to Terminate
`
`Pursuant to 35 U.S.C. § 317(a), Petitioner Fresenius and Patent Owner
`
`Cephalon, Inc. (“Patent Owner”) (together, “the Parties”) jointly request
`
`termination of these inter partes reviews (IPRs) of U.S. Patent 8,791,270, Case No.
`
`IPR2016-00098 and U.S. Patent 8,895,756, IPR2016-00111. In accordance with
`
`37 C.F.R. § 42.20(b), the parties sought, and received, authorization from the
`
`Board to file this motion on July 25, 2016.
`
`The parties have settled their disputes. The Parties’ settlement is
`
`memorialized in a Settlement Agreement filed concurrently herewith as Ex. 2032
`
`in IPR2016-00098 and Ex. 2018 in IPR2016-00098. A joint motion to file the
`
`agreement as business confidential information is being filed concurrently
`
`herewith. Termination of these proceedings is proper because the IPRs are in their
`
`early stages. Though the IPRs have been instituted, Patent Owner has not yet filed
`
`its Patent Owner Responses, and the Board has not yet “decided the merits of the
`
`proceeding[s].” 35 U.S.C. § 317(a); 77 Fed. Reg. 48768 (“The Board expects that
`
`a proceeding will terminate after the filing of a settlement agreement, unless the
`
`Board has already yielded the merits of the proceeding.”). The district court
`
`litigation in which Patent Owner has asserted the subject patents against real-
`
`parties-in-interest Hetero Labs, Ltd. and Hetero USA, Inc. has also been settled,
`
`pending regulatory review. The parties are unaware of any other matter before the
`
`63581819
`
`2
`
`
`
`IPR2016-00098 (Paper No. 17)
`IPR2016-00111 (Paper No. 14)
`Joint Motion to Terminate
`
`USPTO that would be affected by the settlement of this proceeding and there are
`
`no other proceedings before the Board involving U.S. Patent Nos. 8,791,270 and
`
`8,895,756.
`
`For all these reasons, the Parties respectfully request that the Board
`
`terminate these IPRs.
`
`Dated: July 26, 2016
`
`Respectfully submitted,
`
`WILEY REIN LLP
`
`KAYE SCHOLER LLP
`
`By
`
`/Lawrence Sung #38,330
`Lawrence Sung, Reg. 38,330
`1776 K Street NW
`Washington, DC 20006
`
`By
`
`/Soumitra Deka #70,252
`Soumitra (Sam) Deka
`Two Palo Alto Sq.
`3000 El Camino Real
`Palo Alto, CA 94306
`
`63581819
`
`3
`
`
`
`IPR2016-00098 (Paper No. 17)
`IPR2016-00111 (Paper No. 14)
`Joint Motion to Terminate
`
`CERTIFICATION OF SERVICE
`
`The undersigned hereby certifies that the foregoing JOINT MOTION TO
`
`TERMINATE PURSUANT TO 35 U.S.C. § 317 was served electronically via e-
`
`mail on this 26th day of July, 2016, and directed to:
`
`Counsel for Petitioner
`
`Lawrence Sung
`Neal Seth
`WILEY REIN LLP
`nseth@wileyrein.com
`lsung@wileyrein.com
`
`WILEY REIN LLP
`ATTN: Patent Administration
`1776 K Street NW
`Washington, DC 20006
`
`Dated: July 26, 2016
`
`63581819
`
`4
`
`KAYE SCHOLER LLP
`
`By
`
`/Soumitra Deka #70,252
`Soumitra (Sam) Deka
`Two Palo Alto Sq.
`3000 El Camino Real
`Palo Alto, CA 94306
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
