`IPR2016-00111 (Paper No. 14)
`Joint Motion to Terminate
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`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
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`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
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`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
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`37 C.F.R. § 42.20(b), the parties sought, and received, authorization from the
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`Board to file this motion on July 25, 2016.
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`The parties have settled their disputes. The Parties’ settlement is
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`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
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`agreement as business confidential information is being filed concurrently
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`herewith. Termination of these proceedings is proper because the IPRs are in their
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`early stages. Though the IPRs have been instituted, Patent Owner has not yet filed
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`its Patent Owner Responses, and the Board has not yet “decided the merits of the
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`proceeding[s].” 35 U.S.C. § 317(a); 77 Fed. Reg. 48768 (“The Board expects that
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`a proceeding will terminate after the filing of a settlement agreement, unless the
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`Board has already yielded the merits of the proceeding.”). The district court
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`litigation in which Patent Owner has asserted the subject patents against real-
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`parties-in-interest Hetero Labs, Ltd. and Hetero USA, Inc. has also been settled,
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`pending regulatory review. The parties are unaware of any other matter before the
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`63581819
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`2
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`
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`IPR2016-00098 (Paper No. 17)
`IPR2016-00111 (Paper No. 14)
`Joint Motion to Terminate
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`USPTO that would be affected by the settlement of this proceeding and there are
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`no other proceedings before the Board involving U.S. Patent Nos. 8,791,270 and
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`8,895,756.
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`For all these reasons, the Parties respectfully request that the Board
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`terminate these IPRs.
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`Dated: July 26, 2016
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`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
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`3
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`
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`IPR2016-00098 (Paper No. 17)
`IPR2016-00111 (Paper No. 14)
`Joint Motion to Terminate
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`CERTIFICATION OF SERVICE
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`The undersigned hereby certifies that the foregoing JOINT MOTION TO
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`TERMINATE PURSUANT TO 35 U.S.C. § 317 was served electronically via e-
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`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
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`63581819
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`4
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`KAYE SCHOLER LLP
`
`By
`
`/Soumitra Deka #70,252
`Soumitra (Sam) Deka
`Two Palo Alto Sq.
`3000 El Camino Real
`Palo Alto, CA 94306