`571-272-7822
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` Paper No. 17
`Entered: August 25, 2016
`
`
`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 8,791,270 B2)
`Case IPR2016-00111 (Patent 8,895,756 B2)1
`____________
`
`
`
`ORDER
`Termination of the Proceedings
`35 U.S.C. § 317(a) and 37 C.F.R. § 42.72
`
`
`
`Before JACQUELINE WRIGHT BONILLA, ZHENYU YANG, and
`TINA E. HULSE, Administrative Patent Judges.
`
`YANG, Administrative Patent Judge.
`
`
`
`
`1 This order addresses issues that are common to each referenced case.
`We, therefore, issue a single order that has been entered in each case. For
`convenience, paper numbers refer to those filed in IPR2016-00098.
`
`
`
`
`
`
`IPR2016-00098 (Patent 8,791,270 B2)
`IPR2016-00111 (Patent 8,895,756 B2)
`
`
`On July 26, 2016, the parties filed a Joint Motion to Terminate each of
`the above-captioned proceedings pursuant to 35 U.S.C. § 317. Paper 17. In
`addition, pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), the
`parties filed a true and correct copy of a Settlement Agreement (Ex. 2032) in
`each case, along with a Joint Request to File Settlement Agreement as
`Business Confidential, to be kept separate from the publicly available patent
`files (Paper 18).
`Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under
`this chapter shall be terminated with respect to any petitioner upon the joint
`request of the petitioner and patent owner, unless the Office has decided the
`merits of the proceeding before the request for termination is filed.” In these
`cases, the Board instituted trial on May 4, 2016. Paper 10. So far, Patent
`Owner has not filed its Patent Owner Response, and the Board has not
`decided the merits of the proceedings.
`Under 37 C.F.R. § 42.72, “[T]he Board may terminate a trial without
`rendering a final written decision, where appropriate, including . . . pursuant
`to a joint request under 35 U.S.C. 317(a).” After reviewing the Joint
`Motions to Terminate and the Settlement Agreement, we determine that it is
`appropriate to terminate the proceedings without rendering a final written
`decision. Therefore, the Joint Motions to Terminate are GRANTED.
`
`
`
`
`
`
`2
`
`
`
`
`
`
`IPR2016-00098 (Patent 8,791,270 B2)
`IPR2016-00111 (Patent 8,895,756 B2)
`
`
`Accordingly, it is
`ORDERED that the Joint Motions to Terminate are GRANTED and
`the proceedings are hereby TERMINATED; and
`FURTHER ORDERED that the Joint Motions to File Settlement
`Agreement as Business Confidential are GRANTED, and the Settlement
`Agreement will be kept separate from the patent files.
`
`
`
`
`PETITIONER:
`Lawrence Sung
`lsung@wileyrein.com
`
`Neal Seth
`nseth@wileyrein.com
`
`PATENT OWNER:
`
`Soumitra Deka
`Soumitra.deka@kayescholer.com
`
`Aaron Stiefel
`aaron.stiefel@kayescholer.com
`
`3
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`
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