`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________________
`
`
`
`FRONTIER THERAPEUTICS, LLC
`
`Petitioner
`
`v.
`
`MEDAC GESELLSCHAFT FṺR KLINISCHE
`SPEZIALPRӒPARATE MBH
`
`Patent Owner
`
`____________________
`
`
`
`Inter Partes Review Case No. 2016-00649
`Patent No. 8,664,231
`Title: Concentrated Methotrexate Solutions
`
`__________________
`
`
`
`JOINT MOTION TO TERMINATE PROCEEDING
`PURSUANT TO 35 U.S.C. § 317
`
`
`
`
`
`
`Patent No. 8,664,231
`
`I.
`
`STATEMENT OF PRECISE RELIEF REQUESTED AND
`STATEMENT OF FACTS
`
`Pursuant to 35 U.S.C. § 317(a), Petitioner Frontier Therapeutics, LLC
`
`(“Petitioner”) and Patent Owner medac Gesellschaft für klinische Spezialpräparate
`
`mbH (“Patent Owner”) jointly request withdrawal of Petitioner’s Petition for Inter
`
`Partes Review (“IPR”) and termination of IPR2016-00649, directed to U.S. Patent
`
`8,664,231 (the “‘231 Patent”). The United States Patent Trial and Appeal Board
`
`(“Board”) authorized this motion on November 21, 2016.
`
`On February 22, 2016, Petitioner filed a Petition for an IPR of the ‘231
`
`Patent. Patent Owner’s Preliminary Response was filed on June 2, 2016. The
`
`Board instituted inter partes review on September 1, 2016. Due Date 1 is currently
`
`set for December 2, 2016. The parties agree to extend that date, as necessary. The
`
`Board has not had trial or issued a final written decision.
`
`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 the patent owner, unless the Office has decided the merits of the
`
`proceeding before the request for termination is filed.” The parties have settled
`
`their disputes with respect to the ‘231 Patent, and have reached agreement to file
`
`the present motion, seeking withdrawal of the Petition and termination of this IPR.
`
`Moreover, termination is appropriate here because this trial is in its very early
`
`
`
`-2-
`
`
`
`Patent No. 8,664,231
`
`stages. No discovery has been conducted or exchanged. No motions are pending.
`
`And, Patent Owner has not filed its § 42.120 Response to Petition.
`
`The parties, thus, jointly request that the Board withdraw the Petition and
`
`terminate IPR2016-00649 in view of the settlement reached between the parties.
`
`II. RELATED PROCEEDINGS
`
`There are no related proceedings in the District Court or Federal Circuit.
`
`Before the Board, there is a pending inter partes review in the context of the ‘231
`
`patent, Koios Pharmaceuticals LLC v. medac Gesellschaft für klinische
`
`Spezialpräparate mbH, IPR2016-01370. That petition was accorded a filing date of
`
`July 20, 2016 and Patent Owner filed its Preliminary Response, as provided in
`
`Paper No. 6, on November 10, 2016. Petitioner has not filed any motion for
`
`joinder. And, the Board has not issued any Institution Decision.
`
`III. CONCLUSION
`
`For the foregoing reasons, the parties respectfully request withdrawal of
`
`Petitioner’s Petition for Inter Partes Review and termination of Case No.
`
`IPR2016-00649 involving U.S. Patent 8,664,231.
`
`Dated: November 22, 2016
`
`Respectfully submitted,
`
`
`
`
`
`Ropes & Gray LLP
`
`By /James F. Haley, Jr./
`
`
`James F. Haley, Jr., Lead Counsel
`Reg. No. 27,794
`
`-3-
`
`
`
`Patent No. 8,664,231
`
`james.haley@ropesgray.com
`T.: 212-596-9034
`J. Steven Baughman, Back-Up
`Counsel
`Reg. No. 47,414
`steve.baughman@ropesgray.com
`T.: 202-508-4606
`ROPES & GRAY LLP
`1211 Avenue of the Americas
`New York, New York 10036-6704
`
`Dr. Gregory J. Gonsalves
`Reg. No. 43,639
`GONSALVES LAW FIRM
`2216 Beacon Lane
`Falls Church, Virginia 22043
`(571) 419-7252
`gonsalves@gonsalveslawfirm.com
`
`
`
`-4-
`
`
`
`
`
`
`
`
`
`Patent No. 8,664,231
`
`CERTIFICATE OF SERVICE UNDER 37 C.F.R. § 42.6 (e)(4)
`
`It is hereby certified that on this 22nd day of November, 2016, a copy of the
`
`Joint Motion To Terminate Proceeding Pursuant to 35 U.S.C. § 317 was served via
`
`electronic mail upon the following:
`
`Dr. Gregory J. Gonsalves
`Registration No.: 43,635
`2216 Beacon Lane
`Falls Church, VA 22043
`571-419-7252
`Counsel for Petitioner
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`By:
`
`
`
`/Ginny Blundell/
`Name: Ginny Blundell
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`November 22, 2016
`
`
`
`
`
`
`
`-5-
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