`Patent 8,338,470
`
`
`JOINT MOTION TO TERMINATE THE INTER PARTES REVIEW
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`AMNEAL PHARMACEUTICALS LLC,
`Petitioner
`
`v.
`
`HOSPIRA, INC.,
`Patent Owner
`_____________
`
`Case No. IPR2016-01578
`Patent No. 8,338,470
`_____________
`
`
`
`
`
`Case IPR2016-01578
`Patent 8,338,470
`Pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. § 42.72, Patent Owner
`
`Hospira, Inc. (“Patent Owner”) and Petitioner Amneal Pharmaceuticals LLC
`
`(“Amneal”) jointly request termination of IPR2016-01578, which is directed to
`
`U.S. Patent No. 8,338,470 (the “‘470 Patent”).
`
`On August 10, 2016, Amneal filed a Petition for Inter Partes Review
`
`(“Amneal IPR” – which is the above-captioned Inter Partes Review, i.e., IPR2016-
`
`01578) before the United States Patent Trial and Appeal Board (the “Board”).
`
`Patent Owner’s preliminary response was filed on November 10, 2016 in the
`
`Amneal IPR. On February 9, 2017, the Board issued a Decision to Institute Inter
`
`Partes Review of the ‘470 Patent in the Amneal IPR. Paper No. 11.
`
`Patent Owner has not filed a response in the Inter Partes Review and one is
`
`not due (by stipulation of Amneal and Patent Owner, filed May 1, 2017, Paper 16)
`
`until May 29, 2017.
`
`Patent Owner and Amneal respectfully submit that termination with respect
`
`to Amneal is appropriate because they have reached an agreement resolving the
`
`dispute involving the patent at issue in the above-captioned Inter Partes Review, it
`
`is prior to full briefing on the issues raised in the above-captioned Inter Partes
`
`Review, and the Board has not issued a final written decision. Further, Amneal
`
`represents that it will no longer participate even if the Board does not terminate its
`
`participation in the above-captioned Inter Partes Review. This means that Amneal
`
`Joint Motion to Terminate Proceeding
`
`Page 1
`
`
`
`Case IPR2016-01578
`Patent 8,338,470
`will file no further papers. It also will not conduct any examination of Patent
`
`Owner’s witnesses and will not be participating in any oral argument.
`
`The Patent Owner and Amneal jointly requested authorization to file the
`
`instant Motion and a Joint Motion to treat the Settlement Agreement as business
`
`confidential information (filed concurrently herewith) on April 17, 2017. The
`
`Board authorized filing of the Motions in an email dated April 26, 2017.
`
`As required under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), filed
`
`herewith is a true copy of the written Confidential Settlement Agreement resolving
`
`the dispute in the above-captioned Inter Partes Review. See Exhibit 1067.
`
`Patent Owner and Amneal are concurrently filing a Joint Request that the
`
`Settlement Agreement, Confidential Exhibit 1067, shall be treated as business
`
`confidential information, shall be kept separate from the file of the involved patent,
`
`and shall be made available only to Federal Government agencies on written
`
`request, or to any person on a showing of good cause pursuant to 35 U.S.C. §
`
`317(b) and 37 C.F.R. §42.74(c).
`
`Dated: May 3, 2017
`
`
`
`
`
`
`
`Respectfully Submitted,
`
`By: / Paul S. Tully /
`Paul S. Tully
`USPTO Reg. 44,377
`Lead Counsel for Petitioners
`McDonnell Boehnen Hulbert
`& Berghoff LLP
`300 S. Wacker Drive
`Chicago, Illinois 60606
`
`Joint Motion to Terminate Proceeding
`
`Page 2
`
`
`
`
`Dated: May 3, 2017
`
`
`
`
`
`
`
`Case IPR2016-01578
`Patent 8,338,470
`
`By: / Sandra S. Lee /
`Sandra S. Lee
`USPTO Reg. 51,932
`Lead Counsel for Patent Owner
`Baker Botts L.L.P.
`30 Rockefeller Plaza
`New York, NY 10112
`
`
`
`Joint Motion to Terminate Proceeding
`
`Page 3
`
`
`
`Case IPR2016-01578
`Patent 8,338,470
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on May 3, 2017, true copies of the accompanying
`
`JOINT MOTION TO TERMINATE THE INTER PARTES REVIEW and Exhibit
`
`1067 were served on the Patent Owner via electronic mail to the following
`
`correspondence addresses:
`
`Sandra S. Lee: sandra.lee@bakerbotts.com
`
`Eliot D. Williams: eliot.williams@bakerbotts.com
`
`Stephen Hash: stephen.hash@bakerbotts.com
`
`Respectfully submitted,
`/ Paul S. Tully /
`Paul S. Tully
`USPTO Reg. 44,377
`Lead Counsel for Petitioners
`McDonnell Boehnen Hulbert
`& Berghoff LLP
`300 S. Wacker Drive
`Chicago, Illinois 60606
`Phone: (312) 913-0001
`
`
`
`Joint Motion to Terminate Proceeding
`
`Page 4
`
`
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