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`Trials@uspto.gov
`571-272-7822 Entered: May 26, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`AMNEAL PHARMACEUTICALS LLC,
`Petitioner,
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`v.
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`HOSPIRA, INC.,
`Patent Owner.
`____________
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`Case IPR2016-01578
`Patent 8,338,470 B1
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`Before MICHAEL J. FITZPATRICK, SHERIDAN K. SNEDDEN, and
`ZHENYU YANG, Administrative Patent Judges.
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`SNEDDEN, Administrative Patent Judge.
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`ORDER
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`Termination of the Proceeding Due to Settlement after Institution
`35 U.S.C. § 317 and 37 C.F.R. § 42.72
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`Case IPR2016-01578
`Patent 8,338,470 B1
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`With our authorization, the parties filed a Joint Motion to Terminate
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`this proceeding pursuant to 35 U.S.C. § 317(a). Paper 17. In addition,
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`pursuant to 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c), the parties filed a
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`true and correct copy of a Settlement Agreement (Ex. 1067), along with a
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`Joint Request to File Settlement Agreement as Business Confidential
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`Information, to be kept separate from the publicly available patent files.
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`Paper 18.
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`Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under
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`this chapter shall be terminated with respect to any petitioner upon the joint
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`request of the petitioner and patent owner, unless the Office has decided the
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`merits of the proceeding before the request for termination is filed.” In this
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`case, the Board instituted trial on February 9, 2017. Paper 11. So far, Patent
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`Owner has not filed its Patent Owner Response, and the Board has not
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`decided the merits of the proceeding.
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`Under 37 C.F.R. § 42.72, “[t]he Board may terminate a trial without
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`rendering a final written decision, where appropriate, including . . . pursuant
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`to a joint request under 35 U.S.C. 317(a).” After reviewing the Joint Motion
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`to Terminate and the Settlement Agreement, we determine that it is
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`appropriate to terminate the proceeding without rendering a final written
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`decision. Therefore, the Joint Motion to Terminate is GRANTED.
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`2
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`Case IPR2016-01578
`Patent 8,338,470 B1
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`Accordingly, it is
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`ORDERED that the Joint Motion to Terminate is GRANTED and this
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`proceeding is hereby TERMINATED; and
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`FURTHER ORDERED that the Joint Motion to File Settlement
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`Agreement as Business Confidential Information is GRANTED, and the
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`Settlement Agreement will be kept separate from the patent files.
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`PETITIONER:
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`Paul Tully
`tully@mbhb.com
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`Kevin Noonan
`noonan@mbhb.com
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`Andrea Orth
`orth@mbhb.com
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`PATENT OWNER:
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`Sandra Lee
`sandra.lee@bakerbotts.com
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`Eliot Williams
`eliot.williams@bakerbotts.com
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`Stephen Hash
`stephen.hash@bakerbotts.com
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`3
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