`______________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`______________________
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`MYLAN INSTITUTIONAL INC.,
`Petitioner
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`v.
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`FRESENIUS KABI USA, LLC,
`Patent Owner
`______________________
`Case IPR2017-00643 (Patent No. 9,168,238)
`Case IPR2017-00644 (Patent No. 9,168,239)
`Case IPR2017-00645 (Patent No. 9,006,289)
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`______________________
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`JOINT MOTION TO TERMINATE
`PROCEEDINGS PURSUANT TO § 317
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`
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`Pursuant to 35 U.S.C. § 317(a), Petitioner Mylan Institutional Inc. and
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`Patent Owner Fresenius Kabi USA, LLC (“Patent Owner”) (together, “the
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`Parties”) jointly request termination of these inter partes reviews (IPRs) with
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`respect to U.S. Patent No. 9,006,289, IPR2017-00645; U.S. Patent No. 9,168,238,
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`IPR2017-00643; and U.S. Patent No. 9,168,239, IPR2017-00644. In accordance
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`with 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 April 13, 2017.
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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. (Ex. 1058).
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`Termination of these proceedings is proper because the IPRs are in their early
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`stages. The IPRs have not been instituted, Patent Owner has not yet filed its Patent
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`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 a
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`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 parties are unaware
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`of any other matter before the USPTO that would be affected by the settlement of
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`this proceeding and there are no other proceedings before the Board involving U.S.
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`Patent No. 9,006,289, U.S. Patent No. 9, 168,238, and U.S. Patent No. 9,168,239.
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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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`
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`Respectfully submitted,
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`Mylan Institutional Inc.
`
`By its attorneys
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`Respectfully submitted,
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`Fresenius Kabi USA, LLC
`
`By its attorneys
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`/Jitendra Malik/
`Jitendra Malik (Reg. No. 55,823)
`4721 Emperor Boulevard, Suite 400
`Durham, North Carolina 27703
`Telephone: 919-862-2210
`Fax: 919-862-2260
`Jitty.Malik@alston.com
`
`/Imron T. Aly/
`Imron T. Aly (Reg. No. 48,706)
`Jason G. Harp (Reg. No. 42,634)
`Attorneys for Patent Owner
`233 S. Wacker Dr., Suite 6600
`Chicago, IL 60606
`(312)258-5600
`
`Lead Counsel for Petitioner
`Mylan Institutional Inc.
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`
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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 13th day of April, 2017, and directed to Patent Owner’s Counsel of
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`Record at the following addresses:
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`ialy@schiffhardin.com
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`jharp@schiffhardin.com
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`jhsu@schiffhardin.com
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`Dated: April 13, 2017
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`Respectfully submitted,
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`/Jitendra Malik/
`Jitendra Malik, Ph.D.
`Reg. No. 55,823
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`