`______________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`______________________
`
`MYLAN INSTITUTIONAL INC.,
`Petitioner
`
`v.
`
`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)
`
`______________________
`
`JOINT MOTION TO TERMINATE
`PROCEEDINGS PURSUANT TO § 317
`
`
`
`Pursuant to 35 U.S.C. § 317(a), Petitioner Mylan Institutional Inc. and
`
`Patent Owner Fresenius Kabi USA, LLC (“Patent Owner”) (together, “the
`
`Parties”) jointly request termination of these inter partes reviews (IPRs) with
`
`respect to U.S. Patent No. 9,006,289, IPR2017-00645; U.S. Patent No. 9,168,238,
`
`IPR2017-00643; and U.S. Patent No. 9,168,239, IPR2017-00644. In accordance
`
`with 37 C.F.R. § 42.20(b), the parties sought, and received, authorization from the
`
`Board to file this motion on April 13, 2017.
`
`The parties have settled their disputes. The Parties’ settlement is
`
`memorialized in a Settlement Agreement filed concurrently herewith. (Ex. 1058).
`
`Termination of these proceedings is proper because the IPRs are in their early
`
`stages. The IPRs have not been instituted, Patent Owner has not yet filed its Patent
`
`Owner Responses, and the Board has not yet “decided the merits of the
`
`proceeding[s].” 35 U.S.C. § 317(a); 77 Fed. Reg. 48768 (“The Board expects that a
`
`proceeding will terminate after the filing of a settlement agreement, unless the
`
`Board has already yielded the merits of the proceeding.”). The parties are unaware
`
`of any other matter before the USPTO that would be affected by the settlement of
`
`this proceeding and there are no other proceedings before the Board involving U.S.
`
`Patent No. 9,006,289, U.S. Patent No. 9, 168,238, and U.S. Patent No. 9,168,239.
`
`For all these reasons, the Parties respectfully request that the Board
`
`terminate these IPRs.
`
`
`
`Respectfully submitted,
`
`Mylan Institutional Inc.
`
`By its attorneys
`
`Respectfully submitted,
`
`Fresenius Kabi USA, LLC
`
`By its attorneys
`
`/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.
`
`
`
`CERTIFICATION OF SERVICE
`
`The undersigned hereby certifies that the foregoing JOINT MOTION TO
`
`TERMINATE PURSUANT TO 35 U.S.C. § 317 was served electronically via e-
`
`mail on this 13th day of April, 2017, and directed to Patent Owner’s Counsel of
`
`Record at the following addresses:
`
`ialy@schiffhardin.com
`
`jharp@schiffhardin.com
`
`jhsu@schiffhardin.com
`
`Dated: April 13, 2017
`
`Respectfully submitted,
`
`/Jitendra Malik/
`Jitendra Malik, Ph.D.
`Reg. No. 55,823
`
`
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