`Tel: 571-272-7822
`
`
`
`
`Paper 17
`Entered: October 11, 2016
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`J. KYLE BASS and ERICH SPANGENBERG,
`Petitioner,
`
`v.
`
`ALPEX PHARMA SA,
`Patent Owner.
`_______________
`
`Case IPR2016-00245
`Patent 8,440,170 B2
`_______________
`
`
`
`Before TONI R. SCHEINER, LORA M. GREEN, and
`JACQUELINE WRIGHT BONILLA, Administrative Patent Judges.
`
`GREEN, Administrative Patent Judge.
`
`
`JUDGMENT AND FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73(b)
`
`
`
`
`
`
`
`
`
`IPR2016-00245
`Patent 8,440,170 B2
`
`Petitioner, Messrs. J. Kyle Bass and Erich Spangenberg, filed a
`Petition (Paper 5) requesting an inter partes review of claims 1–9 of U.S.
`Patent No. 8,440,170 B2 (Ex. 1001, “the ’170 patent”). Patent Owner,
`Alpex Pharma SA, filed a Preliminary Response. Paper 12.
`On May 20, 2016, we granted the Petition to institute an inter partes
`review as to claims 1–3, 5, 6, 8, and 9 of the ’170 patent. Paper 13, 19.
`Patent Owner did not file a full Patent Owner Response. Rather, in an email
`dated August 22, 2016, Patent Owner stated that it would not be submitting a
`Response. See Paper 15, 2 (reproducing email of August 22, 2016). In a
`conference call held with the parties on August 22, 2016, Patent Owner
`reiterated what it had said in the email. Id. Accordingly, we ordered Patent
`Owner to show cause as to why adverse judgment should not be entered
`against it. Id. at 3.
`
`Patent Owner filed a response to our order on October 4, 2016. Paper
`16. In that response, Patent Owner confirmed that “it is not inclined, in the
`aftermath of refrainment from filing a response to the Petition, to contest the
`issues designated for trial any further.” Id. at 2. It acknowledged also that
`judgment may be entered against it, premised on the understanding that the
`entry of adverse judgment will “(i) relate solely to the issues designated for
`trial, (ii) result in the cancellation of only ’170 patent claims 1–3, 5, 6, 8, and
`9, and (iii) leave intact ’170 patent claims 4 and 7 which were not designated
`for trial.” Id.
`
`Pursuant to Board rules, “[a]ctions construed to be a request for
`adverse judgment include . . . [a]bandonment of the contest.” 37 C.F.R.
`§ 42.73(b)(4). Patent Owner’s failure to file substantive papers in this trial is
`consistent with abandonment of the contest. As Patent Owner confirms that
`
` 2
`
`
`
`
`
`
`
`IPR2016-00245
`Patent 8,440,170 B2
`
`it will not contest the issues designated for trial, and as Patent Owner’s
`understanding of the consequences of entry of adverse judgment is correct,
`we determine that under these circumstances, the entry of judgment adverse
`to Patent Owner and cancellation of the claims on which trial was instituted
`is appropriate.
`
`ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that Patent Owner’s request for adverse judgment under
`37 C.F.R. § 42.73(b) with respect to claims 1–3, 5, 6, 8, and 9 of U.S. Patent
`No. 8,440,170 B2 is GRANTED;
`FURTHER ORDERED that this constitutes a final written decision
`under 35 U.S.C. § 318(a); and
`FURTHER ORDERED that claims 1–3, 5, 6, 8, and 9 of U.S. Patent
`No. 8,440,170 B2 be CANCELLED.
`
`
`
`PETITIONER:
`
`Gregory J. Gonsalves
`gonsalves@gonsalveslawfirm.com
`
`PATENT OWNER:
`
`Silvia Salvadori
`silvia@salvadorilaw.com
`George B. Snyder
`gbs@warefressola.com
`
` 3
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
