Case IPR2016-01565
`Patent 8,853,156
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`MYLAN PHARMACEUTICALS INC.,
`Petitioner
`
`v .
`
`BOEHRINGER INGELHEIM INTERNATIONAL GMBH,
`Patent Owner.
`
`Case IPR2016-01565
`Patent 8,853,156
`
`PETITIONER MYLAN PHARMACEUTICALS INC.’S RESPONSE TO
`PATENT OWNER’S REQUEST FOR ENTRY OF ADVERSE JUDGMENT
`
`
`Patent 8,853,156
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`MYLAN PHARMACEUTICALS INC.,
`Petitioner
`
`v .
`
`BOEHRINGER INGELHEIM INTERNATIONAL GMBH,
`Patent Owner.
`
`Case IPR2016-01565
`Patent 8,853,156
`
`PETITIONER MYLAN PHARMACEUTICALS INC.’S RESPONSE TO
`PATENT OWNER’S REQUEST FOR ENTRY OF ADVERSE JUDGMENT
`
`
`
`Case IPR2016-01565
`Patent 8,853,156
`
`I.
`
`INTRODUCTION
`Petitioner Mylan Pharmaceuticals Inc. opposes Patent Owner’s request to
`
`enter an adverse judgment
`
`terminating this proceeding (Paper 21) because
`
`Petitioner’s motion for rehearing (Paper 19) of the Board’s February 9, 2017
`
`decision denying inter partes review of claims 1, 2, 4–8, 10–18, and 23–25 (the
`
`“Challenged Claims”) of U.S. Patent No. 8,853,156 (the “’156 patent”) is still
`
`pending. Moreover, entry of adverse judgment and termination of the proceeding
`
`during the pendency of Petitioner’s motion for rehearing would cause undue
`
`prejudice to Petitioner by eliminating the possibility of proceeding against additional
`
`instituted claims. Thus, Patent Owner’s request for adverse judgment should be
`
`denied as premature.
`
`II.
`
`ARGUMENT
`A.
`Legal Standard
`Pursuant to 37 C.F.R. 42.73(b), a proper request for entry of adverse judgment
`
`includes “cancellation or disclaimer of a claim such that the party has no remaining
`
`claim in the trial.” 37 C.F.R. 42.73(b)(2). In other words, the scope of the request
`
`for entry of adverse judgment must be commensurate in scope with the proceeding.
`
`Wangs Alliance Corp. D/B/A WAC Lighting Co. v. Koninklijke Philips N.V.,
`
`IPR2015-01292, Paper 18, at 3–4 (P.T.A.B. Jan. 26, 2016).
`
`When there is a motion for rehearing on the institution of claims co-pending
`
`with a request for entry of adverse judgment, the Board has denied the request for
`
`1
`
`
`
`Case IPR2016-01565
`Patent 8,853,156
`entry of adverse judgment after granting the motion for rehearing, because the scope
`
`of the request was no longer commensurate with that of the proceeding as required
`
`under Rule 42.73(b)(2). Wangs, IPR2015-01292, Paper 18, at 3–4.
`
`B.
`
`Entry of Adverse Judgment Before Ruling on Petitioner’s
`Pending Motion for Rehearing Would be Improper and
`Prejudicial to Petitioner.
`Should the Board grant Petitioner’s motion for rehearing, claims would
`
`remain in the trial beyond those requested for cancellation by Patent Owner. Thus,
`
`Patent Owner’s request for adverse judgment is premature. Given the potential
`
`change in scope of the proceeding, the Board should not rule on Patent Owner’s
`
`request at this time. (Paper 19). See Wangs, Paper 18, at 3–4 (denying Patent
`
`Owner’s request for adverse judgment without prejudice in light of the granting of
`
`Petitioner’s motion for reconsideration to institute additional claims).
`
`Further, it is the role of the Board to “secure the just, speedy, and inexpensive
`
`resolution of every proceeding.” 37 C.F.R. 42.1(b). It would contravene that role
`
`and unjustly prejudice Petitioner if adverse judgment were entered while the Board’s
`
`consideration of additional claims is still pending. Petitioner is entitled to receive a
`
`decision on its motion for rehearing (Paper 19), which would be prematurely
`
`rendered moot by entry of judgment and termination of the proceeding at this time.
`
`Should the Board grant Petitioner’s pending Request for Rehearing, the IPR
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`proceeding should continue with respect to any additional claims on which the Board
`
`2
`
`
`
`Case IPR2016-01565
`Patent 8,853,156
`
`institutes review.
`
`III. CONCLUSION
`
`For the foregoing reasons, Petitioner Mylan Pharmaceuticals Inc. respectfully
`
`requests that the Board deny Patent Owner’s request for adverse judgment (Paper
`
`21) as premature.
`
`Dated: April 17, 2017
`
`Respectfully submitted,
`
`/ Thomas J. Parker /
`Thomas J. Parker
`Reg. No. 42,062
`ALSTON & BIRD LLP
`90 Park Avenue, 15th Floor
`New York, NY 10016
`Telephone: 212.210.9400
`Fax: 212.210.9444
`thomas.parker@alston.com
`
`Counsel for Petitioner
`
`3
`
`
`
`Case IPR2016-01565
`Patent 8,853,156
`
`CERTIFICATE OF SERVICE
`Pursuant to 37 C.F.R. §42.6(e), the undersigned hereby certifies that, on the
`
`17rd day of April, 2017 a complete copy of the foregoing document was served via
`
`e-mail on counsel for Patent Owner:
`
`Leora Ben-Ami (Reg. No. 32,455)
`Email: leora.benami@kirkland.com
`KIRKLAND & ELLIS LLP
`601 Lexington Avenue
`New York, New York 10022
`Tel: (212) 446-4800
`Fax: (212) 446-4900
`
`Jeanna Wacker (Pro Hac Vice)
`Email: jeanna.wacker@kirkland.com
`KIRKLAND & ELLIS LLP
`601 Lexington Avenue
`New York, New York 10022
`Tel: (212) 446-4800
`Fax: (212) 446-4900
`
`Eugene Goryunov (Reg. No. 61,579)
`Email: eugene.goryunov@kirkland.com
`KIRKLAND & ELLIS LLP
`300 North LaSalle
`Chicago, Illinois 60654
`Tel: (312) 862-2000
`Fax: (312) 862-2200
`
`Mira Mulvaney (Reg. No. 69,850)
`Email: mira.mulvaney@kirkland.com
`KIRKLAND & ELLIS LLP
`601 Lexington Avenue
`New York, New York 10022
`Tel: (212) 446-4800
`Fax: (212) 446-4900
`
`Dated: April 17, 2017
`
`/ Thomas J. Parker /
`Thomas J. Parker
`(Reg. No. 42,062)
`
`4
`
`
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