`Tel. 571-272-7822
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`Paper No. 24
`Entered: August 1, 2017
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`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 B2
`______________
`
`
`Before TONI R. SCHEINER, BRIAN P. MURPHY, and ZHENYU YANG,
`Administrative Patent Judges.
`
`SCHEINER, Administrative Patent Judge.
`
`ORDER
`Granting Patent Owner’s Request for Adverse Judgment
`37 C.F.R. §§ 42.72, 42.73
`
`
`
`
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`
`
`IPR2016-01565
`Patent 8,853,156 B2
`
`
`BACKGROUND
`I.
`On February 9, 2017, the Board instituted a review of the patentability of
`claims 1, 2, 4, 5, and 23 of U.S. Patent No. 8,853,156 B2 (Ex. 1001, “the ’156
`patent”). Paper 17. On April 14, 2017, Boehringer Ingelheim International GmbH
`(“Patent Owner”) filed a Request for Adverse Judgment under 37 C.F.R.
`§ 42.73(b). Paper 21. Mylan Pharmaceuticals Inc. (“Petitioner”) filed a Response
`(Paper 22) opposing Patent Owner’s Request as premature, pending a decision on
`Petitioner’s Request for Rehearing (Paper 19). A decision denying Petitioner’s
`Request for Rehearing has since been entered (Paper 23). Accordingly, Patent
`Owner’s Request for Adverse Judgment is ripe for decision.
`Patent Owner’s request is granted.
`II. DISCUSSION
`A party may request judgment against itself at any time during a proceeding.
`37 C.F.R. § 42.73(b). Under the Rules, actions construed as a request for entry of
`adverse judgment include “[c]ancellation or disclaimer of a claim such that the
`party has no remaining claim in the trial.” 37 C.F.R. § 42.73(b)(2). Here, Patent
`Owner has requested that “the Board cancel the instituted claims (claims 1, 2, 4, 5,
`and 23) and enter adverse judgment against it.” Paper 21, 1.
`III. CONCLUSION
`Having reviewed Patent Owner’s Request, we determine that entry of
`judgment against Patent owner with respect to claims 1, 2, 4, 5, and 23 of the ’156
`patent is appropriate. Because no challenged claim remains in the trial, we
`terminate the proceeding. 37 C.F.R. § 42.72.
`
`
`
`
`
`2
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`
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`IPR2016-01565
`Patent 8,853,156 B2
`
`IV. ORDER
`
`Accordingly, it is
`ORDERED that adverse judgment is entered under 37 C.F.R. § 42.73(b)
`against Patent Owner with respect to claims 1, 2, 4, 5, and 23 of U.S. Patent No.
`8,853,156 B2; and
`FURTHER ORDERED that this proceeding is hereby TERMINATED.
`
`
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`
`3
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`
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`IPR2016-01565
`Patent 8,853,156 B2
`
`
`
`FOR PETITIONER:
`
`Thomas Parker
`Ellen Cheong
`Charles Naggar
`Chris McArdle
`ALSTON & BIRD LLP
`thomas.parker@alston.com
`ellen.cheong@alston.com
`charles.naggar@alston.com
`chris.mcardle@alston.com
`
`
`
`FOR PATENT OWNER:
`
`Leora Ben-Ami
`Eugene Goryunov
`Mira Mulvaney
`Jeanna Wacker
`KIRKLAND & ELLIS LLP
`leora.benami@kirkland.com
`egoryunov@kirkland.com
`mira.mulvaney@kirkland.com
`jeanna.wacker@kirkland.com
`
`
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`4
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`
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