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Case 1 :05-cv-00854-JJF Document 42 Filed 08/25/2008 Page 1 of 2
MORRIS, NICHOLS, ARSHT Sz; TUNNELL LLP
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m1·[email protected] August 25, 08
BY ELECTRONIC FILING
The Honorable Joseph J. Farnan
United States District Court
844 King Street
Wilmington, DE 19801
Re: Boehringer Ingelheim v. Myllzrn; CA. N0. 05-854 (IIE
Dear Judge Farnan:
I We write on behalf of Plaintiffs ("Boehringer") in the above-captioned case,
regarding an unresolved dispute between Boehringer and Mylan Phannaceuticals, Inc. ("Mylan")
concerning Mylan’s Proposed Final Judgment and Order. The above—captioned case concerns
Boehringer’s claim that Mylan infringed the ‘812 patent. By Order of January 31, 2006 (D.l.
25), this case was consolidated with C.A. No. 05-700 (JJF) in which Boehringer asserted that
Barr Laboratories, Inc. ("Barr") infringed the same ‘812 patent.
On June 26, 2008, the Court entered a Memorandum Opinion in the consolidated
actions “conclud{ing] that Boehringer has demonstrated by a preponderance of the evidence that
Defendants’ ANDA products infringe the asserted claims of the ‘8l2 patent. However, the Court
conc1ude[d] that Defendants have established by clear and convincing evidence that the ‘812
patent is invalid on the grounds of nonstatutory double patenting? See D.l. 250. Subsequently,
Defendant Barr Laboratories and Boehringer agreed to settle C.A. No. 05-700 (JJF). On August
13, 2008, the Court entered Barr and Boehringer’s Stipulation and Order of Dismissal dismissing
all claims and counterclaims in C.A. No. 05-700 with prejudice. (D.l. 258).
Today Mylan filed a Motion for Entry of Final Judgment. (D.I. 41) Mylan’s
Proposed Final Judgment and Order contains certain errors and ambiguities. In particular, the
first, second, and third "WHEREAS" clauses refer to claims asserted by the parties in C.A. No.
05-700, thereby suggesting that final judgment is being entered upon them. Id at 1. Any such
suggestion would be incorrect as the Court already dismissed the parties’ claims in C.A. No. 05-
700 with prejudice pursuant to the parties’ settlement. (D.I. 258). Especially given that this is a

Case 1:05-cv-00854-JJF Document 42 Filed 08/25/2008 Page 2 of 2
The Honorable Joseph J. Farnan
August 25, 2008
Page 2 of 2
Hatch-Waxman case, it is important that any final judgment and order be clear about exactly
which claims are being finally adjudicated.
Additionally, Mylan’s Proposed Final Judgment and Order states that "Judgment
is entered in favor of Defendant Mylan Pharmaceuticals Inc. ("Mylan") and against Boehringer
on Mylan’s counterclaim that Claims 3, 4, 5, 7, 9 and 10 of the ‘8l2 patent are invalid on the
ground of nonstatutory double patenting? D.I. 41, at 2. Mylan, however, never asserted a
counterclaim that any claim of the ‘8l2 patent was invalid for nonstatutory double patenting.
Mylan’s only counterclaim concerning invalidity asserted that "[t]he claims of the ‘8l2 patent
are invalid for failure to meet one or more of the conditions for patentability specified in Title 35
of the United States code." (D.l. 6 at 6 ll 13.) Therefore, paragraph 2 of the Proposed Final
Judgment and Order contains an erroneous statement of fact.
Boehringer raised the foregoing concerns with Mylan upon receipt of its draft
Proposed Final Judgement and Order. Mylan refused to accept any of Boehringer’s proposed
changes without explanation, however, and proceeded to file its original draft. Because Mylan’s
Proposed Final Judgment and Order does not clearly limit its scope to the claims and
counterclaims raised in C.A. 05-854, and because paragraph 2 contains an erroneous statement of
fact, Boehringer respectfully requests that the Court not enter it. Boehringer proposes that the
Court instead enter the Final Judgment and Order attached hereto.
Respectfully,
/s/Qlrlmyeflén Noreilia
Maryellen Noreika (#320 8)
cc: Peter T. Dalleo, Clerk (By Hand)
Joy Arnold (By Email)
David J. Harth, Esquire (By Email)
Shannon M. Bloodworth, Esquire (By Email)
Steven C. Cherny, Esquire (By Email)
Kenneth G. Schuler, Esquire (By Email) -
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