`
`Andrea L. Martin, Partner
`amartin@burnslev.com
`617-345-3869
`
`February 22, 2019
`
`Via ECF
`
`Honorable Allison D. Burroughs
`United States District Court Judge
`John Joseph Moakley U.S. Courthouse
`1 Courthouse Way
`Boston, Massachusetts 02210
`
`Re:
`
`Teva Pharmaceuticals International GmbH et al. v. Eli Lilly and Company,
`Civil Action No. 1:18-cv-12029-ADB
`
`Dear Judge Burroughs:
`
`This firm, together with Finnegan, Henderson, Farabow, Garrett & Dunner, LLP,
`represents Defendant Eli Lilly and Company (“Lilly”), in the above-captioned matter.
`
`Lilly respectfully submits this letter to advise the Court that the Patent Trial and Appeal
`Board (“Board”) has issued its first set of institution decisions, granting Lilly’s petitions for inter
`partes review (“IPR”) of three of the patents-in-suit. With decisions on the remaining patents-in-
`suit still forthcoming, the Board’s decisions are directly relevant to Lilly’s pending Motion to
`Transfer, or if not Transferred, then to Stay this Litigation Pending Inter Partes Review
`(“Motion”). Dkt. 18-20, 29-30. Specifically,
`
`• On February 19, 2019, the Board instituted an inter partes review of every claim of U.S.
`Patent No. 9,340,614 (“the ’614 patent”) that was challenged in Lilly’s IPR petition. A
`copy of the decision (Case No. IPR2018-01422, Paper No. 14) is attached hereto as
`Exhibit A. Specifically, the Board concluded that there is a reasonable likelihood that at
`least one of claims 1−7 and 15−20 of the ’614 patent is unpatentable as obvious
`(35 U.S.C. § 103) over the combined teachings of K.K.C. Tan, et al., Clin. Sci. (1995)
`89:565-573; S.J. Wimalawansa, Endocrine Reviews (1996) 17(5):533-585; and U.S.
`Patent No. 6,180,370 to Queen. See Ex. A at 27.
`
`• On February 19, 2019, the Board instituted an inter partes review of every claim of U.S.
`Patent No. 9,266,951 (“the ’951 patent”) that was challenged in Lilly’s IPR petition. A
`copy of the decision (Case No. IPR2018-01423, Paper No. 14) is attached hereto as
`Exhibit B. Specifically, the Board concluded that there is a reasonable likelihood that at
`least one of claims 1−6 and 14−19 of the ’951 patent is unpatentable as obvious
`
`
`
`Case 1:18-cv-12029-ADB Document 35 Filed 02/22/19 Page 2 of 2
`
`Honorable Allison D. Burroughs
`Page 2
`
`February 22, 2019
`
`(35 U.S.C. § 103) over prior art K.K.C. Tan, et al., Clin. Sci. (1995) 89:565-573; S.J.
`Wimalawansa, Endocrine Reviews (1996) 17(5):533-585; U.S. Patent No. 6,180,370 to
`Queen; and H. Doods et al., Br. J. Pharmacol. (2000) 129:420-423. See Ex. B at 28.
`
`• On February 19, 2019, the Board instituted an inter partes review of every claim of U.S.
`Patent No. 9,346,881 (“the ’881 patent”) that was challenged in Lilly’s IPR petition. A
`copy of the decision (Case No. IPR2018-01424, Paper No. 14) is attached hereto as
`Exhibit C. Specifically, the Board concluded that there is a reasonable likelihood that
`claims 1−6 and 14−19 of the ’881 patent are unpatentable as obvious (35 U.S.C. § 103)
`over prior art K.K.C. Tan, et al., Clin. Sci. (1995) 89:565-573; S.J. Wimalawansa,
`Endocrine Reviews (1996) 17(5):533-585; U.S. Patent No. 6,180,370 to Queen; and H.
`Doods et al., Br. J. Pharmacol. (2000) 129:420-423. See Ex. C at 22.
`
`• By statute, the Board is required to issue its final written decision in each case within one
`year, or by February 19, 2020. Lilly will provide the Court with a copy of the scheduling
`orders in each of these three IPR actions when issued by the Board.
`
`As noted in Lilly’s January 18, 2019 letter (Dkt. 34), the Board will issue its institution
`decisions on:
`three additional patents-in-suit by February 27, 2019, and
`•
`the final three patents-in-suit by April 4, 2019.
`•
`
`For the reasons set forth in Lilly’s moving papers, Lilly respectfully requests that the
`Court grant its Motion.
`
`Respectfully submitted,
`
`/s/ Andrea L. Martin
`
`Andrea L. Martin
`Partner
`amartin@burnslev.com
`D 617-345-3869
`
`cc: All Counsel of Record (by ECF)
`4815-9798-2345.1
`
`