`
`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
`
`
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
