Case 1:18-cv-12029-ADB Document 37 Filed 02/27/19 Page 1 of 2
`
`Andrea L. Martin, Partner
`amartin@burnslev.com
`617-345-3869
`
`February 27, 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 second set of institution decisions, granting Lilly’s petitions for
`inter partes review (“IPR”) of three more of the patents-in-suit. With decisions on the three
`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 25, 2019, the Board instituted an inter partes review of every claim of U.S.
`Patent No. 9,890,210 (“the ’210 patent”). A copy of the decision (Case No. IPR2018-
`01425, Paper No. 14) is attached hereto as Exhibit D. Specifically, the Board concluded
`that there is a reasonable likelihood that at least one of claims 1−15 of the ’210 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. D at 26.
`
`• On February 25, 2019, the Board instituted an inter partes review of every claim of U.S.
`Patent No. 9,890,211 (“the ’211 patent”). A copy of the decision (Case No. IPR2018-
`01426, Paper No. 14) is attached hereto as Exhibit E. Specifically, the Board concluded
`that there is a reasonable likelihood that at least one of claims 1−15 of the ’211 patent is
`unpatentable as obvious (35 U.S.C. § 103) over the combined teachings of K.K.C. Tan, et
`
`

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`Case 1:18-cv-12029-ADB Document 37 Filed 02/27/19 Page 2 of 2
`
`Honorable Allison D. Burroughs
`Page 2
`
`February 27, 2019
`
`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. E at 31.
`
`• On February 25, 2019, the Board instituted an inter partes review of every claim of U.S.
`Patent No. 8,597,649 (“the ’649 patent”). A copy of the decision (Case No. IPR2018-
`01427, Paper No. 14) is attached hereto as Exhibit F. Specifically, the Board concluded
`that there is a reasonable likelihood that claims 1−9 of the ’649 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; and U.S. Patent No.
`6,180,370 to Queen. See Ex. F at 25.
`
`• The Board further issued a common scheduling order for these three IPR proceedings and
`the three previously instituted IPR proceedings (Case Nos. IPR2018-01422, IPR2018-
`01423, and IPR2018-01424). Oral argument is scheduled for all six proceedings on
`November 22, 2019. As noted in Lilly’s February 22, 2019 letter (Dkt. 35), by statute,
`the Board is required to issue its final written decision in Case Nos. IPR2018-01422,
`IPR2018-01423, and IPR2018-01424 within one year, or by February 19, 2020.
`Similarly, the Board is required to issue its final written decision in Case Nos. IPR2018-
`01425, IPR2018-01426, and IPR2018-01427 within one year, or by February 25, 2020.
`A copy of the common scheduling order is attached as Exhibit G.
`
`As noted in Lilly’s January 18, 2019 letter (Dkt. 34) and February 22, 2019 letter (Dkt.
`35), the Board will issue its institution decisions on 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)
`4850-9618-1385.1
`
`