Case 1:18-cv-12029-ADB Document 41 Filed 04/08/19 Page 1 of 3
`
`Andrea L. Martin, Partner
`amartin@burnslev.com
`617-345-3869
`
`April 8, 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:
`
`Lilly respectfully submits this letter in response to Teva’s April 5, 2019, letter to the
`Court (Dkt. 40), which provided attorney argument that Lilly believes is inappropriate under
`Local Rule 7.1(b)(3). Specifically, Lilly seeks to correct Teva’s mischaracterization of the
`Supreme Court’s decision in SAS Institute Inc. v. Iancu, 138 S. Ct. 1348 (2018) (“SAS”), which is
`irrelevant in this context, address Teva’s misstatements concerning the Patent Trial and Appeal
`Board (“Board”) decisions to institute inter partes review (“IPR”) of the patents-in-suit, and
`explain why Teva’s use of statistics to conclude that “the most likely outcome of Lilly’s IPRs is
`that a substantial number of claims will remain in this litigation” is both misleading and wrong.
`
`First, Teva’s reliance on the SAS decision is misplaced.1 While Teva contends otherwise
`(Dkt. 40 at 1), the Board continues to analyze the merits of every challenged claim before
`institution. See e.g., Apple, Inc. v. Uniloc Luxembourg S.A., No. IPR2018-00424 (P.T.A.B. Aug.
`2, 2018) (analyzing the likelihood of Petitioner prevailing in showing each challenged claim is
`unpatentable). Consistent with this practice, and as Lilly stated in its April 4, 2019, letter (Dkt.
`39), here the Board analyzed the merits of every challenged claim of each of the patents-in-suit
`before institution. Indeed, Teva points to nothing in any of the nine institution decisions that
`suggests the Board believes that any of the dependent claims for any of the nine patents-in-suit
`contained limitations that might impart patentability. Nor is Lilly aware of any such language.
`
`1 Teva also misstates the law under 35 U.S.C. § 314(a) in light of SAS: it does not require that the Board
`“institute review of all challenged claims, without regard to the merits of the other claims,” if it finds
`that a single claim is reasonably likely to be unpatentable. In fact, on April 5, 2019, the PTAB
`designated as informative two decisions denying institution despite finding that the petitioner had
`demonstrated a reasonable likelihood of prevailing on more than one challenged claim. Deeper, UAB
`v. Vexilar, Inc., No. IPR2018-01310 (P.T.A.B. Jan. 24, 2019); Chevron Oronite Co. v. Infineum USA
`L.P., IPR2018-00923 (P.T.A.B. Nov. 7, 2018).
`
`

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`Case 1:18-cv-12029-ADB Document 41 Filed 04/08/19 Page 2 of 3
`
`Honorable Allison D. Burroughs
`Page 2
`
`April 8, 2019
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`Compare Apple, Inc. v. Uniloc Luxembourg S.A., No. IPR2018-00424 at 39-40, 54 (P.T.A.B.
`Aug. 2, 2018) (Board instituting inter partes review of all challenged claims but making clear
`dependent claim 9 contained limitations that might impart patentability) with Dkt. 35-1 at 21;
`Dkt. 35-2 at 22–23; Dkt. 35-3 at 22; Dkt. 37-1 at 21; Dkt. 37-2 at 24; Dkt. 37-3 at 25; Dkt. 39-1
`at 24; Dkt. 39-2 at 26; Dkt. 39-3 at 32. At bottom, Teva’s discussion of the SAS decision should
`have no bearing on the pending motion to stay.
`
`Second, Teva’s account of the Board’s institution decisions is misleading. For example,
`Teva relies, in isolation, on a single sentence of the Board’s institution decision in which the
`Board “conclude[d] that [Lilly] has established a reasonable likelihood that it would prevail in
`showing the unpatentability of at least one challenged claim [of the ’045 patent]” (Dkt. 40 at 1)
`and asserts that “[t]he other institution decisions contain similar language” (id. n.2). As an initial
`matter, this language does not appear in all of the institution decisions.2 Moreover, contrary to
`Teva’s representations, and as discussed above, the Board has articulated that all of the
`challenged claims warrant review and could be canceled by the Board in inter partes review.
`(See e.g., Dkt. 39-3 at 32 (“[W]e determine that Petitioner has established a reasonable likelihood
`of prevailing on its contentions as to [the dependent claims], for similar reasons as for [the
`independent claim].”).)3
`
`Teva misleadingly asserts that it is “incredibly unlikely” that Lilly will succeed in
`persuading the Board to cancel all of its claims. Teva’s misuse of IPR statistics (Dkt. 40 at 2)
`improperly treats each claim as entirely independent, ignoring that the likelihood of survival of
`similar claims in the same patent are interrelated. Teva similarly ignores the interrelatedness of
`the patents-in-suit. The fallacy of Teva’s analysis is underscored by the fact that in only about
`17% of IPR proceedings are some claims canceled while other claims survive.4
`
`2 In case nos. IPR2018-01424, IPR2018-01427, and IPR2018-01712, the Board concluded that Lilly “has
`demonstrated a reasonable likelihood of prevailing on its assertion that [the challenged claims] of the
`[challenged patent] are unpatentable.” (Dkt. 35-3 at 2, 29; Dkt. 37-3 at 2, 31; Dkt. 39-3 at 38.)
`3 The Board made the same finding in its decisions for the other eight patents-in-suit. (See Dkt. 35-3 at
`22 (same); Dkt. 37-3 at 25 (same); Dkt. 35-1 at 20–21, 34 (“Having considered the arguments and
`evidence, and at this stage of the proceeding, we are persuaded that Petitioner has sufficiently shown
`that the combination of [prior art references] teaches or suggests each limitation of [the independent
`claim(s)]. We are also persuaded that Petitioner has sufficiently shown as to [the independent
`claim(s)] that a person of ordinary skill in the art would have had a reason to combine the teachings of
`[the prior art references] with a reasonable expectation of success. . . Petitioner provides further
`evidence and arguments regarding [the challenged dependent claims]. . . Patent Owner does not
`advance any substantive arguments regarding [the challenged dependent claims]. . . For the foregoing
`reasons, we conclude that Petitioner has established a reasonable likelihood of prevailing on its
`assertion that one or more of [the challenged claims] of the [challenged] patent are unpatentable.”);
`Dkt. 35-2 at 22–23, 35 (same); Dkt. 37-1 at 21, 33 (same); Dkt. 37-2 at 23–24, 38 (same); Dkt. 39-1
`at 23–24, 40 (same); Dkt. 39-2 at 25–26, 40 (same).)
`4 See Elliot C. Cook et al., Claim and Case Disposition, AIA Blog,
`https://www.finnegan.com/en/america-invents-act/claim-and-case-disposition.html.
`
`

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`Case 1:18-cv-12029-ADB Document 41 Filed 04/08/19 Page 3 of 3
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`Honorable Allison D. Burroughs
`Page 3
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`April 8, 2019
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`Teva also argues that “Lilly has yet to articulate how the fact discovery that will take
`place over the next 12 months will be simplified in any meaningful way if the Board potentially
`cancels some—but not all—challenged claims.” (Dkt. 40 at 2.) At the outset, Teva ignores that
`the most likely outcome is that all of its claims will be canceled, thereby disposing of the case
`altogether. But, even if the Board were to cancel some but not all of the claims, fact discovery
`would be simplified in many ways. As one such example, pursuant to Local Rule 16.6(d), during
`fact discovery the parties must exchange Automatic Patent-Related Disclosures including
`infringement claim charts, non-infringement claim charts, invalidity claim charts. Proceeding
`with fact discovery would not only result in the parties expending resources on voluminous
`disclosures for claims that could be canceled in less than 12-months-time, the Court could be
`faced with motions to resolve disputes arising out of these disclosure obligations for claims
`and/or entire patents that could be canceled in less than 12-months-time.
`
`For the reasons set forth in Lilly’s moving papers (Dkt. 18-20, 29-30) and by Lilly during
`the hearing held on March 5, 2019, Lilly respectfully requests that the Court grant its motion to
`stay this case until April 3, 2020, pending resolution of the IPR proceedings. Consistent with
`Lilly’s request, Judge Bryson of the Federal Circuit Court of Appeals has expressed the view that
`“after the PTAB has instituted review proceedings, the parallel district court litigation
`ordinarily should be stayed.” Parsons Xtreme Golf LLC v. Taylor Made Golf Co., No. CV-17-
`03125-PHX-DWL, 2018 WL 6242280, at *5 (D. Ariz. Nov. 29, 2018) (emphasis added)
`(quoting NFC Tech. LLC v. HTC Am., Inc., No. 2:13-cv-1058-WCB, 2015 WL 1069111, at *4
`(E.D. Tex. Mar. 11, 2015) (Bryson, J.). Should the Court’s calendar permit, Lilly would
`appreciate the opportunity to respond more fully to Teva’s newly crafted arguments in
`supplemental briefing or before the Court.
`
`Respectfully submitted,
`
`/s/Andrea L. Martin
`Andrea L. Martin
`Partner
`amartin@burnslev.com
`D 617-345-3869
`
`cc: All counsel of record (via ECF)
`4850-3801-4611.1
`
`