Case 1:18-cv-12029-ADB Document 42 Filed 04/09/19 Page 1 of 2
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`Elaine Herrmann Blais
`+1 617 570 1205
`eblais@goodwinlaw.com
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`Goodwin Procter LLP
`100 Northern Avenue
`Boston, MA 02210
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`goodwinlaw.com
`+1 617 570 1000
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`April 9, 2019
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`VIA ECF
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`The Honorable Allison D. Burroughs
`United States District Court Judge
`John Joseph Moakley U.S. Courthouse
`1 Courthouse Way
`Boston, MA 02210
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`Re:
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`Teva Pharmaceuticals Int’l GmbH et al. v. Eli Lilly & Co.,
`Civil Action No. 1:18-cv-12029-ADB
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`Dear Judge Burroughs:
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`We write on behalf of Teva to briefly respond to several issues raised in Lilly’s recent letter dated April
`8, 2019 (Dkt. No. 41), each of which is addressed individually below.
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`First, Teva did not misstate the holding of SAS Institute Inc. v. Iancu, 138 S. Ct. 1348 (2018) (“SAS”)—
`that the Board can only institute as to all claims or none based on its preliminary review of a petition’s
`potential success. Lilly confirms Teva’s position by citing decisions where the Board instituted review of
`either all claims or none at all.1 In fact, Lilly has not pointed to a single institution decision where the
`Board failed to follow SAS by only instituting review of a subset of the challenged claims.
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`Second, Lilly mischaracterizes Teva’s analysis of the Board’s institution decisions in this case. It has
`never been Teva’s position that the Board would not review all challenged claims following institution of
`the IPRs. Rather, Teva’s position is that it is improper to presume the cancellation of every challenged
`claim based on institution decisions that repeatedly emphasize the preliminary nature of the Board’s
`findings and describe the need for factual issues to be explored during trial. This is aptly illustrated by
`the excerpt cited in footnote 3 of Lilly’s letter, which indicates that a factor in the Board’s decision was
`that Teva had not yet offered specific arguments as to the validity of the many dependent claims at
`issue.
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`Third, Lilly is incorrect that a stay would simplify discovery in the event that some of Teva’s claims
`survive the IPR process. As Lilly admits, the subject matter of the various patents-in-suit are
`“interrelated,” meaning that the scope of discovery, and thus the nature of any resulting discovery
`disputes, would likely remain the same regardless of which claims survive. Further, Lilly’s statement
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`1 See, e.g., Apple, Inc. v. Uniloc Luxembourg S.A., No. IPR2018-00424, at 54 (P.T.A.B. Aug. 2, 2018); Deeper,
`UAB v. Vexilar, Inc., No. IPR2018-01310, at 2, 43 (P.T.A.B. Jan. 24, 2019); Chevron Oronite Co. v. Infineum USA
`L.P., IPR2018-00923, at 10-11.
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`Case 1:18-cv-12029-ADB Document 42 Filed 04/09/19 Page 2 of 2
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`The Honorable Allison D. Burroughs
`April 9, 2019
`Page 2
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`that the cancellation of all of Teva’s claims is “the most likely outcome” of the IPRs is based on a flawed
`statistical analysis that conflates the probabilities associated with a single IPR outcome with the
`relevant question here—the aggregate outcome of nine separate IPRs.2
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`Fourth, the two unpublished out-of-circuit district court decisions cited in the last paragraph of Lilly’s
`letter are readily distinguishable from the instant case. In NFC Tech. LLC v. HTC Am. Inc., the parties
`agreed that they were not direct competitors. 2015 WL 1069111, at *3 (E.D. Tex. Mar. 11, 2015).3 And
`in Parsons Xtreme Golf LLC v. Taylor Made Golf Co., the district court noted a “liberal policy in favor of
`granting motions to stay” within the Ninth Circuit. 2018 WL 6242280, at *3 (D. Ariz. Nov. 29, 2018).
`Furthermore, these decisions break no new ground for Lilly’s position regarding the merits of a stay.
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`Finally, Teva disagrees with Lilly that it would be productive to burden the Court with further argument
`on Lilly’s pending motion to stay—an issue that the Parties have exhaustively litigated through four
`rounds of briefing, one oral hearing, and (now) eight letters to the Court. However, to the extent the
`Court finds that additional briefing or argument would be beneficial, Teva is happy to comply.
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`Respectfully submitted,
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`/s/ Elaine Herrmann Blais
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`Elaine Herrmann Blais
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`2 According to the statistical reference cited in footnote 4 of Lilly’s letter, the probability of all claims being
`cancelled in a given IPR is about 64%, the probability of all claims surviving is about 19%, and the probability of
`some claims surviving (“mixed outcome”) is about 17%. If this is correct, then the probability of every claim being
`cancelled across nine separate IPRs is (64%)^9 or 18%; or stated differently, the probability of at least one claim
`surviving all nine IPRs is 82%.
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` In NFC Tech., Judge Bryson of the Federal Circuit was sitting in the Eastern District of Texas by designation.
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