Case 1:18-cv-12029-ADB Document 448 Filed 07/28/22 Page 1 of 16
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`
`
`IN THE UNITED STATES DISTRICT COURT
`FOR THE DISTRICT OF MASSACHUSETTS
`
`
`
`
`TEVA PHARMACEUTICALS
`INTERNATIONAL GMBH and
`TEVA PHARMACEUTICALS
`USA, INC.,
`
`
`Plaintiffs,
`
`
`Civil Action No.
`1:18-cv-12029-ADB
`
`
`
`
`
`
`
`FILED UNDER SEAL
`LEAVE TO FILE GRANTED
`06/06/2022 (ECF NO. 385)
`
`v.
`
`ELI LILLY AND COMPANY,
`
`
`Defendant.
`
`
`
`
`
`PLAINTIFFS’ REPLY IN SUPPORT OF ITS MOTION FOR SUMMARY JUDGMENT
`REGARDING INEQUITABLE CONDUCT AND UNCLEAN HANDS
`
`
`
`

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`Case 1:18-cv-12029-ADB Document 448 Filed 07/28/22 Page 2 of 16
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`TABLE OF CONTENTS
`
`INTRODUCTION .............................................................................................................. 1
`ARGUMENT ...................................................................................................................... 2
`A.
`Lilly’s opposition ignores the impact of Therasense. ............................................. 2
`B.
`The record does not support a finding that
` committed
`inequitable conduct. ................................................................................................ 4
`1.
`Lilly’s theory based on
` fails as a matter of law. .............. 4
`2.
`Lilly’s theory based on Shaw fails as a matter of law. ............................... 7
`3.
`Lilly’s theory based on
` fails as a matter of law. ................. 8
`There is no evidence that Drs. Giering or Cole committed inequitable conduct. ... 9
`C.
`CONCLUSION ................................................................................................................. 10
`
`
`
`I.
`II.
`
`III.
`
`
`
`
`i
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`

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`Case 1:18-cv-12029-ADB Document 448 Filed 07/28/22 Page 3 of 16
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`TABLE OF AUTHORITIES
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`
`
`
`
`Page(s)
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`Cases
`
`1st Media, LLC v. Elec. Arts, Inc.,
`694 F.3d 1367 (Fed. Cir. 2012)........................................................................................ passim
`
`Abbott Biotechnology Ltd. v. Centocor Ortho Biotech, Inc.,
`2014 WL 7330777 (D. Mass. Dec. 19, 2014) ............................................................................5
`
`Bal Seal Eng’g, Inc. v. Nelson Prods., Inc.,
`2018 WL 4697255 (C.D. Cal. Aug. 3, 2018) .............................................................................3
`
`Baxter Int’l, Inc. v. CareFusion Corp.,
`2022 WL 981115 (N.D. Ill. Mar. 31, 2022) ...........................................................................2, 3
`
`Cal. Inst. of Tech. v. Broadcom Ltd.,
`25 F.4th 976 (Fed. Cir. 2022) ....................................................................................................3
`
`Crown Packaging Tech., Inc. v. Belvac Prod. Mach., Inc.,
`2022 WL 821441 (W.D. Va. Mar. 17, 2022) .............................................................................2
`
`Exergen Corp. v. Brooklands Inc.,
`290 F. Supp. 3d 113 (D. Mass. 2018) .............................................................................. passim
`
`Exergen Corp. v. Kaz USA, Inc.,
`120 F. Supp. 3d 1 (D. Mass. 2015) ....................................................................................3, 8, 9
`
`Finjan, Inc. v. Juniper Network, Inc.,
`2018 WL 4181905 (N.D. Cal. Aug. 31, 2018) ........................................................................10
`
`Fiskars, Inc. v. Hunt Mfg. Co.,
`221 F.3d 1318 (Fed. Cir. 2000)..................................................................................................8
`
`Knorr-Bremse Systeme Fuer Nutzfahrzeuge GmbH v. Dana Corp.,
`383 F.3d 1337 (Fed. Cir. 2004)..............................................................................................6, 7
`
`Lear Corp. v. NHK Seating of Am. Inc.,
`2022 WL 876021 (E.D. Mich. Mar. 23, 2022) ..........................................................................3
`
`Metris U.S.A., Inc. v. Faro Techs., Inc.,
`882 F. Supp. 2d 160 (D. Mass. 2011) ........................................................................................2
`
`Navico Inc. v. Garmin Int’l, Inc.,
`2017 WL 3701189 (E.D. Tex. Aug. 7, 2017) ............................................................................3
`
`ii
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`

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`Case 1:18-cv-12029-ADB Document 448 Filed 07/28/22 Page 4 of 16
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`
`
`PowerOasis, Inc. v. T-Mobile USA, Inc.,
`522 F.3d 1299 (Fed. Cir. 2008)..................................................................................................5
`
`Symbol Techs., Inc. v. Opticon, Inc.,
`935 F.2d 1569 (Fed. Cir. 1991)..................................................................................................5
`
`Terves, LLC v. Yueyang Aerospace New Materials Co.,
`2022 WL 1092658 (N.D. Ohio Apr. 12, 2022) ......................................................................2, 8
`
`Therasense, Inc. v. Benton, Dickinson & Co.,
`649 F.3d 1276 (Fed. Cir. 2011) (en banc)........................................................................ passim
`
`W. Plastics, Inc. v. DuBose Strapping, Inc.,
`2022 WL 576218 (Fed. Cir. Feb. 25, 2022)...............................................................................3
`
`Other Authorities
`
`37 C.F.R. § 1.78 .............................................................................................................................10
`
`Fed. R. Evid. 702 .............................................................................................................................5
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`Fed. R. Evid. 704 .............................................................................................................................5
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`
`iii
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`Case 1:18-cv-12029-ADB Document 448 Filed 07/28/22 Page 5 of 16
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`I.
`
`INTRODUCTION
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`Lilly’s opposition largely ignores the Federal Circuit’s decision in Therasense, Inc. v.
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`Benton, Dickinson & Co., 649 F.3d 1276 (Fed. Cir. 2011) (en banc), which imposed heightened
`
`standards for both materiality and intent. No factfinder, on this record, could reasonably conclude
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`that Lilly has satisfied either standard, let alone both.
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`Lilly’s primary inequitable conduct claim rests on the lack of disclosure of
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`
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` and the Shaw prior art reference that was disclosed in prosecuting two of the three
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`Patents-in-Suit. As to the materiality of
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`, the examiner already knew that not all
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`antibodies that bind CGRP also antagonize it. Shaw, which the PTO actually considered before
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`issuing two of the Patents-in-Suit, also did not disclose anything the examiner did not know. And
`
`
`
`
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`. Even Lilly’s experts were unable to opine that any of this was particularly
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`important: The best they could muster was that
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` “could have been relevant” and
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`that
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` would have been “germane.” Neither this tepid expert testimony nor
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`anything else in the record permits the but-for materiality finding that Therasense requires.
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`Lilly’s case for specific intent to deceive is even weaker. Knowledge of a reference and
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`its materiality—even if proven—is insufficient to show a specific intent to deceive. E.g.,
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`Therasense, 649 F.3d at 1290; 1st Media, LLC v. Elec. Arts, Inc., 694 F.3d 1367, 1374–75 (Fed.
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`Cir. 2012). Yet Lilly’s entire intent case rests on the theory that
`
` knew of
`
`Shaw and
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` and knew they were important. But Lilly offers no evidence that
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`
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`actually considered disclosing this information and chose not to do so. Moreover, an inequitable
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`conduct claim fails if there are “reasonable inferences that may be drawn” other than the intent to
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`deceive. Therasense, 649 F.3d at 1290–91. Lilly has not adduced evidence from which a
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`factfinder could reject as “unreasonable” the “other inferences that can be drawn from the
`
`1
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`

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`Case 1:18-cv-12029-ADB Document 448 Filed 07/28/22 Page 6 of 16
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`
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`evidence, such as a good faith belief that this information was not material.” Exergen Corp. v.
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`Brooklands Inc., 290 F. Supp. 3d 113, 129 (D. Mass. 2018). Lilly claims that it can get to trial if
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`the intent to deceive is a reasonable inference. That is simply not the law post-Therasense.
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`Lilly does not identify any evidence to support its claim that Drs. Cole and Giering sought
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`to deceive the PTO by stating that Teva’s delay in correcting a mistake in its priority chain was
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`unintentional. No facts support this theory; Lilly invites rank speculation based on the delay itself.
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`But the delay alone cannot support a finding that the delay was intentional, let alone that Dr.
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`Giering or Cole knew it was intentional. Lilly also offers no reason why Teva would have
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`intentionally delayed in fixing a problem that Teva had every reason to fix as soon as possible.1
`
`II.
`
`ARGUMENT
`
`A.
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`Lilly’s opposition ignores the impact of Therasense.
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`Therasense represented a “sea-change” in the law of inequitable conduct. Metris U.S.A.,
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`Inc. v. Faro Techs., Inc., 882 F. Supp. 2d 160, 166 (D. Mass. 2011). Yet Lilly’s opposition
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`proceeds, in many respects, as if Therasense did not exist. For instance, Lilly cites (at 8) a pre-
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`Therasense case for the proposition that summary judgment on inequitable conduct is
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`“uncommon.” But, while “it may have been true pre-Therasense” that “summary judgment
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`motions for no inequitable conduct are rarely granted . . . , it is no longer the case.” Baxter Int’l,
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`Inc. v. CareFusion Corp., 2022 WL 981115, at *8 (N.D. Ill. Mar. 31, 2022) (citing cases). Courts
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`now grant summary judgment on this issue all the time: In the last few months alone, at least four
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`district courts have granted such motions and the Federal Circuit has twice affirmed such rulings.2
`
`
`1 Contrary to Lilly’s Opposition (at 2 n.1), holding that the record does not support Lilly’s
`inequitable conduct counterclaims requires a grant of summary judgment on the related affirmative
`defenses, too. Lilly does not dispute that the counterclaims and affirmative defenses (including
`unclean hands) rest on precisely the same theory—one the factual record does not support.
`2 E.g., Baxter, 2022 WL 981115, at *8; Terves, LLC v. Yueyang Aerospace New Materials Co.,
`2022 WL 1092658, at *7–8 (N.D. Ohio Apr. 12, 2022); Crown Packaging Tech., Inc. v. Belvac
`
`2
`
`

`

`Case 1:18-cv-12029-ADB Document 448 Filed 07/28/22 Page 7 of 16
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`Lilly also ignores the Federal Circuit’s instruction that, after Therasense, “[a]n applicant’s
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`knowledge of a reference’s materiality . . . cannot by itself prove . . . that any subsequent non-
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`disclosure was based on a deliberate decision.” 1st Media, 694 F.3d at 1375. Indeed, Lilly itself
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`advocated for this holding in Therasense, writing: “No inference of intent from materiality should
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`be permitted under any circumstances because materiality by itself is simply not probative of
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`deceptive intent.” Lilly Amicus Br., Therasense, supra, 2010 WL 3390224, at *5. An infringer
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`asserting inequitable conduct must now show something akin to “selective disclosure,” like
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`“careful and selective manipulation of where, when, and how much of the most material
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`information to disclose.” 1st Media, 694 F.3d at 1375. Lilly offers nothing of the sort: It offers
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`precisely the knowledge-of-materiality theory of intent that the Federal Circuit “emphatically
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`rejected,” at Lilly’s urging. Exergen Corp. v. Kaz USA, Inc., 120 F. Supp. 3d 1, 7 (D. Mass. 2015).
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`Lilly also errs in asserting, in effect, that one of Therasense’s most important holdings—
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`that “when there are multiple reasonable inferences that may be drawn, intent to deceive cannot
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`be found”—does not apply at summary judgment. See 649 F.3d at 1290–91. As Teva explained
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`(at 14), courts in this district and elsewhere regularly grant summary judgment where the evidence
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`permits inferences other than intent to deceive that a factfinder could consider reasonable. E.g.,
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`Exergen, 120 F. Supp. 3d at 6–7; Exergen, 290 F. Supp. 3d at 129; Lear, 2022 WL 981115, at *8;
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`Bal Seal Eng’g, Inc. v. Nelson Prods., Inc., 2018 WL 4697255, at *11–12 (C.D. Cal. Aug. 3, 2018);
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`Navico Inc. v. Garmin Int’l, Inc., 2017 WL 3701189, at *2 (E.D. Tex. Aug. 7, 2017). The cases
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`Lilly cites (at 11) are not to the contrary: They simply hold that a factfinder could, on the facts of
`
`
`Prod. Mach., Inc., 2022 WL 821441, at *4–7 (W.D. Va. Mar. 17, 2022); Lear Corp. v. NHK
`Seating of Am. Inc., 2022 WL 876021, at *9–12 (E.D. Mich. Mar. 23, 2022); Cal. Inst. of Tech. v.
`Broadcom Ltd., 25 F.4th 976, 992 (Fed. Cir. 2022); W. Plastics, Inc. v. DuBose Strapping, Inc.,
`2022 WL 576218, at *1 (Fed. Cir. Feb. 25, 2022).
`
`3
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`

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`Case 1:18-cv-12029-ADB Document 448 Filed 07/28/22 Page 8 of 16
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`those cases, reject any other potential inference as unreasonable. This does not mean, as Lilly
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`suggests, that Lilly must “prove now that deceit is the single most reasonable inference.” Opp. at
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`10. What Lilly must do is adduce evidence that permits a finding that specific intent to deceive is
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`a reasonable inference and a finding that all other inferences are unreasonable. In other words,
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`there simply cannot be a finding of intent if there are multiple reasonable inferences. As discussed
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`below, Lilly never explains what basis a factfinder would have for rejecting as unreasonable the
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`non-deceptive explanations for the lack of disclosure at issue.3
`
`B.
`
`The record does not support a finding that
`inequitable conduct.
`
` committed
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`1.
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`Lilly’s theory based on
`
` fails as a matter of law.
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`Materiality. Lilly asserts that
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` should have disclosed
`
`
`
`
`
` But
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` disclosed to the examiner that not all antibodies that bind to CGRP also antagonize it.
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`ECF No. 349 (“RSUMF”) ¶ 10. There was indisputably no outright deception—the examiner
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`never asked the applicants to identify a non-C-terminal antibody that antagonized CGRP, and
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`
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`never asserted that they had identified such an antibody. See ECF No. 368 Ex. BU. The
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`data on which Lilly relies was preliminary and addressed polyclonal, not monoclonal, antibodies.
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`RSUMF ¶ 41. Thus, as Dr. Hale explained, the disclosure of
`
` could not have been
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`dispositive: The examiner knew that not all binding antibodies antagonize, so the fact that, in
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` some non-C-terminal antibodies bound but did not antagonize is cumulative and
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`does not mean that other non-C-terminal antibodies would not be antagonists.
`
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`3 Lilly is wrong that the preponderance standard applies to materiality. Opp. at 12–13. The case
`Lilly cites notes that the examiner, in the but-for world, would apply the preponderance standard.
`But Lilly “must prove both elements—intent and materiality—by clear and convincing evidence.”
`Therasense, 649 F.3d at 1287; Exergen, 575 F.3d at 1329 n.5 (same).
`
`4
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`

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`Case 1:18-cv-12029-ADB Document 448 Filed 07/28/22 Page 9 of 16
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`Trying to gin up a factual dispute, Lilly casts the issue as a battle of the experts. But there
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`is no battle, because Lilly’s expert offered no relevant opinion.
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`
`
`
`
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`
`
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`. That is not the Therasense materiality standard. And, contrary to Lilly’s Opposition (at
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`14),
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`is not close to sufficient to
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`“guide” a factfinder to a conclusion that the data would have been dispositive.
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`
`
`
`
` see PowerOasis, Inc. v. T-Mobile USA, Inc.,
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`522 F.3d 1299, 1304 (Fed. Cir. 2008)—
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`Lilly suggests (at 14) that
`
`
`
`
`
`
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` But “an [expert] opinion is not objectionable just because it embraces an ultimate
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`issue.” Fed. R. Evid. 704. Across patent law, experts skilled in the relevant art routinely opine on
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`“ultimate issue[s]” where, as here, that testimony “will help the trier of fact to understand the
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`evidence” (Fed. R. Evid. 702), by applying complex, technical facts to a governing legal
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`framework. Cf., e.g., Symbol Techs., Inc. v. Opticon, Inc., 935 F.2d 1569, 1575 (Fed. Cir. 1991)
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`(“testimony on the ultimate issue of infringement is permissible”). Abbott Biotechnology Ltd. v.
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`Centocor Ortho Biotech, Inc., 2014 WL 7330777 (D. Mass. Dec. 19, 2014), is not to the contrary.
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`That case—which did not involve but-for materiality—held that a patent attorney could not
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`“speculate[]” as to what a specific examiner was thinking in reviewing a specific application. Id.
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`at *8. It does not suggest that a skilled artisan could not opine as to how one skilled in the art—
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`5
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`Case 1:18-cv-12029-ADB Document 448 Filed 07/28/22 Page 10 of 16
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`which, again, an examiner is presumed to be—would have understood the marginal relevance of
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`the data. Dr. Hale properly provided such an opinion; Dr. McDonnell could have, but did not.
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`Nor is Dr. McDonnell’s brief discussion of
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` sufficient, absent a materiality
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`opinion, to support a finding of but-for materiality.
`
`
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`
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` But it is
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`undisputed that the examiner knew that not all antibodies that bind CGRP also antagonize it.
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`RSUMF ¶ 22. Thus, the fact that some non-C-terminal antibodies bind but do not antagonize
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`CGRP does not meaningfully confirm a lack of possession or contradict the snippet of prosecution
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`history any more than what was already before the examiner. Unsurprisingly, then,
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`
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` Seeking to backfill, Lilly argues (at 14)
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`that there was no other evidence before the examiner “as to how non-C-terminal binding antibodies
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`affect CGRP biological activity.” But all
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` shows is that some such antibodies do
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`not antagonize, which is consistent with the other disclosures to the examiner.
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`Intent. Lilly’s primary intent argument stems from purported evidence that
`
` was
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`“acutely aware” that the data was important and did not disclose it. Opp. at 9–10. That, of course,
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`is not enough: “Knowledge of the reference and knowledge of materiality alone are insufficient
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`after Therasense to show an intent to deceive.” 1st Media, 694 F.3d at 1374.
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`So Lilly concocts a story (at 10), based on speculation as to the content of
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`, that
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` were generated as part of an
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`
`
`
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`. That argument flies in the face of Federal Circuit precedent
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`prohibiting precisely the type of “adverse inference” from privileged communication Lilly asks
`
`this Court to draw. Knorr-Bremse Systeme Fuer Nutzfahrzeuge GmbH v. Dana Corp., 383 F.3d
`
`6
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`

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`Case 1:18-cv-12029-ADB Document 448 Filed 07/28/22 Page 11 of 16
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`
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`1337, 1344 (Fed. Cir. 2004). Lilly’s only response (at 12) is that Knorr-Bremse was a willfulness
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`case. But the court’s reasoning had nothing to do with willfulness; it held that allowing adverse
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`inferences from the assertion of privilege would “distort the attorney-client relationship,”
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`undermining the need for “full communication and ultimately the public interest in encouraging
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`open and confident relationships between client and attorney.” Id. at 1344. That reasoning applies
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`fully here. Without the adverse inference it seeks, Lilly’s argument evaporates. Lilly emphasizes
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`Teva’s “lucre motive” in obtaining broader claims, but every patent applicant wants the broadest
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`coverage to which it is entitled. If a “lucre motive” were enough to support a finding of specific
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`intent, then every withheld material reference would be the basis for inequitable conduct.
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`Finally, even if a factfinder could infer intent to deceive as an explanation, Lilly’s claim
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`fails because “there are other inferences that can be drawn from the evidence,” which no factfinder
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`could reject as unreasonable. Exergen, 290 F. Supp. 3d at 129; see Mot. at 17–18. For instance,
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`no factfinder could reject as unreasonable the inference that
`
` viewed the data
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`as cumulative or otherwise not dispositive of the patentability of these specific claims.
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`2.
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`Lilly’s theory based on Shaw fails as a matter of law.
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`Materiality. Lilly asserts that Shaw, like
`
`, would have been material
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`because it shows that some non-C-terminal antibodies bind to, but do not antagonize, CGRP. But
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`Shaw shows that some non-C-terminal binding antibodies do antagonize CGRP, hence supporting
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`patentability. RSUMF ¶ 33. Also, Shaw was disclosed to the PTO in the prosecution of both the
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`’907 and ’908 patents. The examiner indicated that he considered Shaw, and yet those patents
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`issued anyway. RSUMF ¶¶ 29–31. Lilly does not argue that Shaw would have had any more
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`relevance in the ’045 prosecution than in the ’907 and ’908 prosecutions. We therefore know that
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`the examiner would have issued the patents-in-suit over Shaw, because he did just that. Just last
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`month, a district court held that the fact that a patent was confirmed in reexamination over a
`
`7
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`

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`Case 1:18-cv-12029-ADB Document 448 Filed 07/28/22 Page 12 of 16
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`
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`reference that was excluded during prosecution precluded a finding of but-for materiality of the
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`excluded reference. Terves, 2022 WL 1092658, at *7. So too, here.
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`Lilly’s only response (at 15) is that Shaw was “buried” in the ’907 and ’908 prosecutions.
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`But the Federal Circuit has held that “[a]n applicant can not be guilty of inequitable conduct if the
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`reference was cited to the examiner”—precluding a “burying” theory. Fiskars, Inc. v. Hunt Mfg.
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`Co., 221 F.3d 1318, 1327 (Fed. Cir. 2000). Lilly seeks an exception to that rule that appears
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`nowhere in Fiskars. Moreover, Lilly does not dispute that, by not striking out Shaw, the examiner
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`indicated that he actually considered Shaw before issuing the patents. RSUMF ¶¶ 30–31 The
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`parties’ dispute about the validity of a “burying” theory is thus largely irrelevant for purposes of
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`materiality: Because the examiner issued the ’907 and ’908 patents after actually considering
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`Shaw, prior lack of disclosure of Shaw cannot be but-for material, as the Terves court recognized.
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`Intent. Lilly’s intent theory as to Shaw is one paragraph long. Lilly asserts (at 14–15) that
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` “clearly knew of Shaw”; that
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` made a chart “indicating
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` understanding of
`
`the importance of [its] results”; and that this “permits a finding” that the failure to “disclose Shaw”
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`was made with “intent to deceive the PTO.” This is precisely the type of theory that the Federal
`
`Circuit has “emphatically rejected.” Exergen, 120 F. Supp. 3d at 7. “An applicant’s knowledge
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`of a reference’s materiality … cannot by itself prove, let alone clearly and convincingly prove, that
`
`any subsequent non-disclosure was based on a deliberate decision.” 1st Media, 694 F.3d at 1375.
`
`Yet
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` purported “knowledge of [Shaw’s] materiality” is literally all that Lilly invokes.
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`3.
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`Lilly’s theory based on
`
` fails as a matter of law.
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`Materiality. There is no dispute that
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` results lacked a control group. RSUMF
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`¶ 55. Nor is there any dispute that
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` responses to
`
` were to
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`suggest further experiments with a control. See RSUMF ¶¶ 56, 57. That should be the end of the
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`matter for purposes of materiality: The idea that an experiment that lacked a control group would
`
`8
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`Case 1:18-cv-12029-ADB Document 448 Filed 07/28/22 Page 13 of 16
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`
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`have been dispositive as to patentability is nonsensical. Unsurprisingly, Lilly’s expert,
`
`
`
`
`
`
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`Lilly’s only response is to quote a handful of out-of-context, contemporary statements that
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` had “fail[ed]” or showed “negative” results. That misses the point. There is no
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`dispute that
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` showed negative results, but it did so without a control to show
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`whether the problem was with the treatment or with the experiment itself. Without answering that
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`question, the results could not have transformed a patentable claim to an unpatentable one.
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`Intent. Lilly’s two-paragraph discussion of intent with regard to
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` rests
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`entirely on the theory that
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` knew
`
` was important and yet did not
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`disclose it. As discussed, the Federal Circuit has made it “emphatically” clear that this is not
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`enough. Exergen, 120 F. Supp. 3d at 7; 1st Media, 694 F.3d at 1375. Lilly’s claim also fails
`
`because “there are other inferences that can be drawn from the evidence, such as a good faith belief
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`that this information was not material.” Exergen, 290 F. Supp. 3d at 129. Indeed,
`
`
`
` testimony and
`
`did not view
`
`concedes that
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` as particularly probative because it lacked a control group. Even Lilly
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` response was not to give up, but to propose more experiments. RSUMF
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` suggest that they
`
`¶ 57. Nothing in the record would permit a factfinder to reject a “good faith belief that
`
`
`
` was not material” as a reasonable inference, and so Lilly’s claim fails as a matter of law.
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`C.
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`There is no evidence that Drs. Giering or Cole committed inequitable conduct.
`
`Lilly did not even try to develop its claim based on Dr. Cole’s statements—in three filings
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`containing Dr. Giering’s name—that a delay in correcting a priority chain was “unintentional.”
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`Lilly’s documentary evidence consists entirely of the filings. Lilly did not depose Dr. Cole. Lilly
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`asked Dr. Giering about only one statement, to which Dr. Giering responded: “I have no reason to
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`9
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`Case 1:18-cv-12029-ADB Document 448 Filed 07/28/22 Page 14 of 16
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`believe it’s not a true statement.” RSUMF ¶ 20 And Lilly seeks an adverse inference from an
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`assertion of privilege, which is improper, as discussed above. That is all there is.
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`Having failed to develop its claim through discovery, Lilly asks the Court to save it through
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`speculation. Lilly asks the Court to infer deceptive intent from the delay itself, citing Finjan, Inc.
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`v. Juniper Network, Inc., 2018 WL 4181905 (N.D. Cal. Aug. 31, 2018). But in Finjan there was
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`a reason to suspect intentional delay: The patentee sought to improperly extend the patent term by
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`waiting to assert an earlier priority date until necessary to avoid an invalidity challenge. Id. at *7.
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`Lilly, by contrast, identifies no reason Teva would have intentionally delayed in correcting the
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`priority chain. To the contrary, Lilly emphasizes Teva’s motivation to fix that unintentional break.
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`Absent some indication that Teva would benefit from the delay itself—like the patent owner in
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`Finjan—the delay itself cannot be evidence that the delay was intentional. And it certainly cannot
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`support a finding that Drs. Giering and Cole knew that the delay was intentional.
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`Lilly also asserts that Drs. Giering and Cole’s strategy for fixing the priority-date issue—
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`first correcting the priority chain for the earliest application, then filing petitions to correct the
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`chain for the subsequent applications after the PTO accepted the petition for the prior application—
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`inherently created intentional delay. But this practice does not involve “delay” at all: a subsequent
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`application could not claim priority to an earlier application that had not yet been corrected. Lilly
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`cites no legal support for its interpretation of 37 C.F.R. § 1.78. Even if this were intentional delay
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`under the regulation, there is no evidence that Dr. Giering or Cole believed that this practice
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`constituted “intentional” delay. Thus, there can be no intent to deceive. Finally, there can be no
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`intent to deceive given that the PTO knew Drs. Giering and Cole submitted these petitions seriatim
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`and did not object. E.g., ECF No. 368 Exs. AN, AO (same examiner granting petitions).
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`III.
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`CONCLUSION
`The Court should grant Teva’s Motion for summary judgment.
`
`10
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`

`

`Case 1:18-cv-12029-ADB Document 448 Filed 07/28/22 Page 15 of 16
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`Respectfully Submitted,
`
`/s/ Elaine Herrmann Blais
`Douglas J. Kline (BBO# 556680)
`Elaine Herrmann Blais (BBO# 656142)
`Robert Frederickson III (BBO# 670111)
`Joshua S. Weinger (BBO# 690814)
`Alexandra Lu (BBO# 691114)
`Eric T. Romeo (BBO# 691591)
`Kathleen A. McGuinness (BBO# 693760)
`Tara R. Thigpen (BBO 707508)
`GOODWIN PROCTER LLP
`100 Northern Avenue
`Boston, MA 02210
`Tel.: (617) 570-1000
`Fax: (617) 523-1231
`dkline@goodwinlaw.com
`eblais@goodwinlaw.com
`rfrederickson@goodwinlaw.com
`jweinger@goodwinlaw.com
`alu@goodwinlaw.com
`eromeo@goodwinlaw.com
`kmcguinness@goodwinlaw.com
`tthigpen@goodwinlaw.com
`
`
`Attorneys for Plaintiffs
`
`
`
`Dated: June 7, 2022
`
`
`
`
`
`
`
`I. Neel Chatterjee (pro hac vice)
`GOODWIN PROCTER LLP
`601 Marshall St.
`Redwood City, CA 94063
`Tel.: (650) 752-3100
`Fax: (650) 853-1038
`nchatterjee@goodwinlaw.com
`
`Natasha E. Daughtrey (pro hac vice)
`Sean M. Anderson (pro hac vice)
`GOODWIN PROCTER LLP
`601 S. Figueroa St.
`Los Angeles, CA 90017
`Tel.: (213) 426-2500
`Fax: (213) 623-1673
`ndaughtrey@goodwinlaw.com
`sanderson@goodwinlaw.com
`
`Madeline R. DiLascia (pro hac vice)
`GOODWIN PROCTER LLP
`1900 N Street N.W.
`Washington, D.C. 20036
`Tel.: (202) 346-4000
`Fax.: (202) 204-7250
`mdilascia@goodwinlaw.com
`
`
`
`
`
`
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`
`
`
`
`

`

`Case 1:18-cv-12029-ADB Document 448 Filed 07/28/22 Page 16 of 16
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`CERTIFICATE OF SERVICE
`
`I, Elaine Hermann Blais, hereby certify that this document filed through the ECF system
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`will be sent electronically to the registered participants as identified on the Notice of Electronic
`
`Filing (“NEF”) and paper copies will be sent to those indicated as non-registered participants
`
`on July 28, 2022.
`
`/s/ Elaine Herrmann Blais
`Elaine Herrmann Blais (BBO# 656142)
`GOODWIN PROCTER LLP
`100 Northern Avenue
`Boston, MA 02210
`Tel.: (617) 570-1000
`Fax: (617) 523-1231
`eblais@goodwinlaw.com
`
`