Case IPR 2016-01343
`Patent 7,772,209
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
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`TEVA PHARMACEUTICALS USA, INC.
`&
`FRESENIUS KABI USA, LLC,
`Petitioners,
`
`v.
`
`ELI LILLY & COMPANY,
`Patent Owner.
`__________________
`
`Case No: IPR2016-01343
`Patent No. 7,772,209
`__________________
`
`
`
`
`
`JOINT NOTICE OF STIPULATION CONCERNING JOINDER
`
`
`Patent 7,772,209
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`
`TEVA PHARMACEUTICALS USA, INC.
`&
`FRESENIUS KABI USA, LLC,
`Petitioners,
`
`v.
`
`ELI LILLY & COMPANY,
`Patent Owner.
`__________________
`
`Case No: IPR2016-01343
`Patent No. 7,772,209
`__________________
`
`
`
`
`
`JOINT NOTICE OF STIPULATION CONCERNING JOINDER
`
`
`
`Case IPR 2016-01343
`Patent 7,772,209
`Three petitions for inter partes review have been filed seeking to join
`
`IPR2016-00240: IPR2016-01191 (filed by Apotex Inc. and Apotex Corp.);
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`IPR2016-01343 (filed by Teva Pharmaceuticals USA, Inc. and Fresenius Kabi
`
`USA, LLC); and IPR2016-01337 (filed by Wockhardt Bio AG). The Board held
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`an initial telephonic conference in IPR2016-00240 on July 22, 2016, in which the
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`petitioners in IPR2016-01191 and IPR2016-01343 participated. During that
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`conference, the Board encouraged the parties to meet and confer regarding
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`conditions for an agreed-upon joinder. The Petitioners in IPR2016-01191,
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`IPR2016-01343, and IPR2016-01337 (collectively, the “Joinder Petitioners”),
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`Petitioner Neptune Generics, LLC (“Neptune” or “Lead Petitioner”), and Patent
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`Owner Eli Lilly and Company (“Lilly”) have conferred, and hereby stipulate and
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`agree as follows, subject to the Board’s approval of joinder on the parties’ agreed-
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`upon terms:
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`1.
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`Neptune and Lilly will not oppose the joinder of Joinder Petitioners to
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`IPR2016-00240 (the “Joined Proceeding”).
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`2.
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`Lilly waives its right to file a Patent Owner Preliminary Response in
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`IPR2016-01191, IPR2016-01343, and IPR2016-01337.
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`3.
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`So long as Lead Petitioner is not terminated as a party, Lead Petitioner
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`will retain control over petitioners’ side of the Joined Proceeding, will conduct all
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`argument and examination of witnesses for that side, and will submit all
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`2
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`Case IPR 2016-01343
`Patent 7,772,209
`substantive written submissions for that side. Joinder Petitioners will act as silent
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`understudies in the proceedings, and thus will not (1) file any papers or exhibits in
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`the Joined Proceeding, except for pro hac vice motions, updated mandatory
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`notices, and similar administrative filings that do not constitute argument or
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`evidence relating to the merits; (2) serve objections or discovery requests in
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`connection with the Joined Proceeding; however, these restrictions do not apply to
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`any discovery requests Lilly may serve on a Joinder Petitioner; (3) participate in
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`the questioning of any witness or the defense of any witness deposition in the
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`Joined Proceeding; (4) participate in a speaking role in any telephonic conference
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`before the Board in the Joined Proceeding; or (5) participate in oral argument in
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`the Joined Proceeding. Joinder Petitioners may, however, attend all depositions,
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`telephonic conferences, and oral argument in the Joined Proceeding, and will be
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`served with all papers and exhibits served by Lead Petitioner on Patent Owner or
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`by Patent Owner on Lead Petitioner. Notwithstanding the above, Joinder
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`Petitioners may speak or otherwise respond if there is an argument, question, or
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`inquiry directed specifically to one or more Joinder Petitioners, or that is about one
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`or more Joinder Petitioners specifically or the position of one or more Joinder
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`Petitioners specifically.
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`4.
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`The parties agree that the arguments and evidence presented in
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`Joinder Petitioners’ petitions is duplicative of the arguments and evidence
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`
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`3
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`
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`Case IPR 2016-01343
`Patent 7,772,209
`presented in Lead Petitioner’s petition. The Joined Petitioners agree to proceed in
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`the instant IPR based only upon the arguments and evidence advanced by Lead
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`Petitioner. Subject to the provisions of paragraph 6 below, the Joinder Petitioners
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`agree that they will not rely on any declarants (such as expert witnesses) proffered
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`by the Joinder Petitioners with their Petitions that were not proffered by Lead
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`Petitioner, and such declarants shall not be subject to cross-examination.
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`5.
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`The presence of Joinder Petitioners in the Joined Proceeding shall not
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`be a basis for any alteration of the schedule, nor shall Joinder Petitioners be
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`allocated time or otherwise affect the times allocated for cross-examination,
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`redirect, or re-cross examination of any witness.
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`6.
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`In the event that Lead Petitioner is terminated from the Joined
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`Proceeding by settlement or for any other reason, the remaining parties agree to
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`confer in good faith regarding a fair and efficient framework for completing the
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`remainder of the Joined Proceeding, including whether Petitioners may rely on the
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`additional expert declarations filed by the Joinder Petitioners with their Petitions
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`(such as in the event that Lead Petitioner’s expert is unavailable to the Joinder
`
`Petitioners).
`
`
`
`
`Date: August 22, 2016
`
`/Sarah E. Spires (with permission)/
`Sarah E. Spires
`
`
`
`Reg. No. 61,501
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`/Dov P. Grossman/
`Dov P. Grossman
`Reg. No. 72,525
`
`
`
`
`
`
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`4
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`Case IPR 2016-01343
`Patent 7,772,209
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`Lead Counsel for
`Eli Lilly and Company
`
`Williams & Connolly LLP
`725 Twelfth Street, N.W.
`Washington, D.C. 20005
`202-434-5812 (Telephone)
`202-434-5029 (Facsimile)
`dgrossman@wc.com
`
`
`Lead Counsel for
`Neptune Generics, LLC
`
`
`Skiermont Derby LLP
`2200 Ross Ave., Ste. 4800W
`Dallas, TX 75201
`
`214-978-6600 (Telephone)
`214-978-6601 (Facsimile)
`sspires@skiermontderby.com
`
`
`
`
`
`
`
`
`/John D. Polivick (with permission)/
`John D. Polivick
`
`
`
`Reg. No. 57,926
`
`
`
`Lead Counsel for
`
`
`Apotex Inc. and Apotex Corp.
`
`Rakoczy Molino Mazzochi Siwik LLP
`6 West Hubbard St., Ste. 500
`
`
`Chicago, IL 60654
`
`
`
`312-527-2157 (Telephone)
`
`
`312-527-4205 (Facsimile)
`
`
`jpolivick@rmmslegal.com
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`/Patrick A. Doody (with permission)/
`
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`Patrick A. Doody
`Reg. No. 35,022
`
`Lead Counsel for
`
`Wockhardt Bio AG
`
`Pillsbury Winthrop Shaw Pittman LLP
`1650 Tysons Blvd.
`
`
`
`McLean, VA 22102
`
`
`
`703-770-7755 (Telephone)
`
`
`703-770-7901 (Facsimile)
`
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`patrick.doody@pillsburylaw.com
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`5
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`/Gary J. Speier (with permission)/
`Gary J. Speier
`
`
`
`Reg. No. 45,458
`Lead Counsel for
`Teva Pharmaceuticals USA, Inc.
`
`Carlson, Caspers, Vandenburgh,
`Lindquist, & Schuman
`225 South Sixth St., Ste. 4200
`Minneapolis, MN 55402
`612-436-9600 (Telephone)
`612-436-9605 (Facsimile)
`gspeier@carlsoncaspers.com
`
`/Cynthia L. Hardman (with
`permission)/
`Cynthia L. Hardman
`Reg. No. 53,179
`Counsel for
`Fresenius Kabi USA, LLC
`
`Goodwin Procter LLP
`The New York Times Building
`620 Eighth Avenue
`New York, NY 10018
`212-813-8800 (Telephone)
`212-355-3333 (Facsimile)
`chardman@goodwinprocter.com
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`Case IPR 2016-01343
`Patent 7,772,209
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`CERTIFICATE OF SERVICE
`(37 C.F.R. § 42.6(e))
`
`The undersigned hereby certifies that the foregoing Joint Notice of
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`
`
`Stipulation Concerning Joinder was served on August 22, 2016 by delivering a
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`copy via electronic mail on the following attorneys of record:
`
`Sarah E. Spires
`Reg. No. 61,501
`240Neptune@skiermontderby.com
`
`Skiermont Derby LLP
`2200 Ross Ave., Ste. 4800W
`Dallas, Texas 75201
`P: 214-978-6600/F: 214-978-6601
`
`Attorneys for Neptune Generics, LLC
`
`John D. Polivick
`Reg. No. 57,926
`jpolivick@rmmslegal.com
`
`William A. Rakoczy
`Pro hac vice to be filed
`wrakoczy@rmmslegal.com
`
`Rakoczy Molino Mazzochi Siwik LLP
`6 West Hubbard Street, Suite 500
`Chicago, IL
`P: 312-527-2157/F: 312-527-4205
`
`Attorneys for Apotex Inc. and Apotex
`Corp.
`
`Gary J. Speier
`Reg. No. 45,458
`gspeier@carlsoncaspers.com
`
`
`
`
`Dr. Parvathi Kota
`Reg. No. 65,122
`240Neptune@skiermontderby.com
`
`
`
`
`Deanne M. Mazzochi
`Reg. No. 50,158
`dmazzochi@rmmslegal.com
`
`Patrick C. Kilgore
`Reg. No. 69,131
`pkilgore@rmmslegal.com
`
`
`
`Mark D. Schuman
`Reg. No. 31,197
`mschuman@carlsoncaspers.com
`
`
`
`
`
`
`Carlson, Caspers, Vandenburgh,
`Lindquist & Schuman
`225 South Sixth Street, Suite 4200
`Minneapolis, MN 55402
`P: 612-436-9600
`F: 612-436-9605
`
`Cynthia Lambert Hardman
`Reg. No. 53,179
`chardman@goodwinprocter.com
`
`Goodwin Procter LLP
`The New York Times Building
`620 Eighth Avenue
`New York, NY 10018-1405
`P: 212-813-8800
`F: 212-355-3333
`
`Attorneys for Teva Pharmaceuticals
`USA, Inc. and Kabi Fresenius USA,
`LLC
`
`Patrick A. Doody
`Reg. No. 35,022
`P: 703-770-7755
`patrick.doody@pillsburylaw.com
`
`Pillsbury Winthrop Shaw Pittman LLP
`1650 Tysons Boulevard
`McLean, VA 22102
`F: 312-527-4205
`
`Attorneys for Wockhardt Bio AG
`
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`Date: August 22, 2016
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`Case IPR 2016-01343
`Patent 7,772,209
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`
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`Bryan P. Collins
`Reg. No. 43,560
`P: 703-770-7538
`bryan.collins@pillsburylaw.com
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`
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`/Dov P. Grossman/
`Dov P. Grossman
`Reg. No. 72,525
`Lead Counsel for Patent Owner
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