`571-272-7822
`
` Paper 69
` Entered: January 2, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ELI LILLY AND COMPANY
`Petitioner
`
`v.
`
`TEVA PHARMACEUTICALS INTERNATIONAL GMBH
`Patent Owner.
`
`Case IPR2018-01422 (Patent No. 9,340,614)
`Case IPR2018-01423 (Patent No. 9,266,951)
`Case IPR2018-01424 (Patent No. 9,346,881)
`Case IPR2018-01425 (Patent No. 9,890,210)
`Case IPR2018-01426 (Patent No. 9,890,211)
` Case IPR2018-01427 (Patent No. 8,597,649)1
`
`Before JENNIFER MEYER CHAGNON, JAMES A. WORTH, and
`RICHARD J. SMITH, Administrative Patent Judges.
`
`WORTH, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`1This Order addresses issues that are common to all six cases. We,
`therefore, issue a single Order that has been entered in each case. The
`parties may use this style caption when filing a single paper in multiple
`proceedings, provided that such caption includes a footnote attesting that
`“the word-for-word identical paper is filed in each proceeding identified in
`the caption.”
`
`
`
`IPR2018-01422, -01423, -01424, -01425, -01426, and -01427
`
`
`The Board held oral argument in these cases on November 22, 2019.
`
`On December 18, 2019, the U.S. Court of Appeals for the Federal
`
`Circuit issued an opinion in Fox Factory, Inc. v. SRAM, LLC, 2019 WL
`
`6884530, Case Nos. 2018-2024, -2025 (Fed. Cir. Dec. 18, 2019). In Fox
`
`Factory, the court “address[ed] the Board’s application of the presumption
`
`of nexus” to certain claims as issue. Id. at *5. In so doing, the court reached
`
`a conclusion as to whether the patent owner’s products were “coextensive”
`
`with the claims. Id.
`
`In its Patent Owner Response, Patent Owner argues that “[t]he
`
`challenged claims have a presumption of nexus to the objective indicia of
`
`nonobviousness.” Paper 24, 48.2 Petitioner disagrees. See Paper 39, 21–28.
`
`In view of the court’s opinion in Fox Factory, the panel has decided
`
`that supplemental briefing is warranted to allow the parties to explain the
`
`applicability, if any, of Fox Factory to the issues argued by the parties. The
`
`panel is not re-opening the evidentiary record at this time. Accordingly, the
`
`parties’ positions in their supplemental briefs are requested to relate back to
`
`evidence already of record.
`
`Accordingly, it is
`
`ORDERED that Petitioner and Patent Owner are each authorized to
`
`file a supplemental brief, no longer than seven pages, that addresses the
`
`above-identified issues no later than Monday, January 13, 2020;
`
`FURTHER ORDERED that Petitioner and Patent Owner are each
`
`authorized to file a responsive supplemental brief, no longer than five pages,
`
`
`2 Where the same or similar papers have been filed in multiple proceedings,
`we refer herein to the papers filed in Case IPR2018-01422.
`
`
`
`2
`
`
`
`IPR2018-01422, -01423, -01424, -01425, -01426, and -01427
`
`
`that is responsive to the other party’s supplemental brief no later than Friday,
`
`January 17, 2020;
`
`FURTHER ORDERED that no additional evidence may be filed at
`
`this time.
`
`
`
`PETITIONER:
`
`William B. Raich
`Erin M. Sommers
`Pier D. DeRoo
`Yieyie Yang
`FINNEGAN, HENDERSON, FARABOW,
`GARRETT & DUNNER, LLP
`william.raich@finnegan.com
`erin.sommers@finnegan.com
`pier.deroo@finnegan.com
`yieyie.yang@finnegan.com
`
`Sanjay M. Jivraj
`Mark J. Stewart
`ELI LILLY AND COMPANY
`jivraj_sanjay@lilly.com
`stewart_mark@lilly.com
`
`PATENT OWNER:
`
`Deborah A. Sterling
`Robert C. Millonig
`Gaby L. Longsworth
`Jeremiah B. Frueauf
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`dsterling-ptab@sternekessler.com
`bobm-ptab@sternekessler.com
`glongs-ptab@sternekessler.com
`jfrueauf-ptab@sternekessler.com
`
`
`
`3
`
`
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