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 B2)
`Case IPR2018—01423 (Patent No. 9,266,951 B2)
`Case IPR2018—01424 (Patent No. 9,346,881 B2)
`Case IPR2018—01425 (Patent No. 9,890,210 B2)
`Case IPR2018—01426 (Patent No. 9,890,211 B2)
`Case IPR2018—01427 (Patent No. 8,597,649 B2)
`Case IPR2018—01710 (Patent No. 8,586,045 B2)
`Case IPR2018-01711 (Patent No. 9, 884, 907 B2)
`Case IPR2018— 01712 (Patent No. 9, 884,908 B2)
`
`DECISION ON PETITION
`
`This is a decision denying “PATENT OWNER’S PETITION UNDER
`
`37 CPR. § 1.181(A)(3) INVOKING THE SUPERVISORY AUTHORITY
`
`OF THE DIRECTOR” filed November 21, 2019 (“petition”). In the
`
`petition, Patent Owner requests that the Director stay this inter partes review
`
`pending the mandate from the United States Court of Appeals for the
`
`Federal Circuit (“Federal Circuit”) in Arthrex, Inc. v. Smith & Nephew, Ina,
`
`
`
`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 B2)
`Case IPR2018—01423 (Patent No. 9,266,951 B2)
`Case IPR2018—01424 (Patent No. 9,346,881 B2)
`Case IPR2018—01425 (Patent No. 9,890,210 B2)
`Case IPR2018—01426 (Patent No. 9,890,211 B2)
`Case IPR2018—01427 (Patent No. 8,597,649 B2)
`Case IPR2018—01710 (Patent No. 8,586,045 B2)
`Case IPR2018-01711 (Patent No. 9, 884, 907 B2)
`Case IPR2018— 01712 (Patent No. 9, 884,908 B2)
`
`DECISION ON PETITION
`
`This is a decision denying “PATENT OWNER’S PETITION UNDER
`
`37 CPR. § 1.181(A)(3) INVOKING THE SUPERVISORY AUTHORITY
`
`OF THE DIRECTOR” filed November 21, 2019 (“petition”). In the
`
`petition, Patent Owner requests that the Director stay this inter partes review
`
`pending the mandate from the United States Court of Appeals for the
`
`Federal Circuit (“Federal Circuit”) in Arthrex, Inc. v. Smith & Nephew, Ina,
`
`
`
`IPR2018—01422 (Patent No. 9,340,614 B2)
`IPR2018~01423 (Patent No. 9,266,951 B2)
`IPR2018-01424 (Patent No. 9,346,881 B2)
`IPR2018-01425 (Patent No. 9,890,210 B2)
`1PR2018~01426 (Patent No. 9,890,211 B2)
`IPR2018—01427 (Patent NO. 8,597,649 B2)
`IPR2018-01710 (Patent N0. 8,586,045 B2)
`IPR2018-01711 (Patent No. 9,884,907 B2)
`IPR2018-01712 (Patent No. 9,884,908 B2)
`
`941 F.3d 1320 (Fed. Cir. 2019).1 Petition 1. The petition fee of $400.00
`
`pursuant to 37 C.F.R. § 1.17(f) was charged to Patent Owner’s deposit
`
`account on February 18, 2020.
`
`PROCEDURAL HISTORY
`
`1. On August 8, 2018, Petitioner filed a Petition for Inter Partes Review.
`
`2. On February 19, 2019, a Decision instituting inter partes review was
`
`mailed.
`
`3. On November 15, 2019, the Board denied Patent Owner’s request for
`
`authorization to file a motion to stay the inter partes review.
`
`4. Patent Owner filed the instant petition on November 21, 2019.
`
`RELEVANT AUTHORITY
`
`37 C.F.R. § 42.20(a) provides:
`
`(a) Relief Relief, other than a petition requesting the institution of a
`trial, must be requested in the form of a motion.
`
`37 C.F.R. § 42.3(a) provides:
`
`(a) The Board may exercise exclusive jurisdiction within the Office
`over every involved application and patent during the proceeding, as
`the Board may order.
`
`Patent Owner also filed a “PETITION TO EXPEDITE UNDER 37
`
`
`
`IPR2018-01422 (Patent No. 9,340,614 B2)
`1PR2018—01423 (Patent No. 9,266,951 B2)
`IPR2018-01424 (Patent No. 9,346,881 B2)
`IPR2018-01425 (Patent No. 9,890,210 B2)
`IPR2018-01426 (Patent No. 9,890,211 B2)
`IPR2018-01427 (Patent No. 8,597,649 B2)
`IPR2018-01710 (Patent No. 8,586,045 B2)
`IPR2018-01711 (Patent No. 9,884,907 B2)
`IPR2018-01712 (Patent No. 9,884,908 B2)
`
`37 C.F.R. § 42.7(b) provides:
`
`(b) The Board may vacate or hold in abeyance any non-Board action
`directed to a proceeding while an application or patent is under the
`jurisdiction of the Board unless the action was authorized by the
`Board.
`
`37 C.F.R. § 1.181(a)(3) provides:
`
`(a) Petition may be taken to the Director:
`
`(3) To invoke the supervisory authority of the Director in
`appropriate circumstances. For petitions involving action of the
`Patent Trial and Appeal Board, see § 41.3 of this title.
`
`37 C.F.R. § 41.3(b) provides:
`
`(b) Scope. This section covers petitions on matters pending before the
`Board (§§ 41.35, 41.64, 41.103, and 41.205); otherwise, see §§ 1.181
`to 1.183 ofthis title. .
`.
`.
`
`DISCUSSION
`
`Patent Owner purports to “invoke[] the supervisory authority of the
`
`Director under 37 C.F.R. § 1.181(a)(3).” Petition 1. Patent Owner’s petition
`
`is improper pursuant to 37 C.F.R. § 1.181(a)(3), which allows such
`
`petitions only “in appropriate circumstances.” Patent Owner does not
`
`establish that the circumstances here are “appropriate,” nor can it. 37 C.F.R.
`
`
`
`IPR2018-Ol422 (Patent No. 9,340,614 B2)
`IPR2018—Ol423 (Patent No. 9,266,951 B2)
`IPR2018—01424 (Patent No. 9,346,881 B2)
`IPR20l8—Ol425 (Patent No. 9,890,210 B2)
`IPR2018—01426 (Patent No. 9,890,211 B2)
`IPR2018—01427 (Patent No. 8,597,649 B2)
`IPR2018—01710 (Patent No. 8,586,045 B2)
`1PR2018-01711 (Patent No. 9,884,907 B2)
`IPR2018-01712 (Patent No. 9,884,908 B2)
`
`
`
`institution of a trial, must be requested in the form of a motion.” Patent
`
`Owner sought, but did not obtain, authorization to file a motion requesting
`
`the relief it desires. The Board typically exercises “exclusive jurisdiction”
`
`over a patent involved in an inter partes review, and it may take exclusive
`
`jurisdiction over related applications. 37 CPR. § 42.3(a). Likewise, “[t]he
`
`Board may vacate or hold in abeyance any non—Board action directed to a
`
`proceeding while an application or patent is under the jurisdiction of the
`
`Board unless the action was authorized by the Board.” Id. § 42.7(b). Relief
`
`therefore is not available under 37 CPR. § 1.181(a)(3) for actions not
`
`authorized by the Board.
`
`Nevertheless, we address Patent Owner’s request on the merits.
`
`Patent Owner argues that we should “stay this IPR pending issuance of the
`
`mandate in Arthrex.” Petition 2. Patent Owner’s argument is premised on
`
`its theory that the remedy set forth in Arthrex “renders APJs unable to
`
`preside over IPR proceedings consistent with the Administrative Procedure
`
`Act (‘APA’).” Id. at 10. But, even if that were true, it is unclear how the
`
`issuance of the mandate in Arthrex would address the alleged APA defect.
`
`Patent Owner therefore has not established any justification for a stay.
`
`
`Accordingly, Patent Owner’s petition is denied.
`
`
`
`IPR2018—01422 (Patent No. 9,340,614 B2)
`IPR2018-01423 (Patent No. 9,266,951 B2)
`IPR2018—01424 (Patent No. 9,346,881 B2)
`IPR2018-01425 (Patent No. 9,890,210 B2)
`IPR2018-01426 (Patent No. 9,890,211 B2)
`IPR2018—01427 (Patent No. 8,597,649 B2)
`IPR2018—01710 (Patent No. 8,586,045 B2)
`IPR2018-01711 (Patent No. 9,884,907 B2)
`IPR2018—01712 (Patent No. 9,884,908 B2)
`
`DECISION
`
`In View of the foregoing, the petition is DENIED.
`
`
`
`Scott C. Weidenfeller
`
`
`
`Vice Chief Administrati
`
`atent Judge
`
`FOR PATENT OWNER:
`
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`
`1100 New York Avenue, NW
`
`Washington, DC 20005
`
`FOR PETITIONER:
`
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER LLP
`
`901 New York Avenue, NW
`
`Washington, DC 20001-4413 '
`
`
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