Trials@uspto.gov
`571-272-7822
`
`
`Paper 77
`
`
`Entered: February 18, 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 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)1
`
`
`
`Before JENNIFER MEYER CHAGNON, JAMES A. WORTH, and
`RICHARD J. SMITH, Administrative Patent Judges.
`
`Per Curiam
`
`
`DECISION
`Denying Patent Owner’s Request on Rehearing
`37 C.F.R. § 42.71(d)
`
`1This Order addresses issues that are common to all nine 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.”
`
`
`
`
`571-272-7822
`
`
`Paper 77
`
`
`Entered: February 18, 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 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)1
`
`
`
`Before JENNIFER MEYER CHAGNON, JAMES A. WORTH, and
`RICHARD J. SMITH, Administrative Patent Judges.
`
`Per Curiam
`
`
`DECISION
`Denying Patent Owner’s Request on Rehearing
`37 C.F.R. § 42.71(d)
`
`1This Order addresses issues that are common to all nine 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.”
`
`
`
`
`
`I.
`
`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)
`
`INTRODUCTION
`On November 8, 2019, Patent Owner, Teva Pharmaceuticals
`International GmbH (“Teva”), emailed the Board to request a conference
`call to seek authorization to submit supplemental briefing addressing the
`effects of the Federal Circuit’s decision in Arthrex, Inc. v. Smith & Nephew,
`Inc., 941 F.3d 1320 (Fed. Cir. 2019) (“Arthrex”) on the proceedings, and
`further requesting a stay of the proceedings to provide time for the requested
`supplemental briefing. See Ex. 22742, 2–3. By return email, we denied
`Patent Owner’s request for supplemental briefing and a stay, stating “no stay
`or briefing is required, and the hearings will proceed as scheduled. Any
`Appointments Clause concerns have been addressed by the Federal Circuit
`in Arthrex.” Id. at 1. Subsequently, on November 21, 2019, Patent Owner
`filed a Request for Rehearing of our decision. See Paper 69 (“Req.
`Reh’g”).3
`
`II.
`
`STANDARD OF REVIEW
`A party requesting rehearing bears the burden of showing that the
`decision should be modified. 37 C.F.R. § 42.71(d). A request for rehearing
`
`
`2 For convenience, we refer herein to Papers and Exhibits filed in
`IPR2018-01422. Substantially the same documents have been filed in each
`of the captioned proceedings.
`3 Patent Owner also requested Precedential Opinion Panel (POP) review of
`the requests for rehearing. See Ex. 3002; Req. Reh’g 3, 15. Patent Owner’s
`request for POP review has been denied. See Paper 77.
`2
`
`
`
`
`
`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)
`
`“must specifically identify all matters the party believes the Board
`misapprehended or overlooked, and the place where each matter was
`previously addressed.” Id. With this in mind, we address the arguments
`presented by Patent Owner.
`
`III. ANALYSIS
`In its Request for Rehearing, Patent Owner argues that “[i]n denying
`Teva authorization to file supplemental briefing addressing Arthrex and a
`motion to stay (Ex. 2274 at 1), the panel misapprehended or overlooked the
`limitations of [the] Arthrex remedy and the constitutional issues that remain
`to be addressed.” Req. Reh’g 5. We disagree that we overlooked Patent
`Owner’s argument in this regard. Instead, we declined to consider Patent
`Owner’s constitutional arguments, as the issue has been addressed by the
`Federal Circuit in Arthrex. See Ex. 2274, 1. Additional briefing from the
`parties was not necessary to come to the decision to decline consideration of
`these constitutional arguments.
`Patent Owner further argues that “[t]he panel misapprehended or
`overlooked that a brief stay until the Arthrex mandate issues will conserve
`agency resources, and will avoid taking further steps in this proceeding
`while an Appointments Clause violation still exists.” Req. Reh’g 5, 14–15.
`Regarding Patent Owner’s request for a stay of the proceedings, we disagree
`that we overlooked Patent Owner’s arguments. Instead, we note that except
`in cases involving the unique nature of the sovereign immunity right of the
`3
`
`
`
`
`
`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)
`
`States, see, e.g., Taiwan Semiconductor Manufacturing Co. v. STC.UNM,
`IPR2019-01410, Paper 8 at 2–3 (PTAB Oct. 11, 2019) (cited by Patent
`Owner at Req. Reh’g 14–15), the Board generally declines to stay
`proceedings pending an appeal to the Federal Circuit or the Supreme Court.
`See, e.g., Askeladden LLC v. Purple Leaf, LLC, IPR2016-01720, Paper 22
`at 2 (PTAB Sept. 11, 2017) (denying authorization to file a motion to stay
`pending the outcome of an appeal to the Supreme Court).4 The present
`proceedings simply do not fall within the narrow category of cases in which
`the Board generally entertains a stay pending Federal Circuit review.
`Patent Owner also presents several pages of substantive arguments
`addressing the effects of the Federal Circuit’s decision in Arthrex. See Req.
`Reh’g 5–14. As indicated above, we decline to address these constitutional
`arguments. Further, we could not have misapprehended or overlooked
`issues not before us in rendering our decision not to authorize supplemental
`briefing or a stay. See 37 C.F.R. § 42.71(d) (indicating that a Request for
`Rehearing “must specifically identify . . . the place where each matter was
`previously addressed”).
`
`
`4 The Board also sometimes stays cases involving concurrent bankruptcy
`proceedings. See, e.g., Dr. Reddy’s Labs. Inc. v. Pozen Inc.,
`IPR2018-01341, Paper 10 (PTAB Oct. 16, 2018) (stay appropriate to allow
`the bankruptcy court to determine whether the automatic stay under
`11 U.S.C. § 362 governing bankruptcy proceedings applies to inter partes
`reviews).
`
`
`
`4
`
`
`
`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)
`
`For the foregoing reasons, we are not persuaded that we
`misapprehended or overlooked Patent Owner’s arguments in declining to
`authorize Patent Owner to submit supplemental briefing addressing the
`effects of the Federal Circuit’s Arthrex decision on the proceedings, or in
`denying Patent Owner’s request for a stay. Consequently, Patent Owner’s
`Request for Rehearing is denied in each of the captioned proceedings.
`
`IV. ORDER
`Accordingly, it is
`ORDERED that Patent Owner’s Requests for Rehearing are denied.
`
`
`
`
`
`
`
`
`
`5
`
`
`
`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)
`
`For 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
`
`For 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
`
`
`
`6
`
`
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