Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 15
`Entered: February 25, 2019
`
`
`
`
`
`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 9,340,614 B2)
` Case IPR2018-01423 (Patent 9,266,951 B2)
` Case IPR2018-01424 (Patent 9,346,881 B2)
` Case IPR2018-01425 (Patent 9,890,210 B2)
` Case IPR2018-01426 (Patent 9,890,211 B2)
` Case IPR2018-01427 (Patent 8,597,649 B2)1
`
`
`
`
`
`
`
`
`
`
`Before JENNIFER MEYER CHAGNON, JAMES A. WORTH, and
`RICHARD J. SMITH, Administrative Patent Judges.
`
`
`SMITH, Administrative Patent Judge.
`
`
`
`SCHEDULING ORDER
`37 C.F.R. § 42.5
`
`
`1 This 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 all six 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.”
`
`
`Tel: 571-272-7822
`
`Paper 15
`Entered: February 25, 2019
`
`
`
`
`
`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 9,340,614 B2)
` Case IPR2018-01423 (Patent 9,266,951 B2)
` Case IPR2018-01424 (Patent 9,346,881 B2)
` Case IPR2018-01425 (Patent 9,890,210 B2)
` Case IPR2018-01426 (Patent 9,890,211 B2)
` Case IPR2018-01427 (Patent 8,597,649 B2)1
`
`
`
`
`
`
`
`
`
`
`Before JENNIFER MEYER CHAGNON, JAMES A. WORTH, and
`RICHARD J. SMITH, Administrative Patent Judges.
`
`
`SMITH, Administrative Patent Judge.
`
`
`
`SCHEDULING ORDER
`37 C.F.R. § 42.5
`
`
`1 This 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 all six 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
`
`
`A. GENERAL INSTRUCTIONS
`
`1.
`
`Initial Conference Call
`
`An initial conference call is scheduled for March 25, 2019, at 2 p.m.
`
`EDT. The parties should be prepared to discuss proposed changes to this
`
`Scheduling Order or proposed motions, as well as any other procedural
`
`issues of concern. See Office Patent Trial Practice Guide, 77 Fed. Reg.
`
`48,756, 48,765–66 (Aug. 14, 2012) (“Practice Guide”) (guidance in
`
`preparing for the initial conference call).
`
`2.
`
`Protective Order
`
`No protective order shall apply to any of these proceedings until the
`
`Board enters one. If either party files a motion to seal before entry of a
`
`protective order, a jointly proposed protective order shall be filed as an
`
`exhibit with the motion. The Board encourages the parties to adopt the
`
`Board’s default protective order if they conclude that a protective order is
`
`necessary. See Practice Guide, App’x B (Default Protective Order). If the
`
`parties choose to propose a protective order deviating from the default
`
`protective order, they must submit the proposed protective order jointly
`
`along with a marked-up comparison of the proposed and default protective
`
`orders showing the differences between the two and explain why good cause
`
`exists to deviate from the default protective order.
`
`The Board has a strong interest in the public availability of trial
`
`proceedings. Redactions to documents filed in any of these proceedings
`
`should be limited to the minimum amount necessary to protect confidential
`
`information, and the thrust of the underlying argument or evidence must be
`
`clearly discernible from the redacted versions. We also advise the parties
`
`that information subject to a protective order may become public if
`
`identified in a final written decision in any of these proceedings, and that a
`
`2
`
`
`
`IPR2018-01422, -01423, -01424, -01425, -01426, and -01427
`
`
`motion to expunge the information will not necessarily prevail over the
`
`public interest in maintaining a complete and understandable file history.
`
`See Practice Guide 48,761.
`
`3.
`
`Discovery Disputes
`
`The Board encourages parties to resolve disputes relating to discovery
`
`on their own. To the extent that a dispute arises between the parties relating
`
`to discovery, the parties must meet and confer to resolve such a dispute
`
`before contacting the Board. If attempts to resolve the dispute fail, a party
`
`may request a conference call with the Board.
`
`4.
`
`Testimony
`
`The parties are reminded that the Testimony Guidelines appended to
`
`the Trial Practice Guide, Appendix D, apply to this proceeding. The Board
`
`may impose an appropriate sanction for failure to adhere to the Testimony
`
`Guidelines. 37 C.F.R. § 42.12. For example, reasonable expenses and
`
`attorneys’ fees incurred by any party may be levied on a person who
`
`impedes, delays, or frustrates the fair examination of a witness.
`
`5.
`
`Cross-Examination
`
`Except as the parties might otherwise agree, for each due date:
`
`Cross-examination ordinarily takes place after any supplemental
`
`evidence is due. 37 C.F.R. § 42.53(d)(2).
`
`Cross-examination ordinarily ends no later than a week before the
`
`filing date for any paper in which the cross-examination testimony is
`
`expected to be used. Id.
`
`6.
`
`Oral Argument
`
`Requests for oral argument must comply with 37 C.F.R. § 42.70(a).
`
`To permit the Board sufficient time to schedule the oral argument, the
`
`3
`
`
`
`IPR2018-01422, -01423, -01424, -01425, -01426, and -01427
`
`
`parties may not stipulate to an extension of the request for oral argument
`
`beyond the date set forth in the Due Date Appendix.
`
`Unless the Board notifies the parties otherwise, oral argument, if
`
`requested, will be held at the USPTO headquarters in Alexandria, Virginia.
`
`Seating in the Board’s hearing rooms may be limited, and will be available
`
`on a first-come, first-served basis. If either party anticipates that more than
`
`five (5) individuals will attend the argument on its behalf, the party should
`
`notify the Board as soon as possible, and no later than the request for oral
`
`argument. Parties should note that the earlier a request for accommodation
`
`is made, the more likely the Board will be able to accommodate additional
`
`individuals.
`
`
`
`B. DUE DATES
`
`This order sets due dates for the parties to take action after institution
`
`of the proceedings. The parties may stipulate different dates for DUE
`
`DATES 1 through 5 (earlier or later, but no later than DUE DATE 6). A
`
`notice of the stipulation, specifically identifying the changed due dates, must
`
`be promptly filed. The parties may not stipulate an extension of DUE
`
`DATES 6 and 7, or to the requests for oral hearing.
`
`In stipulating different times, the parties should consider the effect of
`
`the stipulation on times to object to evidence (37 C.F.R. § 42.64(b)(1)), to
`
`supplement evidence (§ 42.64(b)(2)), to conduct cross-examination
`
`(§ 42.53(d)(2)), and to draft papers depending on the evidence and cross-
`
`examination testimony.
`
`1. DUE DATE 1
`
`Patent Owner may file—
`
`4
`
`
`
`IPR2018-01422, -01423, -01424, -01425, -01426, and -01427
`
`
`a. A response to the petition (37 C.F.R. § 42.120). If Patent Owner
`
`elects not to file a response, Patent Owner must arrange a conference call
`
`with the parties and the Board. Patent Owner is cautioned that any
`
`arguments for patentability not raised in the response may be deemed
`
`waived.
`
`b. A motion to amend the patent (37 C.F.R. § 42.121). Patent Owner
`
`may file a motion to amend without prior authorization from the Board.
`
`Nevertheless, Patent Owner must confer with the Board before filing such a
`
`motion. 37 C.F.R. § 42.121(a). To satisfy this requirement, Patent Owner
`
`should request a conference call with the Board no later than two weeks
`
`prior to DUE DATE 1. The parties are directed to the Board’s Guidance on
`
`Motions to Amend in view of Aqua Products (https://go.usa.gov/xU6YV),
`
`and Western Digital Corp. v. SPEX Techs., Inc., Case IPR2018-00082
`
`(PTAB April 25, 2018) (Paper 13) (providing information and guidance on
`
`motions to amend).
`
`2. DUE DATE 2
`
`Petitioner may file a reply to the Patent Owner’s response.
`
`Petitioner may file an opposition to the motion to amend.
`
`3. DUE DATE 3
`
`Patent Owner may file a sur-reply to Petitioner’s reply.
`
`Patent Owner may file a reply to the opposition to the motion to
`
`amend.
`
`4. DUE DATE 4
`
`Petitioner may file a sur-reply to Patent Owner’s reply to the
`
`opposition to the motion to amend.
`
`Either party may file a motion to exclude evidence (37 C.F.R.
`
`§ 42.64(c)).
`
`5
`
`
`
`IPR2018-01422, -01423, -01424, -01425, -01426, and -01427
`
`
`Either party may file a request for oral argument (may not be extended
`
`by stipulation).
`
`5. DUE DATE 5
`
`Either party may file an opposition to a motion to exclude evidence.
`
`6. DUE DATE 6
`
`Either party may file a reply to an opposition to a motion to exclude
`
`evidence.
`
`Either party may request that the Board hold a pre-hearing conference.
`
`7. DUE DATE 7
`
`The oral argument (if requested by either party) shall be held on this
`
`date. Approximately one month prior to the argument, the Board will issue
`
`an order setting the start time of the hearing and the procedures that will
`
`govern the parties’ arguments.
`
`
`
`C. COMMUNICATIONS WITH THE BOARD
`
`Except as otherwise provided in the Rules, Board authorization is
`
`required before filing a motion. 37 C.F.R. § 42.20(b). A party seeking to file
`
`a non-preauthorized motion should request a conference to obtain
`
`authorization to file the motion. Parties may request a conference with us by
`
`contacting the Board staff by e-mail at Trials@uspto.gov or by telephone at
`
`571-272-7822.
`
`Finally, we refer the parties to the instructions on the Board’s website
`
`at http://www.uspto.gov/ip/boards/bpai/prps.jsp regarding the proper use of
`
`email communication to the Board. Specifically, an email requesting a
`
`conference call should copy the other party, indicate generally the relief
`
`being requested or the subject matter of the conference call, state whether
`
`the opposing party opposes the request, and include multiple times when all
`
`6
`
`
`
`IPR2018-01422, -01423, -01424, -01425, -01426, and -01427
`
`
`parties are available. The email may not contain substantive argument. The
`
`parties also are reminded that they should discuss and attempt to resolve
`
`issues with each other first before requesting conference calls with the
`
`Board.
`
`
`
`
`
`7
`
`
`
`IPR2018-01422, -01423, -01424, -01425, -01426, and -01427
`
`
`DUE DATE APPENDIX
`
`INITIAL CONFERENCE CALL .......................................... March 25, 2019
`
`DUE DATE 1 ............................................................................ May 28, 2019
`
`Patent owner’s response to the petition
`
`Patent owner’s motion to amend the patent
`
`DUE DATE 2 ........................................................................ August 26, 2019
`
`Petitioner’s reply to patent owner’s response to petition
`
`Petitioner’s opposition to motion to amend
`
`DUE DATE 3 .................................................................. September 25, 2019
`
`Patent owner’s sur-reply to reply
`
`Patent owner’s reply to opposition to motion to amend
`
`DUE DATE 4 ...................................................................... October 25, 2019
`
`Petitioner’s sur-reply to reply to opposition to motion to amend
`
`Motion to exclude evidence
`
`Request for oral argument (may not be extended by stipulation)
`
`DUE DATE 5 .................................................................... November 1, 2019
`
`Opposition to motion to exclude
`
`DUE DATE 6 .................................................................... November 8, 2019
`
`Reply to opposition to motion to exclude
`
`Request for prehearing conference
`
`DUE DATE 7 .................................................................. November 22, 2019
`
`Oral argument (if requested)
`
`
`
`8
`
`
`
`IPR2018-01422, -01423, -01424, -01425, -01426, and -01427
`
`
`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
`
`
`
`9
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
