`571-272-7822 Entered: December 13, 2018
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`
`
`
`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 RICHARD J. SMITH, Administrative Patent Judge.
`SMITH, 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
`
`Petitioner Eli Lilly and Company filed six Petitions (Paper 1),2 and
`Patent Owner Teva Pharmaceuticals International GMBH filed a
`Preliminary Response (Paper 8) to each Petition. Each Preliminary
`Response argues that the Board should exercise its discretion and deny the
`respective Petition under 35 U.S.C. § 325(d).
`In an e-mail to the Board on December 6, 2018, Petitioner requested a
`telephone conference to seek authorization to file a reply to address the
`Section 325(d) issue. Patent Owner opposed Petitioner’s request to file a
`reply. A conference call was held between counsel for the parties and the
`Board (Judges Smith, Worth, and Paulraj) on December 11, 2018, to discuss
`Petitioner’s requested reply.
`During the conference call, the Board discussed the reasons for
`Petitioner’s request, giving the parties the opportunity to present their
`arguments and explanations to support their positions. Petitioner was
`questioned about the good cause requirement, and Patent Owner was given
`an opportunity to respond to Petitioner’s position regarding good cause.
`Based on our consideration of the parties’ positions, it is hereby:
`ORDERED that Petitioner may file a 5-page reply brief in each of the
`above referenced inter partes review proceedings, limited to addressing
`Patent Owner’s arguments under Section 325(d), within 7 business days of
`this Order; and
`FURTHER ORDERED that Patent Owner is authorized to (but not
`required to) file a 5-page sur-reply in response to Petitioner’s reply brief
`within 7 business days of service of the reply.
`
`
`2 Paper numbers in this Order refer to papers filed in IPR2018-01422.
`2
`
`
`
`
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`IPR2018-01422, -01423, -01424, -01425, -01426, and -01427
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`FURTHER ORDERED that no declaration or other evidence may be
`submitted with the reply or sur-reply.
`
`
`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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`
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