`571-272-7822 Entered: September 20, 2019
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
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`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.
`
`SMITH, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
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`
`
`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 (Patent No. 9,340,614) IPR2018-01423 (Patent No. 9,266,951)
`IPR2018-01424 (Patent No. 9,346,881) IPR2018-01425 (Patent No. 9,890,210)
`IPR2018-01426 (Patent No. 9,890,211) IPR2018-01427 (Patent No. 8,597,649)
`
`Inter partes review was instituted in the above-referenced cases on
`February 19, 2019 (IPR2018-01422, -01423, -01424) and February 25, 2019
`(IPR2018-01425, -01426, -01427). Paper 14.2 Patent Owner filed a
`Response (Paper 24) to each Petition, and Petitioner filed a Reply (Paper 39,
`“Reply”) to each Response.
`In an e-mail to the Board on September 17, 2019, Patent Owner
`requested authorization to file a motion to strike certain exhibits, testimony,
`and arguments submitted or advanced in connection with each Reply, or
`alternatively, sought other relief the Board deems appropriate. Petitioner
`opposed Patent Owner’s request. A conference call was held between
`counsel for the parties and the Board (Judges Chagnon, Worth, and Smith)
`on September 19, 2019, to discuss Patent Owner’s request.3
`During the conference call, counsel for the parties and the Board
`discussed Patent Owner’s request, giving the parties the opportunity to
`present their arguments and explanations to support their positions. Patent
`Owner argued that certain exhibits, testimony, and arguments submitted or
`advanced in connection with each Reply should have been presented in the
`Petition or otherwise exceeded the scope of a proper reply. Petitioner
`presented opposing arguments in response to each of Patent Owner’s
`arguments.
`Based on our consideration of the parties’ positions, it is hereby:
`ORDERED that Patent Owner may file a 5-page paper, in each of the
`above-referenced inter partes reviews, on or before September 30, 2019,
`
`
`2 Paper numbers in this Order refer to papers filed in IPR2018-01422.
`3 The transcript of the call should be made of record as soon as possible.
`2
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`IPR2018-01422 (Patent No. 9,340,614) IPR2018-01423 (Patent No. 9,266,951)
`IPR2018-01424 (Patent No. 9,346,881) IPR2018-01425 (Patent No. 9,890,210)
`IPR2018-01426 (Patent No. 9,890,211) IPR2018-01427 (Patent No. 8,597,649)
`
`identifying the exhibits, testimony, and arguments that it contends exceed
`the scope of a proper reply;
`FURTHER ORDERED that Petitioner may file a 5-page reply in
`response to Patent Owner’s paper, in each of the above-referenced inter
`partes reviews, on or before October 9, 2019; and
`FURTHER ORDERED that no declaration or other evidence may be
`submitted with Patent Owner’s paper or Petitioner’s reply.
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`3
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`IPR2018-01422 (Patent No. 9,340,614) IPR2018-01423 (Patent No. 9,266,951)
`IPR2018-01424 (Patent No. 9,346,881) IPR2018-01425 (Patent No. 9,890,210)
`IPR2018-01426 (Patent No. 9,890,211) IPR2018-01427 (Patent No. 8,597,649)
`
`
`
`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
`
`
`
`4
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`
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