Trials@uspto.gov
`571-272-7822
`
`Paper 73
`Date: December 17, 2019
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MYLAN PHARMACEUTICALS INC. and PFIZER INC.,
`Petitioner,
`
`v.
`
`SANOFI-AVENTIS DEUTSCHLAND GMBH,
`Patent Owner.
`____________
`
`IPR2018-01675, IPR2018-01676 (Patent 8,603,044 B2)
`IPR2018-01678, IPR2018-01679, IPR2019-00122 (Patent 8,992,486 B2)
`IPR2018-01680, IPR2018-01682 (Patent 9,526,844 B2)
`IPR2018-01684 (Patent 9,604,008 B2)1
`____________
`
`Before LYNNE H. BROWNE, HYUN J. JUNG,
`BART A. GERSTENBLITH, and JAMES A. TARTAL, Administrative
`Patent Judges.
`
`JUNG, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`1 This Order is entered into each case. The parties are not authorized to use
`this joint heading and filing style in their papers. Also, Pfizer Inc., who filed
`petitions in IPR2019-00977, IPR2019-00978, IPR2019-00980, IPR2019-
`00981, IPR2019-00982, IPR2019-00987, IPR2019-01022, and IPR2019-
`01023, has been joined as a petitioner in these proceedings.
`
`
`571-272-7822
`
`Paper 73
`Date: December 17, 2019
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MYLAN PHARMACEUTICALS INC. and PFIZER INC.,
`Petitioner,
`
`v.
`
`SANOFI-AVENTIS DEUTSCHLAND GMBH,
`Patent Owner.
`____________
`
`IPR2018-01675, IPR2018-01676 (Patent 8,603,044 B2)
`IPR2018-01678, IPR2018-01679, IPR2019-00122 (Patent 8,992,486 B2)
`IPR2018-01680, IPR2018-01682 (Patent 9,526,844 B2)
`IPR2018-01684 (Patent 9,604,008 B2)1
`____________
`
`Before LYNNE H. BROWNE, HYUN J. JUNG,
`BART A. GERSTENBLITH, and JAMES A. TARTAL, Administrative
`Patent Judges.
`
`JUNG, Administrative Patent Judge.
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`1 This Order is entered into each case. The parties are not authorized to use
`this joint heading and filing style in their papers. Also, Pfizer Inc., who filed
`petitions in IPR2019-00977, IPR2019-00978, IPR2019-00980, IPR2019-
`00981, IPR2019-00982, IPR2019-00987, IPR2019-01022, and IPR2019-
`01023, has been joined as a petitioner in these proceedings.
`
`
`
`IPR2018-01675, IPR2018-01676 (Patent 8,603,044 B2)
`IPR2018-01678, IPR2018-01679, IPR2019-00122 (Patent 8,992,486 B2)
`IPR2018-01680, IPR2018-01682 (Patent 9,526,844 B2)
`IPR2018-01684 (Patent 9,604,008 B2)
`
`
`In an email dated November 26, 2019, to the Board, Patent Owner
`requested authorization, in view of Arthrex, Inc. v. Smith & Nephew, Inc.,
`941 F.3d 1320 (Fed. Cir. 2019), to file a one-page, non-argumentative
`statement in each of the above-listed proceedings to purportedly preserve
`Patent Owner’s right to raise Appointments Clause challenges on appeal. A
`conference call was held on December 11, 2019, between Mr. Torczon,
`counsel for Mylan Pharmaceuticals Inc. (“Mylan”); Mr. Wong, counsel for
`Pfizer Inc. (“Pfizer”); Messrs. Chang, Desai, Goetz, and Darby, counsel for
`Sanofi-Aventis Deutschland GmbH (“Patent Owner”); and Judges Browne,
`Jung, Gerstenblith, and Tartal.2 Petitioner provided a court reporter for the
`conference and a transcript of the conference is to be entered as an exhibit in
`the record of each case, reflecting additional details of the conference not
`described below.
`During the conference, Patent Owner indicated that its proposed
`one-page, non-argumentative statement would cite Arthrex. Upon
`questioning, Patent Owner was not able to provide a clear legal basis for
`authorizing its request, agreed that an argument based on the Appointments
`Clause was not made previously in any of the above-listed proceedings,3 and
`
`
`2 None of the above-listed proceedings have an expanded panel, but the
`judges constituting the panels of all of these proceedings participated in the
`conference call. During the conference call, the parties confirmed their
`understanding that the presence of four judges on the call did not mean there
`was an expanded panel in any of these proceedings.
`
`3 Patent Owner’s sole basis for its request was that it wants to “preserve” an
`argument directed to the Appointments Clause. As discussed, however,
`2
`
`
`
`
`
`IPR2018-01675, IPR2018-01676 (Patent 8,603,044 B2)
`IPR2018-01678, IPR2018-01679, IPR2019-00122 (Patent 8,992,486 B2)
`IPR2018-01680, IPR2018-01682 (Patent 9,526,844 B2)
`IPR2018-01684 (Patent 9,604,008 B2)
`
`agreed that Arthrex prompted Patent Owner’s request. Patent Owner also
`agreed that raising any other substantive argument in these proceedings after
`Patent Owner sur-replies had been filed would normally be considered new
`argument and, thus, deemed waived.
`Mr. Torczon, on behalf of both Mylan and Pfizer, responded, inter
`alia, that Patent Owner’s request would be a waste of resources, that a
`“non-argumentative” statement or reference to Arthrex is not an argument,
`that an argument based on the Appointments Clause was not previously
`made in these proceedings, that issues related to the Appointments Clause
`were well-known prior to Arthrex, that Patent Owner has not shown any
`good cause for additional briefing under Rule 42.5, and that Patent Owner’s
`request is an improper attempt to exceed the briefing-size limitations in these
`matters. Mylan and Pfizer also argued that they would potentially be
`prejudiced by Patent Owner’s request.
`Based on the parties’ arguments and representations, we deny Patent
`Owner’s request to file a one-page, non-argumentative statement in each of
`the above-listed proceedings. We agree with Mylan and Pfizer that good
`cause has not been shown to authorize additional briefing under Rule 42.5,
`and Patent Owner did not identify any clear legal basis for authorizing its
`request. We also agree with Mylan and Pfizer that the issues related to the
`Appointments Clause were previously identified and, thus, determine that
`Patent Owner could have, but chose not to, include an argument in its
`authorized briefing. Furthermore, the transcript of our teleconference that is
`
`because Patent Owner did not raise such an argument, there is no argument
`to “preserve.”
`
`
`
`3
`
`
`
`IPR2018-01675, IPR2018-01676 (Patent 8,603,044 B2)
`IPR2018-01678, IPR2018-01679, IPR2019-00122 (Patent 8,992,486 B2)
`IPR2018-01680, IPR2018-01682 (Patent 9,526,844 B2)
`IPR2018-01684 (Patent 9,604,008 B2)
`
`to be filed in the record of each of these cases will sufficiently reflect the
`parties’ positions regarding the concerns raised by Patent Owner with
`respect to Arthrex and the Appointments Clause, and therefore, good cause
`for additional briefing is not shown.
`
`
`ORDER
`In view of the foregoing, it is:
`ORDERED that Patent Owner’s request to file a one-page,
`non-argumentative statement in each of the above-listed proceedings
`concerning Arthrex and the Appointments Clause is denied.
`
`
`
`
`
`4
`
`
`
`IPR2018-01675, IPR2018-01676 (Patent 8,603,044 B2)
`IPR2018-01678, IPR2018-01679, IPR2019-00122 (Patent 8,992,486 B2)
`IPR2018-01680, IPR2018-01682 (Patent 9,526,844 B2)
`IPR2018-01684 (Patent 9,604,008 B2)
`
`For PETITIONER:
`
`Richard Torczon
`Wesley Derryberry
`Douglas Carsten
`Jeffrey Guise
`Nicole Stafford
`Lorelei Westin
`Arthur Dykhuis
`Tasha Thomas
`Elham Steiner
`Lora Green
`Jad Mills
`WILSON SONSINI GOODRICH & ROSATI
`rtorczon@wsgr.com
`wderryberry@wsgr.com
`dcarsten@wsgr.com
`jguise@wsgr.com
`nstafford@wsgr.com
`lwestin@wsgr.com
`adykhuis@wsgr.com
`tthomas@wsgr.com
`esteiner@wsgr.com
`lgreen@wsgr.com
`jmills@wsgr.com
`
`Jovial Wong
`WINSTON & STRAWN LLP
`PfizerIPRs@winston.com
`
`
`
`
`
`
`
`5
`
`
`
`IPR2018-01675, IPR2018-01676 (Patent 8,603,044 B2)
`IPR2018-01678, IPR2018-01679, IPR2019-00122 (Patent 8,992,486 B2)
`IPR2018-01680, IPR2018-01682 (Patent 9,526,844 B2)
`IPR2018-01684 (Patent 9,604,008 B2)
`
`For PATENT OWNER:
`
`Elizabeth Stotland Weiswasser
`Anish Desai
`Sudip Kundu
`Kathryn Kantha
`Adrian Percer
`Brian Chang
`William Ansley
`Matthew Sieger
`Robert Vlasis
`Anna Dwyer
`Andrew Gesior
`WEIL, GOTSHAL & MANGES LLP
`elizabeth.weiswasser@weil.com
`anish.desai@weil.com
`sudip.kundu@weil.com
`kathryn.kantha@weil.com
`adrian.percer@weil.com
`brian.chang@weil.com
`sutton.ansley@weil.com
`matthew.sieger@weil.com
`robert.vlasis@weil.com
`anna.dwyer@weil.com
`andrew.gesior@weil.com
`
`W. Karl Renner
`John Goetz
`Joshua Griswold
`Matthew Colvin
`Kenneth Darby, Jr.
`FISH & RICHARDSON P.C.
`PTABInbound@fr.com
`
`
`
`
`6
`
`
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