throbber
PTAB Conference Call
`
`Washington, DC
`
`2/5/2019
`Page 1
`
` 1 UNITED STATES PATENT AND TRADEMARK OFFICE
`
` 2 BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
` 3 - - - - - - - - - - - - - - - - - - - - - -
`
` 4
`
` 5 MYLAN PHARMACEUTICALS INC.
`
` 6 Petitioner,
`
` 7 -vs-
`
` 8 SANOFI-AVENTIS DEUTSCHLAND GmbH,
`
` 9 Patent Owner.
`
` 10 - - - - - - - - - - - - - - - - - - - - - -
`
` 11 Case IPR2018-01675
`
` 12 Case IPR2018-01676
`
` 13 Case IPR2018-01678
`
` 14 Case IPR2018-01680
`
` 15 - - - - - - - - - - - - - - - - - - - - - -
`
` 16
`
` 17 TELEPHONIC CONFERENCE
`
` 18 February 5, 2019
`
` 19
`
` 20 HELD BEFORE ADMINISTRATIVE PATENT JUDGES
`
` 21 BART A. GERSTENBLITH, JIM MAYBERRY, and HYUN J. JUNG
`
` 22
`
` 23 Reported by:
`
` 24 Michele E. French, RMR, CRR, CSR-3091
`
` 25 Job No. 83931
`
`1-800-FOR-DEPO
`
`Alderson Court Reporting
`
`www.AldersonReporting.com
`
`Sanofi Exhibit 2027.001
`Mylan v. Sanofi
`IPR2018-01676
`
`

`

`PTAB Conference Call
`
`Washington, DC
`
`2/5/2019
`Page 2
`
` 1
`
` 2
`
` 3
`
` 4
`
` 5 Telephonic Conference held before the
`
` 6 Honorable PTAB Administrative Judges Bart A.
`
` 7 Gerstenblith, Jim Mayberry, and Hyun J. Jung, on
`
` 8 Tuesday, February 5, 2019, commencing at 10:02 a.m.,
`
` 9 reported by Michele E. French, RMR, CRR, CSR-3091, a
`
` 10 Notary Public for the State of Michigan.
`
` 11
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` 12
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` 13
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` 14
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` 15
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` 16
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` 17
`
` 18
`
` 19
`
` 20
`
` 21
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` 22
`
` 23
`
` 24
`
` 25
`
`1-800-FOR-DEPO
`
`Alderson Court Reporting
`
`www.AldersonReporting.com
`
`Sanofi Exhibit 2027.002
`Mylan v. Sanofi
`IPR2018-01676
`
`

`

`PTAB Conference Call
`
` 1 APPEARANCES:
`
` 2
`
`Washington, DC
`
`2/5/2019
`Page 3
`
` 3 On behalf of the Petitioner (via telephone):
`
` 4 WILSON SONSINI GOODRICH & ROSATI
`
` 5 BY: RICHARD TORCZON, ESQUIRE
`
` 6 NICOLE W. STAFFORD, ESQUIRE
`
` 7 WESLEY DERRYBERRY, ESQUIRE
`
` 8 LORI P. WESTIN, ESQUIRE
`
` 9 1700 K Street NW
`
` 10 Washington, DC 20006
`
` 11 202.973-8811
`
` 12 rtorczon@wsgr.com
`
` 13 nstafford@wsgr.com
`
` 14 wderryberry@wsgr.com
`
` 15 lwestin@wsgr.com
`
` 16
`
` 17
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` 18
`
` 19
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` 20
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` 21
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` 22
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` 23
`
` 24
`
` 25 -- continued --
`
`1-800-FOR-DEPO
`
`Alderson Court Reporting
`
`www.AldersonReporting.com
`
`Sanofi Exhibit 2027.003
`Mylan v. Sanofi
`IPR2018-01676
`
`

`

`PTAB Conference Call
`
` 1 APPEARANCES:
`
` 2
`
`Washington, DC
`
`2/5/2019
`Page 4
`
` 3 On behalf of the Patent Owner (via telephone):
`
` 4 WEIL GOTSHAL & MANGES
`
` 5 BY: ANISH DESAI, ESQUIRE
`
` 6 ELIZABETH S. WEISWASSER, ESQUIRE
`
` 7 BRIAN CHANG, ESQUIRE
`
` 8 767 Fifth Avenue
`
` 9 New York, New York 10153-0119
`
` 10 212.310.8730
`
` 11 anish.desai@weil.com
`
` 12 elizabeth.weiswasser@weil.com
`
` 13 brian.chang@weil.com
`
` 14
`
` 15
`
` 16
`
` 17
`
` 18
`
` 19
`
` 20
`
` 21
`
` 22
`
` 23
`
` 24
`
` 25
`
`1-800-FOR-DEPO
`
`Alderson Court Reporting
`
`www.AldersonReporting.com
`
`Sanofi Exhibit 2027.004
`Mylan v. Sanofi
`IPR2018-01676
`
`

`

`PTAB Conference Call
`
`Washington, DC
`
`2/5/2019
`Page 5
`
` 1 Tuesday, February 5, 2019
`
` 2 10:02 a.m.
`
` 3 P R O C E E D I N G S
`
` 4 * * * * *
`
` 5 JUDGE GERSTENBLITH: Good morning
`
` 6 everyone. This is Judge Gerstenblith. With me on
`
` 7 the line are Judges Mayberry and Jung. This is a
`
` 8 conference call in three related cases:
`
` 9 IPR2018-01675, '01676, and '01678.
`
` 10 Let's take a quick roll call. First, who
`
` 11 do we have on the line for Petitioner, please?
`
` 12 MR. TORCZON: Your Honor, this is Richard
`
` 13 Torczon. And I have on the line with me Nicole
`
` 14 Stafford, Wesley Derryberry, and Lori Westin.
`
` 15 JUDGE GERSTENBLITH: Thank you very much.
`
` 16 And who do we have on the line for Patent
`
` 17 Owner?
`
` 18 MR. DESAI: Hi, Your Honor. This is
`
` 19 Anish Desai, for Patent Owner. Also on the call
`
` 20 with me are Elizabeth Weiswasser and Brian Chang.
`
` 21 JUDGE GERSTENBLITH: Okay. Excellent.
`
` 22 And I believe I saw -- is it correct, Mr. Desai,
`
` 23 that you arranged for a court reporter?
`
` 24 MR. DESAI: We do. There is a court
`
` 25 reporter on the line.
`
`1-800-FOR-DEPO
`
`Alderson Court Reporting
`
`www.AldersonReporting.com
`
`Sanofi Exhibit 2027.005
`Mylan v. Sanofi
`IPR2018-01676
`
`

`

`PTAB Conference Call
`
`Washington, DC
`
`2/5/2019
`Page 6
`
` 1 JUDGE GERSTENBLITH: Okay. Excellent.
`
` 2 So before I forget, I'll just say the
`
` 3 same thing that I think we did the last time. Once
`
` 4 we are finished with the call and you have a
`
` 5 transcript, please share it with Petitioner. And
`
` 6 once you both agree with it, file it as an exhibit
`
` 7 in each of the three cases.
`
` 8 MR. DESAI: Understood, Your Honor.
`
` 9 JUDGE GERSTENBLITH: All right. And I
`
` 10 haven't usually had to say this, but I had this come
`
` 11 up in a different case. We expect typical
`
` 12 turnaround, you know, to be within a week or two, to
`
` 13 deal with the transcript to come in. Sometimes
`
` 14 there's reasons that it can take longer, but, you
`
` 15 know, we're not looking at like a month or something
`
` 16 longer than that, absent some type of unusual
`
` 17 circumstance.
`
` 18 Let's see here. So this call was
`
` 19 requested by Patent Owner. So Mr. Desai, I give you
`
` 20 the floor.
`
` 21 MR. DESAI: Thank you, Your Honor.
`
` 22 So the purpose of our call today was to
`
` 23 address authorization for a sur-reply and primarily
`
` 24 to address certain arguments in Patent Owner's reply
`
` 25 brief on the 314 issue that, you know, we don't
`
`1-800-FOR-DEPO
`
`Alderson Court Reporting
`
`www.AldersonReporting.com
`
`Sanofi Exhibit 2027.006
`Mylan v. Sanofi
`IPR2018-01676
`
`

`

`PTAB Conference Call
`
`Washington, DC
`
` 1 think we could have foreseen.
`
`2/5/2019
`Page 7
`
` 2 The first issue we would address is
`
` 3 Petitioner's argument that the Board lacks
`
` 4 discretion to deny pursuant to 314, and its reliance
`
` 5 on the Click-to-Call case.
`
` 6 We believe the Board's discretion to deny
`
` 7 for reasons other than failure to show a reasonable
`
` 8 likelihood of success is well established. There's
`
` 9 the Cuozzo case that clearly references the
`
` 10 discretion.
`
` 11 And the Click-to-Call case we think is
`
` 12 clearly not applicable. It doesn't even deal with
`
` 13 discretionary denial of IPR under 314. It deals
`
` 14 with discretionary institution of a petition that is
`
` 15 untimely under 315(b). So that would be the first
`
` 16 issue.
`
` 17 The second issue we would address is
`
` 18 Petitioner's argument that discretionary denial
`
` 19 under 314 in these circumstances would violate the
`
` 20 APA. We believe this argument has no merit.
`
` 21 The Trial Practice Guide update and all
`
` 22 Board decisions are published electronically. The
`
` 23 Board routinely considers factors relating to
`
` 24 parallel litigation when deciding whether to
`
` 25 exercise discretion under 314. And, you know, there
`
`1-800-FOR-DEPO
`
`Alderson Court Reporting
`
`www.AldersonReporting.com
`
`Sanofi Exhibit 2027.007
`Mylan v. Sanofi
`IPR2018-01676
`
`

`

`PTAB Conference Call
`
`Washington, DC
`
`2/5/2019
`Page 8
`
` 1 is also the NHA -- NHK Spring case and some other
`
` 2 decisions that clearly establish this discretion
`
` 3 that the Board has.
`
` 4 The third thing we would address would be
`
` 5 Petitioner's argument that exercising discretion in
`
` 6 this case would amount to shortening of the one-year
`
` 7 statutory period under 315(b).
`
` 8 Again, we did not -- the Patent Owner did
`
` 9 not assert that the petition should be denied solely
`
` 10 because it was filed on the eve of the statutory
`
` 11 filing period. Rather, the petition should be
`
` 12 denied because the particular facts and
`
` 13 circumstances of this case, coupled with the timing
`
` 14 of the IPR filing, results in a strategic advantage
`
` 15 to Petitioner and inefficient duplicative litigation
`
` 16 on the same grounds in multiple proceedings. So
`
` 17 it's not just the fact that it was filed on the eve
`
` 18 of the statutory period.
`
` 19 And then, finally, we would address
`
` 20 Petitioner's argument that they are not asserting
`
` 21 the same grounds in both the IPRs and the District
`
` 22 Court litigation. I don't think there is any
`
` 23 reasonable dispute here that the Burroughs grounds
`
` 24 or the other grounds that are presented in the IPR
`
` 25 petitions are also in Petitioner's District Court
`
`1-800-FOR-DEPO
`
`Alderson Court Reporting
`
`www.AldersonReporting.com
`
`Sanofi Exhibit 2027.008
`Mylan v. Sanofi
`IPR2018-01676
`
`

`

`PTAB Conference Call
`
`Washington, DC
`
`2/5/2019
`Page 9
`
` 1 invalidity contentions. There's no dispute. They
`
` 2 are. And we don't believe that the reasoning of NHK
`
` 3 Spring only applies when the District Court
`
` 4 invalidity arguments consist of only the IPR grounds
`
` 5 and nothing more.
`
` 6 That was certainly not the case in NHK
`
` 7 Spring. The District Court grounds there included
`
` 8 invalidity based on other prior uses as well as
`
` 9 indefiniteness. The entire inefficiency concern
`
` 10 here is triggered by the fact that there are overlap
`
` 11 in the grounds. In other words, the grounds that
`
` 12 are being asserted in the IPR proceeding are also in
`
` 13 Mylan's District Court contentions.
`
` 14 So those are the issues we would like to
`
` 15 address in a -- I think a five-page sur-reply.
`
` 16 JUDGE GERSTENBLITH: Okay.
`
` 17 Let's hear from -- Mr. Torczon, are you
`
` 18 speaking for Petitioner?
`
` 19 MR. TORCZON: I am, Your Honor.
`
` 20 JUDGE GERSTENBLITH: Okay.
`
` 21 MR. TORCZON: So, actually, Mr. Desai
`
` 22 anticipated one of the points I was going to make,
`
` 23 which is, if the Board wants to authorize a reply,
`
` 24 we believe that a shorter reply is appropriate.
`
` 25 JUDGE GERSTENBLITH: I'm sorry. I don't
`
`1-800-FOR-DEPO
`
`Alderson Court Reporting
`
`www.AldersonReporting.com
`
`Sanofi Exhibit 2027.009
`Mylan v. Sanofi
`IPR2018-01676
`
`

`

`PTAB Conference Call
`
`Washington, DC
`
`2/5/2019
`Page 10
`
` 1 mean to cut you off. Shorter than five pages?
`
` 2 MR. TORCZON: Just -- I was going to
`
` 3 point out that typically you offer about half the
`
` 4 volume, so five pages would be appropriate. In
`
` 5 fact, I think that's consistent with Rule 42.24(c).
`
` 6 So -- but that's -- that's sort of the second point.
`
` 7 The first point I would like to make is
`
` 8 just that while Sanofi's response was relying on
`
` 9 authorities that came out after the petition filing
`
` 10 date, or were not binding, we just relied on
`
` 11 pre-petition, binding authorities. We think that
`
` 12 they could have anticipated any of those arguments.
`
` 13 So we understand if the Board wants to see those
`
` 14 arguments addressed, but we just note that they
`
` 15 actually should have addressed those in the
`
` 16 response.
`
` 17 I think I would like to address
`
` 18 specifically the last point that Mr. Desai made,
`
` 19 though, which is the same grounds argument.
`
` 20 I would note that we point out in our
`
` 21 paper that they actually haven't provided the
`
` 22 evidence to support that position. And while he
`
` 23 says that there's no reasonable basis to deny or
`
` 24 disagree, in fact, we do.
`
` 25 So while I don't -- if he wants to make
`
`1-800-FOR-DEPO
`
`Alderson Court Reporting
`
`www.AldersonReporting.com
`
`Sanofi Exhibit 2027.010
`Mylan v. Sanofi
`IPR2018-01676
`
`

`

`PTAB Conference Call
`
`Washington, DC
`
`2/5/2019
`Page 11
`
` 1 the point that he doesn't think there's a reasonable
`
` 2 basis, that's fine, but we would object to any
`
` 3 expansion of the record at this point to put in
`
` 4 evidence that should have come in with the -- with
`
` 5 the response.
`
` 6 JUDGE GERSTENBLITH: Okay. Let me -- let
`
` 7 me make sure I understand exactly the question about
`
` 8 the grounds as compared to what's happening in the
`
` 9 District Court.
`
` 10 And to start with, I'll start with --
`
` 11 Mr. Torczon, I'll start with you. Let me see here.
`
` 12 Oh, you know what? Let me -- let me back up to one
`
` 13 thing.
`
` 14 In the '1675 case -- this is a
`
` 15 housekeeping matter, before I forget to raise this.
`
` 16 In the '1675 case, there are three documents showing
`
` 17 as a petition: Paper 2, Paper 3, and Paper 4.
`
` 18 What I would like is somebody from
`
` 19 Petitioner's side to take a look and to email the
`
` 20 trial's email address and tell us which ones we can
`
` 21 expunge so that there's no confusion about which one
`
` 22 is the actual petition that we're using here. It
`
` 23 may all be the same document.
`
` 24 Any question about that piece?
`
` 25 MR. TORCZON: No, Your Honor. That's
`
`1-800-FOR-DEPO
`
`Alderson Court Reporting
`
`www.AldersonReporting.com
`
`Sanofi Exhibit 2027.011
`Mylan v. Sanofi
`IPR2018-01676
`
`

`

`PTAB Conference Call
`
` 1 fine.
`
`Washington, DC
`
`2/5/2019
`Page 12
`
` 2 JUDGE GERSTENBLITH: Let me just look at
`
` 3 something else real quickly to see if we have this.
`
` 4 Looks like we don't have this issue in the other.
`
` 5 MR. TORCZON: We can take a look and make
`
` 6 sure that it's not an issue in the other cases, and
`
` 7 if it is, we'll do the same thing.
`
` 8 JUDGE GERSTENBLITH: I don't see it
`
` 9 there, but '1675 has that -- has that issue, so that
`
` 10 would be good to get cleaned up.
`
` 11 Okay. So what is -- what is the ground
`
` 12 in the petition that we're talking about? There's
`
` 13 only one ground raised that four claims -- this is
`
` 14 in '1675, specifically, that four claims were
`
` 15 obvious over Burroughs alone?
`
` 16 MR. TORCZON: Right.
`
` 17 JUDGE GERSTENBLITH: And Patent Owner
`
` 18 says that that specific invalidity position in
`
` 19 District Court was raised -- is being raised by
`
` 20 Mylan.
`
` 21 Is that -- is that what you understand,
`
` 22 Mr. Torczon, to be Patent Owner's argument?
`
` 23 MR. TORCZON: Yes, Your Honor.
`
` 24 JUDGE GERSTENBLITH: Okay. And does
`
` 25 Mylan raise a 103 challenge to these four claims in
`
`1-800-FOR-DEPO
`
`Alderson Court Reporting
`
`www.AldersonReporting.com
`
`Sanofi Exhibit 2027.012
`Mylan v. Sanofi
`IPR2018-01676
`
`

`

`PTAB Conference Call
`
`Washington, DC
`
`2/5/2019
`Page 13
`
` 1 the District Court case, based --
`
` 2 MR. TORCZON: Yes. All of the -- all of
`
` 3 the claims that we have challenged in all of these
`
` 4 petitions have been challenged in the District Court
`
` 5 as well.
`
` 6 JUDGE GERSTENBLITH: Okay. And I
`
` 7 apologize for speaking at the same time. But I was
`
` 8 going to say, and the challenge in the District
`
` 9 Court is 103 based on Burroughs alone?
`
` 10 MR. TORCZON: The contentions are very
`
` 11 high-level contentions that assert multiple grounds,
`
` 12 and there's nothing like this detailed ground being
`
` 13 asserted.
`
` 14 And as a consequence, although we
`
` 15 understand Patent Owner argues that we got an
`
` 16 advantage by seeing their response to it, which
`
` 17 wasn't filed in this record, their response is
`
` 18 similarly a high-level response, and neither of the
`
` 19 arguments from either of the parties have been
`
` 20 developed anywhere close to the degree that they've
`
` 21 been developed here.
`
` 22 So the suggestion that, one, that they're
`
` 23 -- the same argument is already before the Court,
`
` 24 which is the operative fact; and, two, that we have
`
` 25 an advantage by getting a detailed look at their
`
`1-800-FOR-DEPO
`
`Alderson Court Reporting
`
`www.AldersonReporting.com
`
`Sanofi Exhibit 2027.013
`Mylan v. Sanofi
`IPR2018-01676
`
`

`

`PTAB Conference Call
`
`Washington, DC
`
`2/5/2019
`Page 14
`
` 1 response, which would also be an operative fact, are
`
` 2 not demonstrated in this record and as of this date
`
` 3 are still not true in the District Court.
`
` 4 JUDGE GERSTENBLITH: Okay. But what I --
`
` 5 my specific question was in Mylan's contentions in
`
` 6 the District Court, does Mylan raise a challenge to
`
` 7 these -- at least these four claims based on
`
` 8 Burroughs alone under 103?
`
` 9 MR. TORCZON: Yes.
`
` 10 JUDGE GERSTENBLITH: Okay. So we can all
`
` 11 agree that the same ground that's in the '1675 case
`
` 12 at least is also at this moment of time an
`
` 13 invalidity contention in the District Court raised
`
` 14 by Mylan? Is that a correct statement?
`
` 15 MR. TORCZON: Yes.
`
` 16 JUDGE GERSTENBLITH: Okay. We have a
`
` 17 difference of opinion or difference of the
`
` 18 significance of that between Patent Owner and
`
` 19 Petitioner's position primarily based on the degree
`
` 20 to which the cases have proceeded.
`
` 21 What I understand you to be saying is
`
` 22 that in the District Court all that's there so far
`
` 23 is the invalidity contention and nothing has gone
`
` 24 beyond that? Is that correct?
`
` 25 MR. TORCZON: I'd have to check with the
`
`1-800-FOR-DEPO
`
`Alderson Court Reporting
`
`www.AldersonReporting.com
`
`Sanofi Exhibit 2027.014
`Mylan v. Sanofi
`IPR2018-01676
`
`

`

`PTAB Conference Call
`
`Washington, DC
`
`2/5/2019
`Page 15
`
` 1 litigators to be absolutely sure, but that's my
`
` 2 understanding, is that we are currently not advanced
`
` 3 past that stage on the issues.
`
` 4 JUDGE GERSTENBLITH: And I apologize, I
`
` 5 didn't look at this ahead. This is in -- these are
`
` 6 in Delaware?
`
` 7 MR. DESAI: New Jersey.
`
` 8 MR. TORCZON: New Jersey.
`
` 9 JUDGE GERSTENBLITH: New Jersey. Okay.
`
` 10 And were the invalidity contentions filed
`
` 11 in the '1675 case?
`
` 12 MR. TORCZON: I believe that Sanofi filed
`
` 13 Mylan's contentions. I don't think they filed their
`
` 14 response.
`
` 15 JUDGE GERSTENBLITH: Okay. Mr. Desai,
`
` 16 did you file Mylan's contentions in the '1675 case?
`
` 17 MR. DESAI: Yeah. I'm looking at the
`
` 18 docket right now. It looks like there are exhibits
`
` 19 2008, 2009, 2010, and 2011. And 2011 appears to be
`
` 20 our responses to Mylan's contentions. They're not
`
` 21 the complete set. I think they're excerpts, because
`
` 22 these are -- you know, these contentions are I think
`
` 23 thousands of pages long, so we excerpted them to the
`
` 24 relevant portions.
`
` 25 JUDGE GERSTENBLITH: So which one of
`
`1-800-FOR-DEPO
`
`Alderson Court Reporting
`
`www.AldersonReporting.com
`
`Sanofi Exhibit 2027.015
`Mylan v. Sanofi
`IPR2018-01676
`
`

`

`PTAB Conference Call
`
`Washington, DC
`
`2/5/2019
`Page 16
`
` 1 these three exhibits would give me a good idea of
`
` 2 what the invalidity contentions look like based on
`
` 3 Burroughs at the moment -- at this moment?
`
` 4 MR. DESAI: I'm pulling it up real quick,
`
` 5 Your Honor. I can tell you in a second.
`
` 6 I believe it would be Exhibit 2010.
`
` 7 Yeah. It's a chart that lists out Burroughs for
`
` 8 each of the references -- for each of the
`
` 9 limitations for Claim 11 of the '044 patent, for
`
` 10 example.
`
` 11 JUDGE GERSTENBLITH: Thank you.
`
` 12 So just to recap, Mr. Desai, I heard you
`
` 13 raise -- I put them into four groups, or four things
`
` 14 that you would like to -- Patent Owner would like to
`
` 15 address in a sur-reply, which is generally Board
`
` 16 discretion to deny; an APA question and denial under
`
` 17 314; a point about whether and to what extent here
`
` 18 exercising discretion would shorten the 315(b) bar;
`
` 19 and the fourth being I guess a more factual question
`
` 20 than perhaps the others, which is the extent to
`
` 21 which the same grounds or overlapping grounds are in
`
` 22 the District Court case as compared to here. Did
`
` 23 I -- did I get that down correctly?
`
` 24 MR. DESAI: That's right. The first one
`
` 25 I would just add is also about the Click-to-Call
`
`1-800-FOR-DEPO
`
`Alderson Court Reporting
`
`www.AldersonReporting.com
`
`Sanofi Exhibit 2027.016
`Mylan v. Sanofi
`IPR2018-01676
`
`

`

`PTAB Conference Call
`
`Washington, DC
`
`2/5/2019
`Page 17
`
` 1 case that Mylan relies on. But, yeah, that's
`
` 2 correct. You listed those out correctly.
`
` 3 JUDGE GERSTENBLITH: Okay. So we're
`
` 4 fully -- let me do this. Does anybody want to say
`
` 5 anything else before -- I want to put you on hold
`
` 6 for a minute to confer with the panel, but I just
`
` 7 want to give anybody else an opportunity to say
`
` 8 anything about whether we would or would not
`
` 9 authorize a sur-reply and also the size of it.
`
` 10 MR. DESAI: I could add something
`
` 11 quickly, Your Honor, which is that I think the
`
` 12 fourth issue, about the same grounds, I think -- to
`
` 13 be honest, I think the questions from Your Honor
`
` 14 have sort of -- have clarified that, and Mylan has
`
` 15 essentially admitted that they are the same, so I
`
` 16 don't know that we need a sur-reply on that anymore.
`
` 17 JUDGE GERSTENBLITH: Okay.
`
` 18 Mr. Torczon, did you want to say
`
` 19 something?
`
` 20 MR. TORCZON: I would disagree with his
`
` 21 characterization. But I also, just as a
`
` 22 housekeeping matter, Your Honor named four
`
` 23 proceedings at the beginning of the call, and I
`
` 24 believe we filed a reply in the '01680 case as well.
`
` 25 So just -- you know, I assume that Mr. Desai's or
`
`1-800-FOR-DEPO
`
`Alderson Court Reporting
`
`www.AldersonReporting.com
`
`Sanofi Exhibit 2027.017
`Mylan v. Sanofi
`IPR2018-01676
`
`

`

`PTAB Conference Call
`
`Washington, DC
`
`2/5/2019
`Page 18
`
` 1 Sanofi's request covers that case as well.
`
` 2 JUDGE GERSTENBLITH: Okay. So I only
`
` 3 mentioned three cases because that's what was listed
`
` 4 in the email that we received.
`
` 5 Mr. Desai, are you also requesting this
`
` 6 for the fourth case? And, if so, what is the number
`
` 7 of that case?
`
` 8 MR. DESAI: I think the -- I think the
`
` 9 reply in the fourth case was filed after we
`
` 10 submitted our email requesting authorization for a
`
` 11 sur-reply, which is why it wasn't included, and so
`
` 12 we haven't. But, yeah, we are.
`
` 13 I don't -- honestly, at my fingertips I
`
` 14 don't have the fourth case number, but I believe it
`
` 15 was what Mr. --
`
` 16 JUDGE GERSTENBLITH: Let me -- let me
`
` 17 interrupt you for a second. And I apologize,
`
` 18 because it makes it tough for the court reporter.
`
` 19 The fourth case I believe we are talking
`
` 20 about IPR2018-01680, which, according to the docket,
`
` 21 Mylan filed a reply on January 30, and we received
`
` 22 your email on February 1.
`
` 23 So I'm not looking to expand your
`
` 24 request, but, you know, it would be nice to know, so
`
` 25 we don't have to do this all over again, if, you
`
`1-800-FOR-DEPO
`
`Alderson Court Reporting
`
`www.AldersonReporting.com
`
`Sanofi Exhibit 2027.018
`Mylan v. Sanofi
`IPR2018-01676
`
`

`

`PTAB Conference Call
`
`Washington, DC
`
`2/5/2019
`Page 19
`
` 1 know, you're seeking this for four cases. But if
`
` 2 you don't know, then you don't know.
`
` 3 MR. DESAI: No. Your Honor, we are -- we
`
` 4 are seeking a sur-reply to address this issue in all
`
` 5 the cases that Mylan has filed a reply. So the
`
` 6 answer is yes, we are.
`
` 7 JUDGE GERSTENBLITH: Okay. So we'll
`
` 8 consider this as your request as including all four
`
` 9 cases.
`
` 10 Is there anything else before the panel
`
` 11 confers?
`
` 12 Mr. Torczon, anything from your side?
`
` 13 MR. TORCZON: No, Your Honor.
`
` 14 JUDGE GERSTENBLITH: Okay.
`
` 15 Mr. Desai?
`
` 16 MR. DESAI: Nothing more, Your Honor.
`
` 17 Thank you.
`
` 18 JUDGE GERSTENBLITH: Okay. Please hold
`
` 19 the line, and we'll be right back in a few minutes.
`
` 20 (Recess - 10:20 a.m. to 10:23 a.m.)
`
` 21 JUDGE GERSTENBLITH: Thank you all for
`
` 22 holding.
`
` 23 I was hearing some dialogue, so I'm
`
` 24 assuming that both Mr. Torczon -- are you still
`
` 25 there?
`
`1-800-FOR-DEPO
`
`Alderson Court Reporting
`
`www.AldersonReporting.com
`
`Sanofi Exhibit 2027.019
`Mylan v. Sanofi
`IPR2018-01676
`
`

`

`PTAB Conference Call
`
`Washington, DC
`
`2/5/2019
`Page 20
`
` 1 MR. TORCZON: I am, Your Honor.
`
` 2 JUDGE GERSTENBLITH: And Mr. Desai, are
`
` 3 you still there?
`
` 4 MR. DESAI: Yes, Your Honor.
`
` 5 JUDGE GERSTENBLITH: Okay. Excellent.
`
` 6 So we're going to authorize the sur-reply
`
` 7 in each of the four cases. I understand that you
`
` 8 asked for five pages, and that's reasonable, so
`
` 9 we're going to allow up to five pages.
`
` 10 I don't want to color which points you
`
` 11 emphasize more or spend more time with. And I
`
` 12 confess that I -- at this point, I was only able to
`
` 13 skim through some of the positions in the reply.
`
` 14 But we are less concerned, I would say, in terms of
`
` 15 emphasis, on what the scope of our discretion is, as
`
` 16 opposed to the specific facts in the cases here.
`
` 17 So what I mean by that, and one of the
`
` 18 interesting pieces of this, at least to me, is the
`
` 19 intersection of Hatch-Waxman with our proceeding
`
` 20 here and how and what way, if at all, that issue
`
` 21 bears on what we are doing here.
`
` 22 I'm less concerned about knowing that I
`
` 23 have discretion to, you know, deny under 314, as
`
` 24 others have in the past. I'm also less concerned
`
` 25 with whether that means I'm shortening a 315(b)
`
`1-800-FOR-DEPO
`
`Alderson Court Reporting
`
`www.AldersonReporting.com
`
`Sanofi Exhibit 2027.020
`Mylan v. Sanofi
`IPR2018-01676
`
`

`

`PTAB Conference Call
`
`Washington, DC
`
`2/5/2019
`Page 21
`
` 1 issue. But, again, if Patent Owner wants to base
`
` 2 its sur-reply on addressing those points, that's, of
`
` 3 course, completely fine.
`
` 4 Of the overlapping grounds, you know, we
`
` 5 looked at that briefly just now. But, again, there
`
` 6 are, I'm sure, some factual issues there that I
`
` 7 wouldn't -- I wouldn't write off in assuming that
`
` 8 everybody agrees that it's the same issues being
`
` 9 raised there that are here.
`
` 10 And I don't want to express my -- I don't
`
` 11 want to say my personal view, but in terms of what
`
` 12 -- at least as of now what seems to be the most
`
` 13 interesting, again, but it's the specifics of this
`
` 14 case factually, both in terms of what's happening in
`
` 15 the District Court as well as the Hatch-Waxman
`
` 16 intersection, as opposed to whether we have
`
` 17 discretion or not.
`
` 18 I don't know if that helped or hurt, or
`
` 19 none of the above, but just to offer some thoughts
`
` 20 in terms of moving forward.
`
` 21 In terms of moving forward, are there any
`
` 22 questions about what we -- oh, in terms of timing,
`
` 23 we didn't discuss timing.
`
` 24 What's the -- Mr. Desai, what's the
`
` 25 timing for Patent Owner for this?
`
`1-800-FOR-DEPO
`
`Alderson Court Reporting
`
`www.AldersonReporting.com
`
`Sanofi Exhibit 2027.021
`Mylan v. Sanofi
`IPR2018-01676
`
`

`

`PTAB Conference Call
`
`Washington, DC
`
`2/5/2019
`Page 22
`
` 1 MR. DESAI: I think we -- if we could
`
` 2 file this on Monday next week, that would be fine.
`
` 3 JUDGE GERSTENBLITH: Okay. So that
`
` 4 Monday is February 11th?
`
` 5 MR. DESAI: Yeah.
`
` 6 JUDGE GERSTENBLITH: All right. Does
`
` 7 that mean everybody is going -- you're going to keep
`
` 8 all the paralegals there over the weekend?
`
` 9 MR. DESAI: I won't do that, no.
`
` 10 JUDGE GERSTENBLITH: If it means that,
`
` 11 then we'll make it the 12th.
`
` 12 MR. DESAI: Oh, we'll take the 12th.
`
` 13 JUDGE GERSTENBLITH: Make it the 12th so
`
` 14 that we're not having people working on Saturday and
`
` 15 Sunday, if possible.
`
` 16 MR. DESAI: That works great for me.
`
` 17 JUDGE GERSTENBLITH: Okay. Anything
`
` 18 else, Mr. Desai, about what I said here that you
`
` 19 either have a question about or need clarification?
`
` 20 MR. DESAI: No. And thank you. It was
`
` 21 very helpful to hear your thoughts on what we could
`
` 22 potentially address in the sur-reply. Thank you.
`
` 23 JUDGE GERSTENBLITH: Okay.
`
` 24 Mr. Torczon, any questions about what I
`
` 25 addressed here?
`
`1-800-FOR-DEPO
`
`Alderson Court Reporting
`
`www.AldersonReporting.com
`
`Sanofi Exhibit 2027.022
`Mylan v. Sanofi
`IPR2018-01676
`
`

`

`PTAB Conference Call
`
`Washington, DC
`
`2/5/2019
`Page 23
`
` 1 MR. TORCZON: No, Your Honor.
`
` 2 JUDGE GERSTENBLITH: Okay.
`
` 3 Any questions about anything else with
`
` 4 these cases, Mr. Desai?
`
` 5 MR. DESAI: No, Your Honor.
`
` 6 JUDGE GERSTENBLITH: Okay.
`
` 7 Anything else, Mr. Torczon?
`
` 8 MR. TORCZON: Not at present, Your Honor.
`
` 9 JUDGE GERSTENBLITH: Okay. With that, we
`
` 10 are adjourned. Thank you both very much. Have a
`
` 11 great day.
`
` 12 MR. DESAI: Thank you.
`
` 13 MR. TORCZON: Thanks.
`
` 14 (Teleconference adjourned at 10:27 a.m.)
`
` 15
`
` 16
`
` 17
`
` 18
`
` 19
`
` 20
`
` 21
`
` 22
`
` 23
`
` 24
`
` 25
`
`1-800-FOR-DEPO
`
`Alderson Court Reporting
`
`www.AldersonReporting.com
`
`Sanofi Exhibit 2027.023
`Mylan v. Sanofi
`IPR2018-01676
`
`

`

`CERTIFICATE OF NOTARY
`
`STATE OF MICHIGAN
`
`COUNTY OF INGRAM
`
`)
`
`J
`
`I, MICHELE E. FRENCH, a Notary Public in and for the
`
`above county and state, do hereby certify that the
`
`above deposition was taken before me at the time and
`
`place hereinbefore set forth;
`
`that the witness was
`
`by me first duly sworn to testify to the truth, and
`
`nothing but the truth;
`
`that the foregoing questions
`
`asked and answers made by the witness were duly
`
`recorded by me stenographically and reduced to
`
`computer transcription;
`
`that this is a true, full
`
`and correct transcript of my stenographic notes so
`
`taken; and that I am not related to, nor of counsel
`
`to either party nor interested in the event of this
`
`cause .
`
`10
`
`11
`
`12
`
`13
`
`14
`
`15
`
`16
`
`17
`
`18
`
`19
`
`20
`
`Dated:
`
`21
`
`22
`
`23
`
`24
`
`25
`
`_Mgmimgé___
`
`Michele E- French CSR- 3091, RPR, RMR,
`
`RR
`
`Notary Public,
`
`Ingham County, Michigan
`
`My Commission expires: December 2, 2023
`
`Sanofi Exhibit 2027.024
`
`Mylan v. Sanofi
`lPR2018-01676
`
`Sanofi Exhibit 2027.024
`Mylan v. Sanofi
`IPR2018-01676
`
`

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