Trials@uspto.gov
`571-272-7822
`
`Paper 61
`Date: November 21, 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.
`____________
`
`IPR2018-01676 (Patent 8,603,044 B2)
`IPR2018-01678, IPR2018-01679 (Patent 8,992,486 B2)
`IPR2018-01680, IPR2018-01682 (Patent 9,526,844 B2)1
`____________
`
`Before 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 IPR2019-00978, IPR2019-00980, IPR2019-00981, IPR2019-
`01022, and IPR2019-01023, has been joined as a petitioner in these
`proceedings.
`
`
`571-272-7822
`
`Paper 61
`Date: November 21, 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.
`____________
`
`IPR2018-01676 (Patent 8,603,044 B2)
`IPR2018-01678, IPR2018-01679 (Patent 8,992,486 B2)
`IPR2018-01680, IPR2018-01682 (Patent 9,526,844 B2)1
`____________
`
`Before 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 IPR2019-00978, IPR2019-00980, IPR2019-00981, IPR2019-
`01022, and IPR2019-01023, has been joined as a petitioner in these
`proceedings.
`
`
`
`IPR2018-01676 (Patent 8,603,044 B2)
`IPR2018-01678, IPR2018-01679 (Patent 8,992,486 B2)
`IPR2018-01680, IPR2018-01682 (Patent 9,526,844 B2)
`
`
`
`In an email to the Board, Petitioner requested to strike Patent Owner’s
`Exhibit 2319 filed in all of the above-listed proceedings. Ex. 3002 in
`IPR2018-01676, IPR2018-01678, IPR2018-01680; Ex. 3001 in IPR2018-
`01679, IPR2018-01682. Petitioner also requested to strike portions of Patent
`Owner’s sur-replies filed in IPR2018-01676, IPR2018-01678, and IPR2018-
`01682 that cite Exhibit 2319. Ex. 3002 in IPR2018-01676, IPR2018-01678,
`IPR2018-01680; Ex. 3001 in IPR2018-01679, IPR2018-01682. In
`particular, Petitioner requested to strike portions of page 7 of the sur-reply
`filed in IPR2018-01676, page 6 of the sur-reply filed in IPR2018-01678, and
`page 9 of the sur-reply filed in IPR2018-01682. Ex. 3002 in IPR2018-
`01676, IPR2018-01678, IPR2018-01680; Ex. 3001 in IPR2018-01679,
`IPR2018-01682.
`Patent Owner, in a second email, agreed to expunge Exhibit 2319 in
`each of the above-listed proceedings. Ex. 3002 in IPR2018-01676,
`IPR2018-01678, IPR2018-01680; Ex. 3001 in IPR2018-01679, IPR2018-
`01682. In a third email, Patent Owner indicated that the parties could not
`reach agreement on setting a date for the deposition of Patent Owner’s
`declarant, Dr. Slocum.
`A conference call was held on November 18, 2019, between counsel
`for Mylan Pharmaceuticals Inc.; counsel for Pfizer Inc.; counsel for Sanofi-
`Aventis Deutschland GmbH; and Judges Jung, Gerstenblith, and Tartal to
`discuss each request.
`Petitioner provided a court reporter and stated that the transcript will
`be filed as soon as it is available. The transcript will reflect additional
`details of the conference not described below.
`
`
`
`2
`
`
`
`IPR2018-01676 (Patent 8,603,044 B2)
`IPR2018-01678, IPR2018-01679 (Patent 8,992,486 B2)
`IPR2018-01680, IPR2018-01682 (Patent 9,526,844 B2)
`
`
`
`During the conference, the parties confirmed that Exhibit 2319 was
`filed in all of the above-listed proceedings but only cited in Patent Owner’s
`sur-replies filed in IPR2018-01676, IPR2018-01678, and IPR2018-01682.
`The parties also indicated that Petitioner had objected to certain exhibits
`showing an animation because the exhibits allegedly were not authenticated
`(see Paper 332), and Patent Owner had served a declaration in July, in
`accordance with 37 C.F.R. § 42.64(b)(2), in response to the objection. The
`parties represent that the declaration served in July was filed as Exhibit
`2319.
`
`Petitioner identified the following discussion in each sur-reply as the
`material it seeks to strike:
`Finally, Petitioner argues that while Mr. Veasey played a role in
`the development of the analytical and physical models, “Sanofi
`did not present Mr. Veasey as a witness in this case.” Reply, 13.
`Sanofi, however, provided a declaration from Mr. Veasey in
`which he discussed the creation of an animation explaining the
`physical model (Exhibit 2211). EX2319 ¶5. Petitioner chose not
`to depose Mr. Veasey and chose not to seek his testimony under
`35 U.S.C. § 24.
`IPR2018-01676, Paper 56, 7.3 Petitioner expressed concern that these
`statements could be interpreted to mean that Petitioner chose not to depose
`Mr. Veasey for matters other than authentication, and thus, seeks to strike
`
`
`2 Paper numbers refer to IPR2018-01676. Corresponding papers were filed
`in IPR2018-01678 and IPR2018-01682.
`3 Each sur-reply contains statements either identical or similar to the quoted
`material above.
`
`
`
`3
`
`
`
`IPR2018-01676 (Patent 8,603,044 B2)
`IPR2018-01678, IPR2018-01679 (Patent 8,992,486 B2)
`IPR2018-01680, IPR2018-01682 (Patent 9,526,844 B2)
`
`
`the statements. Patent Owner indicated that the statements are properly
`responsive to an argument made by Petitioner in its replies.
`Exhibit 2319 will be expunged from all of the above-listed
`proceedings, as agreed upon by the parties. We further find it appropriate to
`strike the citations to Exhibit 2319 from each sur-reply of Patent Owner in
`IPR2018-01676, IPR2018-01678, and IPR2018-01682, because Exhibit
`2319 will be expunged from the record. We are not persuaded that the
`additional portions of Patent Owner’s sur-replies should be struck. In
`particular, the discussion during the conference, which will be reflected in
`the transcript, elucidated that (1) Petitioner’s replies state what they are
`quoted as stating; (2) Patent Owner served Petitioner with a declaration by
`Mr. Veasey on the topic of the animation; and (3) Petitioner did not seek to
`depose Mr. Veasey. Petitioner’s concerns regarding potential inferences
`derived from those facts are noted for the record, in the transcript. Those
`potential inferences, however, do not justify striking the factual statements
`of which Petitioner complains.
`Regarding the date for deposing Dr. Slocum in IPR2018-01679,
`IPR2018-01680, and IPR2018-01682, Patent Owner indicated that there are
`uncertainties in the start date of a related district court proceeding, in which
`the same declarant filed an expert report. Petitioner expressed its concerns
`that Patent Owner did not make Dr. Slocum available before the start of the
`district court trial, believing that there was adequate time to do so. Patent
`Owner indicated that, because of Dr. Slocum’s teaching schedule and
`holiday commitments, he is not available for deposition until after the trial.
`
`
`
`4
`
`
`
`IPR2018-01676 (Patent 8,603,044 B2)
`IPR2018-01678, IPR2018-01679 (Patent 8,992,486 B2)
`IPR2018-01680, IPR2018-01682 (Patent 9,526,844 B2)
`
`
`Patent Owner agreed that Dr. Slocum would be made available immediately
`following the conclusion of the district court trial.
`Because of the present uncertainties in the start date of the related
`district court trial, we will not set a date for Dr. Slocum’s deposition;
`instead, we urge the parties to continue working toward an agreed-upon date
`for the deposition. If it would assist the parties in reaching an agreement,
`the parties may request moving Due Date 7 (for these three cases only), the
`due date for filing replies to motions to exclude and Petitioner’s sur-replies
`to the revised motions to amend, to February 3, 2020, two days before oral
`argument is scheduled in IPR2018-01679, IPR2018-01680, and IPR2018-
`01682.
`
`
`ORDER
`In view of the foregoing, it is:
`ORDERED that Exhibit 2319 is expunged from IPR2018-01676,
`IPR2018-01678, IPR2018-01679, IPR2018-01680, and IPR2018-01682; and
`FURTHER ORDERED that the citation of Exhibit 2319 is stricken
`from the sur-replies filed in IPR2018-01676, IPR2018-01678, and IPR2018-
`01682.
`
`
`
`
`
`
`
`
`5
`
`
`
`IPR2018-01676 (Patent 8,603,044 B2)
`IPR2018-01678, IPR2018-01679 (Patent 8,992,486 B2)
`IPR2018-01680, IPR2018-01682 (Patent 9,526,844 B2)
`
`
`For PETITIONER:
`
`Richard Torczon
`Douglas Carsten
`Wesley Derryberry
`Tasha Thomas
`Lorelei Westin
`Nicole Stafford
`Jeffrey Guise
`Elham Steiner
`Arthur Dykhuis
`Lora Green
`Jad Mills
`WILSON SONSINI GOODRICH & ROSATI
`rtorczon@wsgr.com
`dcarsten@wsgr.com
`wderryberry@wsgr.com
`tthomas@wsgr.com
`lwestin@wsgr.com
`nstafford@wsgr.com
`jguise@wsgr.com
`esteiner@wsgr.com
`adykhuis@wsgr.com
`lgreen@wsgr.com
`jmills@wsgr.com
`
`Jovial Wong
`WINSTON & STRAWN LLP
`PfizerIPRs@winston.com
`
`
`
`
`
`
`
`6
`
`
`
`IPR2018-01676 (Patent 8,603,044 B2)
`IPR2018-01678, IPR2018-01679 (Patent 8,992,486 B2)
`IPR2018-01680, IPR2018-01682 (Patent 9,526,844 B2)
`
`
`For PATENT OWNER:
`
`Elizabeth Stotland Weiswasser
`William Ansley
`Adrian Percer
`Brian Chang
`Sudip Kundu
`Kathryn Kantha
`Matthew Sieger
`Anish Desai
`WEIL, GOTSHAL & MANGES LLP
`elizabeth.weiswasser@weil.com
`sutton.ansley@weil.com
`adrian.percer@weil.com
`brian.chang@weil.com
`sudip.kundu@weil.com
`matthew.sieger@weil.com
`anish.desai@weil.com
`
`W. Karl Renner
`John Goetz
`Joshua Griswold
`Matthew Colvin
`Kenneth Darby
`FISH & RICHARDSON P.C.
`axf-ptab@fr.com
`goetz@fr.com
`griswold@fr.com
`colvin@fr.com
`kdarby@fr.com
`
`
`
`7
`
`
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