`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ELI LILLY AND COMPANY,
`Petitioner,
`v.
`TEVA PHARMACEUTICALS INTERNATIONAL GMBH,
`Patent Owner.
`
`Case IPR2018-01710 (Patent 8,586,045 B2)
`Case IPR2018-01711 (Patent 9,884,907 B2)
` Case IPR2018-01712 (Patent 9,884,908 B2)1
`
`
`
`
`
`
`
`
`
`Trials@uspto.gov Paper: 60
`571-272-7822 Entered: January 9, 2020
`
`
`
`
`
`
`
`Before JENNIFER MEYER CHAGNON, JAMES A. WORTH, and
`RICHARD J. SMITH, Administrative Patent Judges.
`
`WORTH, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`1 This Order addresses issues that are common to all three 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.”
`
`
`
`IPR2018-01710 (Patent 8,586,045 B2); IPR2018-01711 (Patent 9,884,907
`B2); IPR2018-01712 (Patent 9,884,908 B2)
`
`
`The Board held oral argument in these cases on January 8, 2020.
`On December 18, 2019, the U.S. Court of Appeals for the Federal
`Circuit issued an opinion in Fox Factory, Inc. v. SRAM, LLC, 944 F.3d
`1366, 2019 WL 6884530 (Fed. Cir. 2019), after the filing of the principal
`briefs in these cases. In Fox Factory, the court “address[ed] the Board’s
`application of the presumption of nexus” to certain claims at issue. Id. at *5.
`In so doing, the court reached a conclusion as to whether the patent owner’s
`products were “coextensive” with the claims. Id.
`In its Patent Owner Response, Patent Owner argues that “[t]he
`challenged claims have a presumption of nexus to the objective indicia of
`nonobviousness.” Paper 21, 55.2 Petitioner disagrees. See Paper 32, 21–27.
`In view of the court’s opinion in Fox Factory, the panel has decided
`that supplemental briefing is warranted to allow the parties to explain the
`applicability, if any, of Fox Factory to the issues argued by the parties. The
`panel is not re-opening the evidentiary record at this time. Accordingly, the
`parties’ positions in their supplemental briefs are requested to relate back to
`evidence already of record.
`Accordingly, it is
`ORDERED that Petitioner and Patent Owner are each authorized to
`file a supplemental brief, no longer than seven pages, that addresses the
`above-identified issues no later than Friday, January 24, 2020;
`FURTHER ORDERED that Petitioner and Patent Owner are each
`authorized to file a responsive supplemental brief, no longer than five pages,
`
`
`2 Where the same or similar papers have been filed in multiple proceedings,
`we refer herein to the papers filed in Case IPR2018-01710.
`
`2
`
`
`
`IPR2018-01710 (Patent 8,586,045 B2); IPR2018-01711 (Patent 9,884,907
`B2); IPR2018-01712 (Patent 9,884,908 B2)
`
`that is responsive to the other party’s supplemental brief no later than Friday,
`January 31, 2020;
`FURTHER ORDERED that no additional evidence may be filed at
`this time.
`
`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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