`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________
`
`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
`_____________________
`
`REQUEST FOR ORAL ARGUMENT
`
`
`
`
`
`
`Mail Stop "PATENT BOARD"
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`
`
`Case IPR2018-01710
`Patent 8,586,045 B2
`Pursuant to the Board’s April 3, 2019 Scheduling Order (Paper 12), Patent
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`Owner Teva Pharmaceuticals International GmbH respectfully requests oral
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`argument, currently scheduled for January 8, 2020. Under 37 C.F.R. § 42.70, and
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`without intending to waive any issue not specifically identified, Patent Owner
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`specifies the following issues to be argued:
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`1. Whether claims 1, 3, 4, 8-17, 19, 20, and 24-31 are unpatentable as
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`obvious in view of Olesen, Tan 1995, and Queen;
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`2.
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`3.
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`Any issues raised by Petitioner in its request for oral hearing;
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`Any other issues the Board deems necessary for issuing a final written
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`decision (e.g., the motion to strike and any motion to exclude).
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`Patent Owner requests that IPR2018-01710, and related cases IPR2018-
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`01711 and IPR2018-01712 be consolidated into one single hearing.
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`Patent Owner requests that each party be allocated one (1) hour, including
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`rebuttal, in which to present arguments.
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`Patent Owner requests that the hearing be held in Alexandria, Virginia
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`because that location will be more convenient, have simpler logistics, and be less
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`costly for both Patent Owner and Petitioner. Counsel for Patent Owner and the
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`majority of counsel for Petitioner are located in the Washington, DC area. In
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`addition, two of the three members of the Board assigned to this case appear to be
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`Case IPR2018-01710
`Patent 8,586,045 B2
`based in the Alexandria location, making the Alexandria location more convenient
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`for the majority of the panel. Patent Owner’s counsel is also already scheduled to
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`be on the East Coast around the time of the hearing.
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`Patent Owner requests that the Board provide audio-visual equipment to
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`display demonstrative exhibits, including a projector and screen for displaying
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`documents from a computer.
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`In addition to counsel listed on the mandatory notices, Patent Owner expects
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`additional attendees from Teva and understands Petitioner to also expect additional
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`guests.
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`
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`
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`Respectfully submitted,
`
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`
`Date: November 20, 2019
`1100 New York Avenue, NW
`Washington, DC 20005
`(202) 371-2600
`
`
`
`Deborah A. Sterling, Ph.D.
`Lead Counsel for Patent Owner
`Registration No. 62,732
`
`
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`- 2 -
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`
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`CERTIFICATE OF SERVICE (37 C.F.R. § 42.6(e))
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`The undersigned hereby certifies that the above-captioned “Request for Oral
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`Argument” was served in its entirety on November 20, 2019, via electronic mail
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`upon the following counsel for Petitioner:
`
`Sanjay M. Jivraj
`
`
`William B. Raich
`Mark J. Stewart
`
`
`Erin M. Sommers
`Eli Lilly and Company
`
`
`Pier D. DeRoo
`
`Yieyie Yang Lilly Corporate Center Patent Dept.
`John M. Williamson
`
`
`Indianapolis, IN 46285
`Finnegan, Henderson, Farabow,
`jivraj_sanjay@lilly.com
`Garrett & Dunner, LLP
`
`
`stewart_mark@lilly.com
`901 New York Avenue, NW
`
`
`Washington, DC 20001
`william.raich@finnegan.com
`erin.sommers@finnegan.com
`pier.deroo@finnegan.com
`yieyie.yang@finnegan.com
`john.williamson@finnegan.com
`
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`
`
`
`
`
`
`
`
`Date: November 20, 2019
`1100 New York Avenue, NW
`Washington, DC 20005
`(202) 371-2600
`
`
`14168678_1.docx
`
`
`
`
`
`
`
`Deborah A. Sterling, Ph.D.
`Lead Counsel for Patent Owner
`Registration No. 62,732
`
`
`
`
`