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`
`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
`
`Owner Teva Pharmaceuticals International GmbH respectfully requests oral
`
`argument, currently scheduled for January 8, 2020. Under 37 C.F.R. § 42.70, and
`
`without intending to waive any issue not specifically identified, Patent Owner
`
`specifies the following issues to be argued:
`
`1. Whether claims 1, 3, 4, 8-17, 19, 20, and 24-31 are unpatentable as
`
`obvious in view of Olesen, Tan 1995, and Queen;
`
`2.
`
`3.
`
`Any issues raised by Petitioner in its request for oral hearing;
`
`Any other issues the Board deems necessary for issuing a final written
`
`decision (e.g., the motion to strike and any motion to exclude).
`
`Patent Owner requests that IPR2018-01710, and related cases IPR2018-
`
`01711 and IPR2018-01712 be consolidated into one single hearing.
`
`Patent Owner requests that each party be allocated one (1) hour, including
`
`rebuttal, in which to present arguments.
`
`Patent Owner requests that the hearing be held in Alexandria, Virginia
`
`because that location will be more convenient, have simpler logistics, and be less
`
`costly for both Patent Owner and Petitioner. Counsel for Patent Owner and the
`
`majority of counsel for Petitioner are located in the Washington, DC area. In
`
`addition, two of the three members of the Board assigned to this case appear to be
`
`- 1 -
`
`

`

`Case IPR2018-01710
`Patent 8,586,045 B2
`based in the Alexandria location, making the Alexandria location more convenient
`
`for the majority of the panel. Patent Owner’s counsel is also already scheduled to
`
`be on the East Coast around the time of the hearing.
`
`Patent Owner requests that the Board provide audio-visual equipment to
`
`display demonstrative exhibits, including a projector and screen for displaying
`
`documents from a computer.
`
`In addition to counsel listed on the mandatory notices, Patent Owner expects
`
`additional attendees from Teva and understands Petitioner to also expect additional
`
`guests.
`
`
`
`
`
`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
`
`
`
`- 2 -
`
`

`

`
`
`
`
`CERTIFICATE OF SERVICE (37 C.F.R. § 42.6(e))
`
`The undersigned hereby certifies that the above-captioned “Request for Oral
`
`Argument” was served in its entirety on November 20, 2019, via electronic mail
`
`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
`
`
`
`
`

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