`571-272-7822 Entered: October 15, 2019
`
`
`
`
`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 No. 8,586,045 B2)
`Case IPR2018-01711 (Patent No. 9,884,907 B2)
` Case IPR2018-01712 (Patent No. 9,884,908 B2)1
`
`
`
`Before JENNIFER MEYER CHAGNON, JAMES A. WORTH, and
`RICHARD J. SMITH, Administrative Patent Judges.
`
`SMITH, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`1This 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)
`Inter partes review was instituted in the above-referenced cases on
`April 3, 2019. Paper 12.2 Patent Owner filed a Response (Paper 21) to each
`Petition, and Petitioner filed a Reply (Paper 32) to each Response.3
`In an e-mail to the Board on October 11, 2019, Patent Owner
`requested authorization to “file a 5-page motion to strike portions of
`Petitioner’s Replies, certain new exhibits, and portions of expert testimony,”
`in each of the above-referenced inter partes reviews. Ex. 3001.
`Specifically, Patent Owner seeks to strike (1) “Exhibit 1287 and Petitioner’s
`Reply arguments that relate to that Exhibit because Petitioner improperly
`uses this new evidence to attempt to further support its arguments that []
`there was a motivation to make the claimed antibodies,” and (2) “new expert
`testimony from Dr. Balthasar relating to the effectiveness of Tan’s full-
`length antibody in Exhibit 1022, and Petitioner’s Reply arguments that rely
`upon those portions of Dr. Balthasar’s declaration.” Id.
`Patent Owner states that we previously approved a similar request in
`related IPRs (see, e.g., IPR2018-01422, Paper 42), and that “Petitioner
`confirmed that it opposes Patent Owner’s request but that if the Board
`determines it would benefit from briefing, Petitioner agrees to the proposed
`schedule and page limits.” Ex. 3001.
`Patent Owner is correct that we previously approved a similar request
`in related IPRs (see, e.g., IPR2018-01422, Paper 42); however, that previous
`Order allowed seven business days for Patent Owner’s paper and seven
`business days for Petitioner’s reply. Id. Because the respective filings in the
`above-referenced inter partes reviews will address matters that are similar to
`
`2 Paper numbers in this Order refer to papers filed in IPR2018-01710.
`3 By stipulation of the parties, Patent Owner’s Sur-reply is due November
`13, 2019. Paper 19.
`
`
`
`2
`
`
`
`IPR2018-01710 (Patent 8,586,045 B2)
`IPR2018-01711 (Patent 9,884,907 B2)
`IPR2018-01712 (Patent 9,884,908 B2)
`the matters addressed in the related IPRs, the parties are given seven
`calendar days for their respective filings in the above-referenced inter partes
`reviews.
`Based on our consideration of the parties’ positions, it is hereby:
`ORDERED that Patent Owner may file a 5-page paper, in each of the
`above-referenced inter partes reviews, on or before October 22, 2019,
`identifying the exhibits, testimony, and arguments that it contends exceed
`the scope of a proper reply;
`FURTHER ORDERED that Petitioner may file a 5-page reply in
`response to Patent Owner’s paper, in each of the above-referenced inter
`partes reviews, on or before October 29, 2019; and
`FURTHER ORDERED that no declaration or other evidence may be
`submitted with Patent Owner’s paper or Petitioner’s reply.
`
`
`
`
`
`3
`
`
`
`IPR2018-01710 (Patent 8,586,045 B2)
`IPR2018-01711 (Patent 9,884,907 B2)
`IPR2018-01712 (Patent 9,884,908 B2)
`
`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
`
`
`
`4
`
`
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