`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`PFIZER INC.,
`Petitioner,
`v.
`SANOFI-AVENTIS DEUTSCHLAND GMBH,
`Patent Owner
`Case IPR2019-00977
`Patent No. 8,603,044 B2
`
`
`
`REPLY IN SUPPORT OF PETITIONER’S MOTION FOR JOINDER
`UNDER 35 U.S.C. § 315(c) AND 37 C.F.R. §§ 42.22, 42.122(b)
`
`
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`
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`
`
`Mail Stop PATENT BOARD
`Patent Trial and Appeal Board
`United States Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`Submitted Electronically via the PTAB E2E System
`
`
`
`
`
`
`
`
`IPR2019-00977 Patent No. 8,603,044 B2
`
`TABLE OF CONTENTS
`
`I. ADDITIONAL STATEMENT OF MATERIAL FACTS AND PRECISE
`RELIEF REQUESTED ...................................................................................... 1
`II. CONCLUSION .................................................................................................. 2
`
`
`
`
`
`
`i
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`
`
`IPR2019-00977 Patent No. 8,603,044 B2
`
`I.
`
`ADDITIONAL STATEMENT OF MATERIAL FACTS AND PRECISE
`RELIEF REQUESTED
`In its response to Petitioner’s (“Pfizer”) Motion for Joinder, Patent Owner
`
`(“Sanofi”) indicated that it does not oppose joinder but requested a 1-month
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`extension of the schedule if the Board were to grant joinder. According to Sanofi,
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`an extension is necessary to allow sufficient time to cross-examine Mr. Charles
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`Clemens (Pfizer’s expert), and incorporate both his and Mr. Karl Leinsing’s
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`(Mylan’s expert) testimony into Patent Owner’s Response, which is currently due
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`on June 25, 2019.
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`After Sanofi filed its response, the parties have had discussions to try to
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`resolve any dispute as to joinder and have reached the following agreements such
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`that joinder can be granted without the need for any extension to the schedule:
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`• Pfizer and Mylan have agreed that Pfizer can co-retain Mylan’s expert
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`Mr. Leinsing. As such, and assuming the requested joinder is granted,
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`Pfizer will withdraw its expert declaration of Mr. Clemens as it pertains
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`to all but two of the challenged claims of the ’044, ’069, ’486, ’844,
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`and ’008 patents, and instead rely on the declaration and testimony of
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`Mylan’s expert Mr. Leinsing.1 See SAP America Inc. v. Clouding IP,
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`1 Pfizer will withdraw Mr. Clemens’ expert declaration as to all challenged claims
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`except for claims 2 and 3 of the ’069 patent, which were not challenged by Mylan
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`1
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`
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`IPR2019-00977 Patent No. 8,603,044 B2
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`LLC, IPR2014-00306, Paper 13 at 4 (PTAB May 19, 2014).
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`• With Pfizer’s withdrawal of Mr. Clemens’ expert declaration as
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`described above, Sanofi will not seek to depose Mr. Clemens prior to
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`submitting its Patent Owner’s Response on June 25, 2019. Sanofi also
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`does not oppose Pfizer’s reliance on Mr. Leinsing’s declaration and
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`testimony.
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`Under the conditions described above, Sanofi has indicated that it does not
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`oppose Pfizer’s Motion for Joinder, and also does not require the additional 1-month
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`extension of the schedule. Mylan has indicated that it will not oppose joinder only
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`if there is no change to the schedule, but Mylan seeks further guidance from the
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`Board as to the claim construction standard that will be applied to the joined
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`proceedings.
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`II. CONCLUSION
`Petitioner reiterates its request that the Board institute its Petition for Inter
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`Partes Review of U.S. Patent No. 8,603,044 and join this proceeding with Mylan
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`Pharmaceuticals Inc. v. Sanofi-Aventis Deutschland GmbH., No. IPR2018-01675.
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`or addressed by Mr. Leinsing. A separate reply has been filed in IPR2019-00979
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`(U.S. 8,679,069) to withdraw Pfizer’s joinder motion as it pertains to claims 2 and 3
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`of the ’069 patent.
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`2
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`Petitioner further submits that no adjustment to the schedule is required for joinder.
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`IPR2019-00977 Patent No. 8,603,044 B2
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`Dated: June 24, 2019
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`Respectfully submitted,
`
`
` /Jovial Wong/
`Jovial Wong
`Reg. No. 60,115
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`
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`3
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`CERTIFICATE OF SERVICE
`Pursuant to 37 C.F.R. §§ 42.6(e) and 42.105(a), I certify that, on June 24,
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`2019, a true and correct copy of the foregoing: Reply in Support of Petitioner’s
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`Motion for Joinder Under 35 U.S.C. § 315(c), 37 C.F.R. §§ 42.22 and 42.112(b)
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`was served by electronic mail to the following counsel for Patent Owner:
`
`Anish R. Desai
`anish.desai@weil.com
`
`Adrian C. Percer
`adrian.percer@weil.com
`
`William S. Ansley
`sutton.ansley@weil.com
`
`Sanofi.IPR.Service@weil.com
`
`
`John S. Goetz
`goetz@fr.com
`
`Matthew S. Colvin
`colvin@fr.com
`
`
`
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`
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`Respectfully submitted,
`
` /Jovial Wong/
`Jovial Wong
`Reg. No. 60,115
`
`Elizabeth Stotland Weiswasser
`elizabeth.weiswasser@weil.com
`
`Sudip K. Kundu
`sudip.kundu@weil.com
`
`Brian C. Chang
`brian.chang@weil.com
`
`Matthew D. Sieger
`matthew.sieger@weil.com
`
`W. Karl Renner
`renner@fr.com
`
`Joshua A. Griswold
`griswold@fr.com
`
`Kenneth W. Darby
`kdarby@fr.com
`
`
`Dated: June 24, 2019
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`
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