`To:
`Cc:
`
`Subject:
`Date:
`
`Trials
`Pepe, Christopher
`Eholland@goodwinlaw.com; James, William G.; Cipriano, Linnea P; Grammel, Molly; Desai, Anish; Weiswasser,
`Elizabeth; Regeneron-IPR-Service; DG-NovartisPFS
`RE: IPR2021-00816 - Request for Authorization
`Thursday, August 12, 2021 1:54:18 PM
`
`Counsel:
`
`The Panel has considered Petitioner’s request to file a reply to Patent Owner’s Preliminary
`Response. Because the Panel believes additional briefing will help it to better understand the
`issues related to discretionary factors, and because Petitioner has shown good cause for the
`request, the panel authorizes additional briefing at the preliminary phase of this proceeding
`for both parties. The briefing should be limited to issues related to potential discretionary
`denial as well as providing current status updates of all related cases.
`
`Petitioner is authorized to file a five page reply to Patent Owner’s Preliminary Response on or
`before August 20, 2021. Patent Owner is authorized to file a five page sur-reply addressing
`Petitioner’s reply on or before August 27, 2021. These papers should not be accompanied by
`any new evidence, except for court or agency records demonstrating the current status of
`related cases.
`
`Thank you,
`Eric W. Hawthorne
`Supervisory Paralegal Specialist
`Patent Trial and Appeal Board
`
`
`
`From: Pepe, Christopher <Christopher.Pepe@weil.com>
`Sent: Friday, August 6, 2021 1:31 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: Eholland@goodwinlaw.com; James, William G. <WJames@goodwinlaw.com>; Cipriano, Linnea P
`<LCipriano@goodwinlaw.com>; Grammel, Molly <MGrammel@goodwinlaw.com>; Desai, Anish
`<anish.desai@weil.com>; Weiswasser, Elizabeth <Elizabeth.Weiswasser@weil.com>; Regeneron-IPR-
`Service <Regeneron.IPR.Service@weil.com>; DG-NovartisPFS <DG-NovartisPFS@goodwinlaw.com>
`Subject: IPR2021-00816 - Request for Authorization
`
`CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE SOURCE before
`responding, clicking on links, or opening attachments.
`
`Docket No.: IPR2021-00816
`Petitioner: Regeneron Pharmaceuticals, Inc.
`Patent Owner: Novartis Pharma AG, Novartis Technology LLC, and Novartis Pharmaceuticals Corp.
`
`
`
`
`Your Honors,
`
`We represent Petitioner in IPR2021-00816. Petitioner respectfully requests a teleconference with
`the Board to seek authorization to submit a 10-page reply to Patent Owner’s Preliminary Response.
`Petitioner’s reply would address the following issues raised in the Preliminary Response:
`
`
`1. Patent Owner’s assertion that Petitioner could have raised Patent Owner’s termination of the
`ITC Investigation in a request for rehearing of IPR2020-01317;
`2. Patent Owner’s assertion that discovery taken in the ITC Investigation is relevant under
`General Plastic;
`3. Patent Owner’s assertions concerning the status of the NDNY action as it relates to Patent
`Owner’s Fintiv argument.
`
`
`The parties have conferred, and Patent Owner opposes Petitioner’s request. The parties are
`available for a teleconference with the Board between 3-5 pm eastern on either Tuesday (8/10) or
`Wednesday (8/11) next week.
`
`Respectfully submitted,
`
`Christopher Pepe
`Back-up Counsel for Petitioner
`
`
`
`
`Christopher Pepe
`
`Weil, Gotshal & Manges LLP
`2001 M Street NW, Suite 600
`Washington, DC 20036
`christopher.pepe@weil.com
`+1 202 682 7153 Direct
`+1 202 857 0940 Fax
`
`
`
`The information contained in this email message is intended only for use of the individual or entity named
`above. If the reader of this message is not the intended recipient, or the employee or agent responsible to
`deliver it to the intended recipient, you are hereby notified that any dissemination, distribution or copying
`of this communication is strictly prohibited. If you have received this communication in error, please
`immediately notify us by email, postmaster@weil.com, and destroy the original message. Thank you.
`
`