`Sent:
`To:
`Cc:
`Subject:
`
`Ferenc, Christopher B. <christopher.ferenc@katten.com>
`Monday, May 13, 2024 11:34 AM
`Megan Raymond; J. Steven Baughman
`Sodikoff, Brian; Novo-Semaglutide-IPR@groombridgewu.com
`RE: IPR2024-00107 – Preliminary Response
`
`Megan,
`
`Sun merely declined to include Novo’s proposed language in the e‐mail to the Board because it is unnecessary to place
`any condi(cid:415)ons on an otherwise straight‐forward authoriza(cid:415)on request – adding as an exhibit an as‐filed s(cid:415)pula(cid:415)on
`made of record in the District Court by Sun.
`
`As to the substance of your offer, it is not necessary because the s(cid:415)pula(cid:415)on stands on its own under its plain terms. Sun
`does not intend to work behind the scenes to advance issues at trial that solely relate to invalidity grounds that it could
`not pursue subject to the s(cid:415)pula(cid:415)on, but it cannot agree to restrict itself and/or invite future quibbles about the scope
`of restric(cid:415)ons. As just one example, your proposal presumes that all issues for trial are completely isolatable on all
`levels (which expert, how the expert spends and documents his (cid:415)me, how the expert expresses his opinions in reports
`and/or deposi(cid:415)ons) when that may not be the case. As such, your proposed s(cid:415)pula(cid:415)on goes beyond that and places
`imprac(cid:415)cal restric(cid:415)ons on Sun’s ability to prepare its case on issues that it is not estopped from making. Notably, you
`have failed to cite any authority or precedent that supports Novo’s posi(cid:415)on.
`
`The sole issue is whether the Board should authorize the submission of the exhibit. Sun cannot agree to the inclusion of
`any argument in the e‐mail to the Board, as it is improper. See, e.g., Samsung Electronics Co., Ltd., et al. v. Black Hills
`Media, LLC, Cases IPR2014‐00717 (PTAB, July 10, 2014) (Paper 6) (finding argument in e‐mail to the Board “cons(cid:415)tutes
`an unauthorized, off‐the‐record brief in support of Patent Owner’s request”). We have removed all argument from the
`e‐mail, and the par(cid:415)es are free to raise any arguments regarding this issue during the call with the Board.
`
`We have made a good‐faith effort to resolve this dispute and see no reason to con(cid:415)nue to hold up this e‐mail.
`
`Please send us your edits/approval to the e‐mail to the Board by two Eastern. We are available to discuss, if necessary,
`at 2:30 EST.
`
`‐‐
`
`PTAB,
`
`
`Petitioners Sun Pharmaceutical Industries Ltd. and Sun Pharmaceutical Industries, Inc. (together “Sun”) have filed a
`stipulation in the District Court in the underlying litigation. Petitioners request authorization to submit this stipulation as
`an exhibit in this proceeding for consideration by the Board.
`
`Patent Owner opposes this request and seeks a 3‐page brief to address issues raised by the stipulation.
`
`The parties request a conference call with the Board to discuss this issue.
`
`
`The parties are available for a call with the Board at the following times: Monday, May 13 from 12‐5, or Wednesday,
`May 15 from 2‐5, or otherwise at the Board’s convenience.
`
`
`Regards,
`
`1
`
`Novo Nordisk Exhibit 2031
`Sun Pharm Indus. Ltd. v. Novo Nordisk A/S
`IPR2024-00107
`Page 00001
`
`Novo Nordisk Exhibit 2543
`Mylan Pharms. Inc. v. Novo Nordisk A/S
`IPR2023-00724
`Page 00001
`
`
`
`
`
`
`
`Christopher B. Ferenc
`Partner
`Katten
`Katten Muchin Rosenman LLP
`1919 Pennsylvania Ave., NW., Suite 800 | Washington, DC 20006
`direct +1.202.625.3647
`christopher.ferenc@katten.com | katten.com
`
`From: Megan Raymond <megan.raymond@groombridgewu.com>
`Sent: Sunday, May 12, 2024 11:27 AM
`To: Ferenc, Christopher B. <christopher.ferenc@katten.com>; J. Steven Baughman
`<steve.baughman@groombridgewu.com>
`Cc: Sodikoff, Brian <brian.sodikoff@katten.com>; Novo‐Semaglutide‐IPR@groombridgewu.com
`Subject: RE: IPR2024‐00107 – Preliminary Response
`
`EXTERNAL EMAIL – EXERCISE CAUTION
`
`Chris,
`
`Are you saying that Sun does stipulate and confirm that, if Sun’s Petition is instituted, Sun will not contribute to district
`court litigation of any of the stipulated grounds behind the scenes (e.g., Sun will not pay for experts, participate in
`expert reports, deposition preparation, etc. in connection with any of the stipulated grounds)? If so, then we can
`shortcut this by including that agreement in the email and not asking for additional briefing. If not, then what is
`inaccurate about the representation in my edits?
`
`Megan
`
`From: Ferenc, Christopher B. <christopher.ferenc@katten.com>
`Sent: Friday, May 10, 2024 8:37 PM
`To: Megan Raymond <megan.raymond@groombridgewu.com>; J. Steven Baughman
`<steve.baughman@groombridgewu.com>
`Cc: Sodikoff, Brian <brian.sodikoff@katten.com>; Novo‐Semaglutide‐IPR@groombridgewu.com
`Subject: RE: IPR2024‐00107 – Preliminary Response
`
`Megan,
`
`Sun never made the representa(cid:415)on referenced in your edits, so we will not include that language in our e‐mail to the
`Board. The e‐mail below accurately reflects the compromised language reached by the par(cid:415)es, and expressly requests a
`conference with the Board to discuss the issue. Please send your approval.
`
`‐‐
`
`PTAB,
`
`
`Petitioners Sun Pharmaceutical Industries Ltd. and Sun Pharmaceutical Industries, Inc. (together “Sun”) have filed a
`stipulation in the District Court in the underlying litigation. This stipulation updates a previously submitted stipulation by
`Sun made of record in this proceeding (Exhibit 2026).
`
`
`2
`
`Novo Nordisk Exhibit 2031
`Sun Pharm Indus. Ltd. v. Novo Nordisk A/S
`IPR2024-00107
`Page 00002
`
`Novo Nordisk Exhibit 2543
`Mylan Pharms. Inc. v. Novo Nordisk A/S
`IPR2023-00724
`Page 00002
`
`
`
`Petitioners request authorization to submit the updated stipulation as an exhibit in this proceeding for consideration by
`the Board.
`
`Patent Owner opposes this request. Patent Owner further requests a 3‐page brief to address discretionary denial issues,
`including the sufficiency of the previous and above‐mentioned stipulation.
`
`The parties request a conference call with the Board to discuss this issue.
`
`
`The parties are available for a call with the Board at the following times: Monday, May 13 from 9‐5, or Wednesday, May
`15 from 2‐5, or otherwise at the Board’s convenience.
`
`
`Regards,
`
`
`
`
`Christopher B. Ferenc
`Partner
`Katten
`Katten Muchin Rosenman LLP
`1919 Pennsylvania Ave., NW., Suite 800 | Washington, DC 20006
`direct +1.202.625.3647
`christopher.ferenc@katten.com | katten.com
`
`From: Megan Raymond <megan.raymond@groombridgewu.com>
`Sent: Friday, May 10, 2024 8:05 PM
`To: Ferenc, Christopher B. <christopher.ferenc@katten.com>; J. Steven Baughman
`<steve.baughman@groombridgewu.com>
`Cc: Sodikoff, Brian <brian.sodikoff@katten.com>; Novo‐Semaglutide‐IPR@groombridgewu.com
`Subject: RE: IPR2024‐00107 – Preliminary Response
`
`EXTERNAL EMAIL – EXERCISE CAUTION
`Chris,
`
`We disagree that the subject of the 3‐page brief is argument. To the extent you disagree with its inclusion and think
`otherwise, you are en(cid:415)tled to reflect your posi(cid:415)on without argument. Sun’s decision to delay raising this issue at all
`un(cid:415)l less than a month before the ins(cid:415)tu(cid:415)on decision is due in this case, and its decision to wait four days to respond to
`Steve’s May 3 email was Sun’s own choosing. This could’ve easily been resolved a week ago had Sun been willing to
`acknowledge that its Sotera s(cid:415)pula(cid:415)on prevents it from par(cid:415)cipa(cid:415)ng behind the scenes in certain invalidity ac(cid:415)vi(cid:415)es if
`its IPR is ins(cid:415)tuted.
`
` I
`
` have included our non‐argumenta(cid:415)ve posi(cid:415)on below. Please send us a revised version if you make further changes to
`Sun’s posi(cid:415)on so we can consider whether any further adjustment of ours may be appropriate.
`
`
`PTAB,
`
`
`Petitioners Sun Pharmaceutical Industries Ltd. and Sun Pharmaceutical Industries, Inc. (together “Sun”) have filed a
`stipulation in the District Court in the underlying litigation. This stipulation updates a previously submitted stipulation by
`Sun made of record in this proceeding (Exhibit 2026).
`
`
`3
`
`Novo Nordisk Exhibit 2031
`Sun Pharm Indus. Ltd. v. Novo Nordisk A/S
`IPR2024-00107
`Page 00003
`
`Novo Nordisk Exhibit 2543
`Mylan Pharms. Inc. v. Novo Nordisk A/S
`IPR2023-00724
`Page 00003
`
`
`
`Petitioners request authorization to submit updated stipulation as an exhibit in this proceeding for consideration by the
`Board. Patent Owner opposes this request, and requests a call to the extent the Board is inclined to grant it. Patent
`Owner further requests a 3‐page brief to address discretionary denial issues, including the sufficiency of the previous
`and above‐mentioned stipulation in view of Petitioner’s assertion to Patent Owner that it may still contribute to district
`court litigation on any of the stipulated grounds behind the scenes (e.g., Sun may still pay for experts, participate in
`expert reports, deposition preparation, etc. in connection with any of the stipulated grounds).
`
`
`The parties are available for a call with the Board at the following times: Monday, May 13 from 9‐5, or Wednesday, May
`15 from 2‐5, or otherwise at the Board’s convenience.
`
`
`Regards,
`
`
`
`From: Ferenc, Christopher B. <christopher.ferenc@katten.com>
`Sent: Friday, May 10, 2024 7:21 PM
`To: Megan Raymond <megan.raymond@groombridgewu.com>; J. Steven Baughman
`<steve.baughman@groombridgewu.com>
`Cc: Sodikoff, Brian <brian.sodikoff@katten.com>; Novo‐Semaglutide‐IPR@groombridgewu.com
`Subject: RE: IPR2024‐00107 – Preliminary Response
`
`Megan,
`
`As you conceded, the inclusion of argument in this e‐mail is improper. We have assented to that request and the revised
`e‐mail below reflects the par(cid:415)es agreed‐upon language to the Board. Novo is free to raise its arguments during any call
`scheduled by the Board.
`
`Please let us know if you we have your approval to send this evening. We note that Sun filed its s(cid:415)pula(cid:415)on 10 days ago
`and Novo’s unreasonable delay in sending an otherwise ministerial e‐mail is unacceptable and prejudicial to the Board’s
`ability to consider the relevant development in this case. Sun reserves all rights.
`
`‐‐
`
`PTAB,
`
`
`Petitioners Sun Pharmaceutical Industries Ltd. and Sun Pharmaceutical Industries, Inc. (together “Sun”) have filed a
`stipulation in the District Court in the underlying litigation. This stipulation updates a previously submitted stipulation by
`Sun made of record in this proceeding (Exhibit 2026).
`
`
`Petitioners request authorization to submit updated stipulation as an exhibit in this proceeding for consideration by the
`Board. Patent Owner opposes this request and requests a call to the extent the Board is inclined to grant it. Patent
`Owner further requests a 3‐page brief to address discretionary denial issues, including the sufficiency of the above‐
`mentioned stipulation.
`
`
`The parties are available for a call with the Board at the following times: Monday, May 13 from 9‐5, or Wednesday, May
`15 from 2‐5, or otherwise at the Board’s convenience.
`
`
`Regards,
`
`‐‐
`
`
`4
`
`Novo Nordisk Exhibit 2031
`Sun Pharm Indus. Ltd. v. Novo Nordisk A/S
`IPR2024-00107
`Page 00004
`
`Novo Nordisk Exhibit 2543
`Mylan Pharms. Inc. v. Novo Nordisk A/S
`IPR2023-00724
`Page 00004
`
`
`
`Christopher B. Ferenc
`Partner
`Katten
`Katten Muchin Rosenman LLP
`1919 Pennsylvania Ave., NW., Suite 800 | Washington, DC 20006
`direct +1.202.625.3647
`christopher.ferenc@katten.com | katten.com
`
`From: Megan Raymond <megan.raymond@groombridgewu.com>
`Sent: Friday, May 10, 2024 5:55 PM
`To: Ferenc, Christopher B. <christopher.ferenc@katten.com>; J. Steven Baughman
`<steve.baughman@groombridgewu.com>
`Cc: Sodikoff, Brian <brian.sodikoff@katten.com>; Novo‐Semaglutide‐IPR@groombridgewu.com
`Subject: RE: IPR2024‐00107 – Preliminary Response
`
`EXTERNAL EMAIL – EXERCISE CAUTION
`Chris,
`
`We’ve added back our request for a 3‐page brief, which seems to have been deleted in your last dra(cid:332). Also, our
`posi(cid:415)on, reflected in our last dra(cid:332), that a(cid:425)aching the s(cid:415)pula(cid:415)on is improper, stands. We’ve revised assuming you won’t
`a(cid:425)ach the s(cid:415)pula(cid:415)on (see red text). If you plan to a(cid:425)ach it, then we’ll add an objec(cid:415)on to that.
`
`PTAB,
`
`
`Petitioners Sun Pharmaceutical Industries Ltd. and Sun Pharmaceutical Industries, Inc. (together “Sun”) have filed a
`stipulation in the District Court in the underlying litigation. This stipulation updates a previously submitted stipulation by
`Sun made of record in this proceeding (Exhibit 2026).
`
`
`Petitioners request authorization to submit updated stipulation as an exhibit in this proceeding for consideration by the
`Board. Patent Owner opposes this request, and requests a call to the extent the Board is inclined to grant it. Patent
`Owner further requests a 3‐page brief to address discretionary denial issues, including the sufficiency of the previous
`and above‐mentioned stipulation in view of Petitioner’s assertion to Patent Owner that it may still contribute to district
`court litigation on any of the stipulated grounds behind the scenes (e.g., Sun may still pay for experts, participate in
`expert reports, deposition preparation, etc. in connection with any of the stipulated grounds).
`
`
`The parties are available for a call with the Board at the following times: Friday, May 10 from 2:30‐5, Monday, May 13
`from 9‐5, or Wednesday, May 15 from 9‐5, or otherwise at the Board’s convenience.
`
`
`Regards,
`
`
`From: Ferenc, Christopher B. <christopher.ferenc@katten.com>
`Sent: Friday, May 10, 2024 10:25 AM
`To: Megan Raymond <megan.raymond@groombridgewu.com>; J. Steven Baughman
`<steve.baughman@groombridgewu.com>
`Cc: Sodikoff, Brian <brian.sodikoff@katten.com>; Novo‐Semaglutide‐IPR@groombridgewu.com
`Subject: RE: IPR2024‐00107 – Preliminary Response
`
`Megan,
`
`We agree that all argument should be removed from the e‐mail. A revised e‐mail is below. Please let us know if you have
`any edits by 2 p.m. Eastern.
`
`5
`
`Novo Nordisk Exhibit 2031
`Sun Pharm Indus. Ltd. v. Novo Nordisk A/S
`IPR2024-00107
`Page 00005
`
`Novo Nordisk Exhibit 2543
`Mylan Pharms. Inc. v. Novo Nordisk A/S
`IPR2023-00724
`Page 00005
`
`
`
`
`‐‐
`
`PTAB,
`
`
`Petitioners Sun Pharmaceutical Industries Ltd. and Sun Pharmaceutical Industries, Inc. (together “Sun”) have filed the
`attached stipulation in the District Court in the underlying litigation. This stipulation updates a previously submitted
`stipulation by Sun made of record in this proceeding (Exhibit 2026).
`
`
`Petitioners request authorization to submit updated stipulation as an exhibit in this proceeding for consideration by the
`Board. Patent Owner opposes this request.
`
`If required, the parties are available for a call with the Board at the following times: Friday, May 10 from 2:30‐5,
`Monday, May 13 from 9‐5, or Wednesday, May 15 from 9‐5, or otherwise at the Board’s convenience.
`
`Regards,
`
`Counsel for Pe(cid:415)(cid:415)oners
`
`Christopher B. Ferenc
`Partner
`Katten
`Katten Muchin Rosenman LLP
`1919 Pennsylvania Ave., NW., Suite 800 | Washington, DC 20006
`direct +1.202.625.3647
`christopher.ferenc@katten.com | katten.com
`
`From: Megan Raymond <megan.raymond@groombridgewu.com>
`Sent: Thursday, May 9, 2024 3:47 PM
`To: Ferenc, Christopher B. <christopher.ferenc@katten.com>; J. Steven Baughman
`<steve.baughman@groombridgewu.com>
`Cc: Sodikoff, Brian <brian.sodikoff@katten.com>; Novo‐Semaglutide‐IPR@groombridgewu.com
`Subject: RE: IPR2024‐00107 – Preliminary Response
`
`EXTERNAL EMAIL – EXERCISE CAUTION
`Chris,
`
`Your request to the Board now contains improper argument. We ask that you remove the improper argument (and the
`a(cid:425)achment) and will then update our statement accordingly. To the extent Sun insists on keeping the improper
`argument in the email, we have inserted a statement below.
`
`‐‐
`
`PTAB,
`
`In view of the April 25, 2024 decision issued in related proceeding, Dr. Reddy’s Laboratories, Inc. et al. v. Novo Nordisk
`A/S, IPR2024‐00009 (Paper No. 19) (the “Dr. Reddy’s Decision”), Petitioners Sun Pharmaceutical Industries Ltd. and Sun
`Pharmaceutical Industries, Inc. (together “Sun”) have filed the attached stipulation in the District Court in the underlying
`litigation. This stipulation tracks the proposed stipulation discussed in the Dr. Reddy’s Decision and updates a previously
`submitted stipulation by Sun made of record in this proceeding (Exhibit 2026).
`
`
`6
`
`Novo Nordisk Exhibit 2031
`Sun Pharm Indus. Ltd. v. Novo Nordisk A/S
`IPR2024-00107
`Page 00006
`
`Novo Nordisk Exhibit 2543
`Mylan Pharms. Inc. v. Novo Nordisk A/S
`IPR2023-00724
`Page 00006
`
`
`
`Petitioners request authorization to submit the attached stipulation as an exhibit in this proceeding (IPR2024‐00107) for
`consideration by the Board, which has previously ruled in the Dr. Reddy’s Decision that the same stipulation was
`sufficient to defeat Patent Owner’s Fintiv arguments. The conditions sought to be imposed by Patent Owner are nothing
`more than a pretext to re‐argue an issue previously decided by the Board on the same facts, and are predicated on
`faulty assumptions (e.g. that an expert will isolate time spent on certain grounds vs. others). Patent Owner is free to
`argue its interpretation of the stipulation at the District Court, if so inclined. The Board should deny any request for
`further briefing on this issue.
`
`Regarding Petitioner's improper attachment and discussion of the substance of its arguments above, Patent Owner
`notes its understanding Petitioner’s inclusion of such argument in its email is improper and a violation of the Board's
`procedures. Patent Owner accordingly does not attempt herein to respond to the substance of those arguments, other
`than to note it opposes this request because Sun has refused to agree that as part of this stipulation, it will not
`contribute to district court litigation of any of the stipulated grounds behind the scenes (e.g., Sun will not pay for
`experts, participate in expert reports, deposition preparation, etc. in connection with any of the stipulated
`grounds). Patent Owner requests a 3‐page brief to address discretionary denial issues, including the sufficiency of the
`stipulation in view of Petitioner’s position as to its meaning. Patent Owner requests a teleconference on this issue to
`the extent the Board considers granting it, and will be prepared to address Petitioner’s arguments on any call the Board
`may schedule.
`
`If required, the parties are available for a call with the Board at the following times: Friday, May 10 from 11:30‐1:30 or
`2:30‐5, Monday, May 13 from 9‐5, or Wednesday, May 15 from 9‐5, or otherwise at the Board’s convenience.
`
`
`From: Ferenc, Christopher B. <christopher.ferenc@katten.com>
`Sent: Thursday, May 9, 2024 3:20 PM
`To: Megan Raymond <megan.raymond@groombridgewu.com>; J. Steven Baughman
`<steve.baughman@groombridgewu.com>
`Cc: Sodikoff, Brian <brian.sodikoff@katten.com>; Novo‐Semaglutide‐IPR@groombridgewu.com
`Subject: RE: IPR2024‐00107 – Preliminary Response
`
`Megan,
`
`Sun is only reques(cid:415)ng the relief of entering the s(cid:415)pula(cid:415)on as filed as evidence in the IPR. Your addi(cid:415)onal material does
`not go to that issue, but instead seeks to add arguments about the scope of that s(cid:415)pula(cid:415)on in the district court. Further,
`the s(cid:415)pula(cid:415)on entered by Sun is the same as the s(cid:415)pula(cid:415)on offered (and subsequently entered) by DRL. Novo was free
`to make arguments about scope when it opposed the same s(cid:415)pula(cid:415)on in the DRL proceeding. Having chose not to make
`such an argument, this “offer” is nothing more than a pretext for Novo to re‐li(cid:415)gate and an issue already decided by the
`PTAB – the sufficiency of the Sun s(cid:415)pula(cid:415)on to dispose of Novo’s Fin(cid:415)v arguments.
`
`Below is the e‐mail we intend to send to the Board today. Please send any edits by 5 p.m. eastern.
`
`‐‐
`
`PTAB,
`
`In view of the April 25, 2024 decision issued in related proceeding, Dr. Reddy’s Laboratories, Inc. et al. v. Novo Nordisk
`A/S, IPR2024‐00009 (Paper No. 19) (the “Dr. Reddy’s Decision”), Petitioners Sun Pharmaceutical Industries Ltd. and Sun
`Pharmaceutical Industries, Inc. (together “Sun”) have filed the attached stipulation in the District Court in the underlying
`litigation. This stipulation tracks the proposed stipulation discussed in the Dr. Reddy’s Decision and updates a previously
`submitted stipulation by Sun made of record in this proceeding (Exhibit 2026).
`
`
`7
`
`Novo Nordisk Exhibit 2031
`Sun Pharm Indus. Ltd. v. Novo Nordisk A/S
`IPR2024-00107
`Page 00007
`
`Novo Nordisk Exhibit 2543
`Mylan Pharms. Inc. v. Novo Nordisk A/S
`IPR2023-00724
`Page 00007
`
`
`
`Petitioners request authorization to submit the attached stipulation as an exhibit in this proceeding (IPR2024‐00107) for
`consideration by the Board, which has previously ruled in the Dr. Reddy’s Decision that the same stipulation was
`sufficient to defeat Patent Owner’s Fintiv arguments. The conditions sought to be imposed by Patent Owner are nothing
`more than a pretext to re‐argue an issue previously decided by the Board on the same facts, and are predicated on
`faulty assumptions (e.g. that an expert will isolate time spent on certain grounds vs. others). Patent Owner is free to
`argue its interpretation of the stipulation at the District Court, if so inclined. The Board should deny any request for
`further briefing on this issue.
`
`Patent Owner opposes this request because Sun has refused to agree that as part of this stipulation, it will not
`contribute to district court litigation of any of the stipulated grounds behind the scenes (e.g., Sun will not pay for
`experts, participate in expert reports, deposition preparation, etc. in connection with any of the stipulated grounds).
`Patent Owner requests a 3‐page brief to address discretionary denial issues, including the sufficiency of the stipulation.
`
`If required, the parties are available for a call with the Board at the following times: Friday, May 10 from 11:30‐1:30 or
`2:30‐5, Monday, May 13 from 9‐5, or Wednesday, May 15 from 9‐5, or otherwise at the Board’s convenience.
`
`
`Christopher B. Ferenc
`Partner
`Katten
`Katten Muchin Rosenman LLP
`1919 Pennsylvania Ave., NW., Suite 800 | Washington, DC 20006
`direct +1.202.625.3647
`christopher.ferenc@katten.com | katten.com
`
`From: Megan Raymond <megan.raymond@groombridgewu.com>
`Sent: Thursday, May 9, 2024 12:57 PM
`To: Ferenc, Christopher B. <christopher.ferenc@katten.com>; J. Steven Baughman
`<steve.baughman@groombridgewu.com>
`Cc: Sodikoff, Brian <brian.sodikoff@katten.com>; Novo‐Semaglutide‐IPR@groombridgewu.com
`Subject: RE: IPR2024‐00107 – Preliminary Response
`
`EXTERNAL EMAIL – EXERCISE CAUTION
`Chris,
`
`We are surprised by your refusal, as we believe the s(cid:415)pula(cid:415)on would prohibit Sun from contribu(cid:415)ng to any of the
`s(cid:415)pulated grounds behind the scenes in the District Court. Accordingly, we have updated our posi(cid:415)on in the email to
`the Board below.
`
`Sincerely,
`Megan
`
`
`PTAB,
`
`In view of the April 25, 2024 decision issued in related proceeding, Dr. Reddy’s Laboratories, Inc. et al. v. Novo Nordisk
`A/S, IPR2024‐00009 (Paper No. 19) (the “Dr. Reddy’s Decision”), Petitioners Sun Pharmaceutical Industries Ltd. and Sun
`Pharmaceutical Industries, Inc. (together “Sun”) have filed the attached stipulation in the District Court in the underlying
`litigation. This stipulation tracks the proposed stipulation discussed in the Dr. Reddy’s Decision and updates a previously
`submitted stipulation by Sun made of record in this proceeding (Exhibit 2026).
`
`
`Petitioners request authorization to submit the attached stipulation as an exhibit in this proceeding (IPR2024‐00107) for
`consideration by the Board. Patent Owner opposes this request because Sun has refused to agree that as part of this
`
`8
`
`Novo Nordisk Exhibit 2031
`Sun Pharm Indus. Ltd. v. Novo Nordisk A/S
`IPR2024-00107
`Page 00008
`
`Novo Nordisk Exhibit 2543
`Mylan Pharms. Inc. v. Novo Nordisk A/S
`IPR2023-00724
`Page 00008
`
`
`
`stipulation, it will not contribute to district court litigation of any of the stipulated grounds behind the scenes (e.g., Sun
`will not pay for experts, participate in expert reports, deposition preparation, etc. in connection with any of the
`stipulated grounds). Patent Owner requests a 3‐page brief to address discretionary denial issues, including the
`sufficiency of the stipulation.
`
`If required, the parties are available for a call with the Board at the following times: Friday, May 10 from 11:30‐1:30 or
`2:30‐5, Monday, May 13 from 9‐5, or Wednesday, May 15 from 9‐5, or otherwise at the Board’s convenience.
`
`
`From: Ferenc, Christopher B. <christopher.ferenc@katten.com>
`Sent: Tuesday, May 7, 2024 1:52 PM
`To: J. Steven Baughman <steve.baughman@groombridgewu.com>; Megan Raymond
`<megan.raymond@groombridgewu.com>
`Cc: Sodikoff, Brian <brian.sodikoff@katten.com>; Novo‐Semaglutide‐IPR@groombridgewu.com
`Subject: RE: IPR2024‐00107 – Preliminary Response
`
`Steve,
`
`Sun cannot agree to Novo’s proposed addi(cid:415)on to the e‐mail. The actual s(cid:415)pula(cid:415)on already filed by Sun in the District
`Court proceeding was previously found by the Board to be sa(cid:415)sfactory for the purposes of ins(cid:415)tu(cid:415)on/joinder vis‐à‐vis
`the DRL decision. Please let us know if the following e‐mail can be sent today so that we can properly update the Board
`on the update.
`
`‐‐
`PTAB,
`
`In view of the April 25, 2024 decision issued in related proceeding, Dr. Reddy’s Laboratories, Inc. et al. v. Novo Nordisk
`A/S, IPR2024‐00009 (Paper No. 19) (the “Dr. Reddy’s Decision”), Petitioners Sun Pharmaceutical Industries Ltd. and Sun
`Pharmaceutical Industries, Inc. (together “Sun”) have filed the attached stipulation in the District Court in the underlying
`litigation. This stipulation tracks the proposed stipulation discussed in the Dr. Reddy’s Decision and updates a previously
`submitted stipulation by Sun made of record in this proceeding (Exhibit 2026).
`
`
`Petitioners request authorization to submit the attached stipulation as an exhibit in this proceeding (IPR2024‐00107) for
`consideration by the Board. Patent Owner does not oppose this request.
`
`If required, the parties are available for a call with the Board at the following times: Wednesday, May 8 from 2‐5pm ET,
`or otherwise at the Board’s convenience.
`
`
`Regards,
`
`
`
`Christopher B. Ferenc
`Partner
`Katten
`Katten Muchin Rosenman LLP
`1919 Pennsylvania Ave., NW., Suite 800 | Washington, DC 20006
`direct +1.202.625.3647
`christopher.ferenc@katten.com | katten.com
`
`From: J. Steven Baughman <steve.baughman@groombridgewu.com>
`Sent: Friday, May 3, 2024 2:07 PM
`
`9
`
`Novo Nordisk Exhibit 2031
`Sun Pharm Indus. Ltd. v. Novo Nordisk A/S
`IPR2024-00107
`Page 00009
`
`Novo Nordisk Exhibit 2543
`Mylan Pharms. Inc. v. Novo Nordisk A/S
`IPR2023-00724
`Page 00009
`
`
`
`To: Ferenc, Christopher B. <christopher.ferenc@katten.com>; Megan Raymond
`<megan.raymond@groombridgewu.com>
`Cc: Sodikoff, Brian <brian.sodikoff@katten.com>; Novo‐Semaglutide‐IPR@groombridgewu.com
`Subject: RE: IPR2024‐00107 – Preliminary Response
`
`EXTERNAL EMAIL – EXERCISE CAUTION
`Christopher –
`
`Megan has been traveling out of the country this week.
`
`We would not oppose the filing of the stipulation if Sun is willing to confirm the points noted below in the revised
`draft. Please confirm – and we ask that you let us know if you contemplate any further edits to the Board email so that
`we may respond accordingly.
`
`Thanks
`Steve
`
`‐‐
`
`
`PTAB,
`
`In view of the April 25, 2024 decision issued in related proceeding, Dr. Reddy’s Laboratories, Inc. et al. v. Novo Nordisk
`A/S, IPR2024‐00009 (Paper No. 19) (the “Dr. Reddy’s Decision”), Petitioners Sun Pharmaceutical Industries Ltd. and Sun
`Pharmaceutical Industries, Inc. (together “Sun”) have filed the attached stipulation in the District Court in the underlying
`litigation. This stipulation tracks the proposed stipulation discussed in the Dr. Reddy’s Decision and updates a previously
`submitted stipulation by Sun made of record in this proceeding (Exhibit 2026). As discussed with Patent Owner, Sun
`further stipulates and confirms to the Board that, if Sun’s Petition is instituted, Sun will not contribute to district court
`litigation of any of the stipulated grounds behind the scenes (e.g., Sun will not pay for experts, participate in expert
`reports, deposition preparation, etc. in connection with any of the stipulated grounds).
`
`
`Petitioners request authorization to submit the attached stipulation as an exhibit in this proceeding (IPR2024‐00107) for
`consideration by the Board. Patent Owner does not oppose this request.
`
`If required, the parties are available for a call with the Board at the following times: Tuesday, May 7 from 1‐5pm ET,
`Wednesday, May 8 from 2‐5pm ET, or otherwise at the Board’s convenience.
`
`
`Regards,
`
`
`
`J. Steven Baughman
`Groombridge, Wu, Baughman & Stone LLP
`O +1 202‐505‐5832, M +1 617‐378‐5548
`steve.baughman@groombridgewu.com
`
`From: Ferenc, Christopher B. <christopher.ferenc@katten.com>
`Sent: Thursday, May 2, 2024 6:12 PM
`To: Megan Raymond <megan.raymond@groombridgewu.com>
`Cc: Sodikoff, Brian <brian.sodikoff@katten.com>; Novo‐Semaglutide‐IPR@groombridgewu.com
`Subject: RE: IPR2024‐00107 – Preliminary Response
`
`Megan,
`
`10
`
`Novo Nordisk Exhibit 2031
`Sun Pharm Indus. Ltd. v. Novo Nordisk A/S
`IPR2024-00107
`Page 00010
`
`Novo Nordisk Exhibit 2543
`Mylan Pharms. Inc. v. Novo Nordisk A/S
`IPR2023-00724
`Page 00010
`
`
`
`
`Please let us know if we have your approval to send this to the Board.
`
`Regards,
`Chris
`
`Christopher B. Ferenc
`Partner
`Katten
`Katten Muchin Rosenman LLP
`1919 Pennsylvania Ave., NW., Suite 800 | Washington, DC 20006
`direct +1.202.625.3647
`christopher.ferenc@katten.com | katten.com
`
`From: Ferenc, Christopher B.
`Sent: Wednesday, May 1, 2024 2:12 PM
`To: Megan Raymond <megan.raymond@groombridgewu.com>
`Cc: Sodikoff, Brian <brian.sodikoff@katten.com>; Novo‐Semaglutide‐IPR@groombridgewu.com
`Subject: RE: IPR2024‐00107 – Preliminary Response
`
`Megan,
`
`In view of the s(cid:415)pula(cid:415)on filed by Sun today, we intend to send the following e‐mail to the PTAB. Please let us know by
`noon EDT tomorrow if you have any edits.
`
`‐‐
`
`PTAB,
`
`In view of the April 25, 2024 decision issued in related proceeding, Dr. Reddy’s Laboratories, Inc. et al. v. Novo Nordisk
`A/S, IPR2024‐00009 (Paper No. 19) (the “Dr. Reddy’s Decision”), Pe(cid:415)(cid:415)oners Sun Pharmaceu(cid:415)cal Industries Ltd. and Sun
`Pharmaceu(cid:415)cal Industries, Inc. (together “Sun”) have filed the a(cid:425)ached s(cid:415)pula(cid:415)on in the District Court in the underlying
`li(cid:415)ga(cid:415)on. This s(cid:415)pula(cid:415)on tracks the proposed s(cid:415)pula(cid:415)on discussed in the Dr. Reddy’s Decision and updates a previously
`submi(cid:425)ed s(cid:415)pula(cid:415)on by Sun made of record in this proceeding (Exhibit 2026).
`
`Pe(cid:415)(cid:415)oners request authoriza(cid:415)on to submit the a(cid:425)ached s(cid:415)pula(cid:415)on as an exhibit in this proceeding (IPR2024‐00107) for
`considera(cid:415)on by the Board. Patent Owner does not oppose this request.
`
`If required, the par(cid:415)es are available to meet and confer this week at the following (cid:415)mes:
`Thursday (5/2): 9 a.m. – 2 p.m.
`Friday (5/3): 2 p.m. – 5 p.m.
`
`Regards,
`
`Christopher B. Ferenc
`Counsel for Pe(cid:415)(cid:415)oners
`
`Christopher B. Ferenc
`Partner
`Katten
`Katten Muchin Rosenman LLP
`1919 Pennsylvania Ave., NW., Suite 800 | Washington, DC 20006
`
`11
`
`Novo Nordisk Exhibit 2031
`Sun Pharm Indus. Ltd. v. Novo Nordisk A/S
`IPR2024-00107
`Page 00011
`
`Novo Nordisk Exhibit 2543
`Mylan Pharms. Inc. v. Novo Nordisk A/S
`IPR2023-00724
`Page 00011
`
`
`
`direct +1.202.625.3647
`christopher.ferenc@katten.com | katten.com
`
`From: Megan Raymond <megan.raymond@groombridgewu.com>
`Sent: Thursday, March 28, 2024 3:48 PM
`To: Ferenc, Christopher B. <christopher.ferenc@katten.com>
`Cc: Sodikoff, Brian <brian.sodikoff@katten.com>; Novo‐Semaglutide‐IPR@groombridgewu.com
`Subject: RE: IPR2024‐00107 – Preliminary Response
`
`EXTERNAL EMAIL – EXERCISE CAUTION
`Chris,
`
`We’ve revised the proposed email below to more accurately chara