From:
`To:
`Cc:
`
`Subject:
`Date:
`Attachments:
`
`J. Steven Baughman
`Anstaett, David L. (Perkins Coie)
`White-ptab@perkinscoie.com; White, Brandon (Perkins Coie); Greb-ptab@perkinscoie.com; prochnow-
`ptab@perkinscoie.com; jones-ptab@perkinscoie.com; tietz-ptab@perkinscoie.com; lembo-ptab@perkinscoie.com;
`Bloodworth, Shannon (Perkins Coie); kelley_nathan-ptab@perkinscoie.com; RSwartz@perkinscoie.com;
`Semaglutide-Ozempic@perkinscoie.com; Wong, Jovial (jwong@winston.com); Border, Scott; slin@winston.com;
`Sodikoff, Brian; Ferenc, Christopher B.; Novo-Semaglutide-IPR@groombridgewu.com
`RE: IPR2023-00724 - Service of draft proposed motion for sanctions
`Wednesday, July 10, 2024 11:29:21 AM
`RE IPR2023-00724 - Service of draft proposed motion for sanctions.msg
`
`Dave-
`
`As indicated in our call on Wednesday afternoon, July 3, I write regarding your July 2
`email (attached).
`
`While your message mentions bits of my June 25 and July 1 emails, it fails to answer the
`basic questions we have repeatedly asked about Mylan’s specific conduct in connection
`with the three March expert reports Mylan joined and served, pursuing three arguments
`for invalidity of the ‘462 patent that Mylan explicitly promised the Board and Patent
`Owner it would not pursue in district court.
`
`Tellingly, in our multiple exchanges, Mylan has never disputed the underlying facts of
`Mylan’s wrongdoing. To convince the Board to institute Mylan’s IPR despite the Board’s
`stated policy concerns—embodied in Fintiv—about the waste and inefficiency of the
`same parties litigating the same issue in multiple forums at once, Mylan stipulated not
`to pursue any instituted ground in district court litigation upon institution of its IPR.
`Institution occurred on October 4, 2023, and while Mylan’s promised prohibition went
`into force immediately, Mylan nonetheless decided after October 4 to share its ‘462
`patent IPR experts, who until then had testified only for Mylan, with all of its litigation
`codefendants; to coordinate and join (and, it appears, fund) those codefendants to work
`with these newly-shared experts in taking verbatim swaths of their previously-filed IPR
`testimony and further revise and refine those opinions to account for and substantively
`attack responsive positions Patent Owner had subsequently taken in the IPR (true
`“gamesmanship” against Patent Owner, to use your term); and continue actively
`pursuing three identical, overlapping grounds in both the district court and the IPR in
`direct violation of Mylan’s promise to the Board and Patent Owner in its petition—joining
`and serving the three expert reports making those prohibited arguments on behalf of
`Mylan and all other defendants.
`
`As we have repeatedly explained, even if now (long after being confronted with its
`misconduct) Mylan were to concede it must abide by its promise (and that is by no
`means clear from your conspicuously incomplete and ambiguous statements about
`
`Novo Nordisk Exhibit 2654
`Mylan Pharms. Inc. v. Novo Nordisk A/S
`IPR2023-00724
`Page 00001
`
`

`

`what Mylan will and won’t do), Mylan’s going-forward compliance would not erase the
`harm caused by Mylan’s misconduct. Mylan actively organized and educated its
`codefendants to continue acting on Mylan’s behalf without Mylan. Indeed, your
`continued protests about Mylan’s convenience—that, because Mylan chose to share
`experts, Mylan now finds it inconvenient to avoid discussing, or paying for the pursuit of,
`the forbidden grounds with the same overlapping experts its codefendants are using—
`are both baseless and revealing. Mylan’s convenience does not excuse or authorize
`violation of its stipulation. And while Mylan can’t organize or fund others to do what
`Mylan is forbidden from doing itself, that is precisely what Mylan seems intent on
`continuing to do. Nor has Mylan somehow been forced in litigation to share experts or
`violate its stipulation. In addition to our own prior refutation of these arguments, we
`understand litigation counsel is separately addressing your mischaracterization of
`events in the district court, where you know from our draft motion that Patent Owner is
`prepared to take further appropriate steps. Here, however, we are seeking relief in the
`form of sanctions (adverse judgment in the IPR) that only the PTAB—not the district court
`—can provide.
`
`The fact that the Board has not, at least to our knowledge, previously confronted
`misconduct like Mylan’s is not surprising—nor is it a free pass for Mylan from sanctions.
`Most litigants, of course, feel bound by the promises they make to an opposing party, let
`alone to a tribunal like the Board. And most would not engineer their misconduct to
`ensure its continuing impact even if they are eventually forced to honor their promises.
`(Even now, having been caught in its violation, Mylan continues to argue it can continue
`to do whatever it wishes regarding the stipulated grounds short of “trial” or a dispositive
`“motion,” and further suggests that—contrary to its stipulation and the Board’s entire
`Fintiv doctrine—Mylan can ignore its stipulation and engage in duplicative litigation in
`the guise of “preserv[ing]” its ability to do so if the law later changes.) Mylan’s choice to
`do what most parties would not does not insulate Mylan from sanctions.
`
`Nor is some particular prejudice to Patent Owner a prerequisite for the Board to impose
`sanctions, as you continue to argue. Although, as discussed above, real prejudice to
`Patent Owner clearly exists here, your arguments ignore that Mylan also broke its
`promise to the Board to obtain institution. The Board needs nothing more to sanction
`Mylan. And respectfully, the Board seems unlikely to endorse Mylan’s view that
`petitioners are free to violate their stipulations until caught, and even then with no
`consequences other than having to follow their promises from that point forward.
`
`Since our first meet and confer on June 14 you have been trying to dissuade us from
`pursuing Mylan’s misconduct by threatening sanctions for purported failure to cite what
`
`Novo Nordisk Exhibit 2654
`Mylan Pharms. Inc. v. Novo Nordisk A/S
`IPR2023-00724
`Page 00002
`
`

`

`you contended was controlling contrary legal authority. Until your July 3 email you
`refused to identify that authority. And, now that you have finally provided your citations,
`they clearly do not provide authority—let alone controlling legal authority—contradicting
`Patent Owner’s position that the Board should sanction Mylan’s misconduct under Rule
`11. Two of your four cited cases—the first, Google v. Hafeman, and the fourth, Apple
`Inc. v. Maxell, Ltd.—do not even involve a motion for sanctions. Instead, both concern
`rehearing as a way of requesting termination of trial. See Hafeman, IPR2022-01188,
`EX3001 (Mar.20, 2023) (denying permission “to file a rehearing request out of time”
`concerning the decision to institute); Apple Inc. v. Maxell, Ltd., IPR2020-00204, Pap.21
`(Dec.15, 2020) (denying rehearing based on numerous arguments). (Your second
`citation from Hafeman is simply to part of a question posed by a judge during the final
`hearing (Pap.31), not a ruling of the Board.) Unlike the patentees in Hafeman and Maxell,
`we are proceeding under Rule 11, and (as indicated in the draft motion) Patent Owner
`seeks sanctions for Mylan’s misconduct including adverse judgment on the overlapping
`grounds and costs (although dismissal is an alternative remedy the Board could
`consider). And the Board has, for that matter, recently authorized briefing on a motion to
`terminate in connection with a Sand Revolution stipulation. See, e.g., Parse Biosciences
`Inc. v. 10x Genomics, Inc., IPR2023-00955, Pap.24, July 3, 2024 (approving briefing of
`motion to terminate where petitioner violated its Sand Revolution stipulations, despite
`petitioner seeking relief from its stipulations in district court based on claim of changed
`circumstances).
`
`This is also not a case where there is any factual dispute for the district court to resolve
`about whether a petitioner’s prior art combination asserted in litigation matches its
`stipulation, as in your other two cases, Samsung Elecs. Co. v. Netlist, Inc., IPR2022-
`00639, EX3003 (parties presenting dispute concerning scope of “reasonably could have
`been raised” estoppel), and Lightspeed Commerce Inc. v. Cloudofchange, LLC,
`IPR2022-00779, EX2031 (transcript of hearing) (conceding “we would expect before trial
`in September to have a ruling from the Court about the scope of the stipulation with
`respect to that proceeding.”) and Pap. 28 (July 25, 2023) (noting district court would
`decide issue), as well as Maxell, Pap.21, 9 (arguing petitioner was “citing [overlapping
`art] in a summary judgment motion as ‘evidence that the claimed elements were routine
`and conventional.’”). Here, Mylan is pursuing three identical invalidity grounds in both
`the IPR and the district court: that is what the expert reports served by Mylan say.
`
`We also note you have pointed to no discussion in any of your cited cases about a
`petitioner’s violation of a stipulation alongside co-defendants the petitioner was
`marshalling to continue on without it, as Mylan has done here.
`
`
`Novo Nordisk Exhibit 2654
`Mylan Pharms. Inc. v. Novo Nordisk A/S
`IPR2023-00724
`Page 00003
`
`

`

`Far from presenting any controlling legal authority contrary to Patent Owner’s positions,
`your four citations instead reveal Mylan’s attacks as, in your word, “frivolous.” We
`expect your baseless counter-threats of sanctions to stop.
`
`Your suggestion that Patent Owner’s approach to Mylan’s misconduct was untimely is
`also baseless. First, it overlooks (again) that the harm Mylan imposed on Patent Owner
`by its conduct with the March expert reports could not have been undone (whether
`immediately thereafter or now) by a late promise from Mylan to obey its stipulation going
`forward. It also ignores the facts. Once Patent Owner’s PTAB counsel (who, unlike
`Mylan’s, are different from its litigation counsel) became aware of Mylan’s misconduct
`after service of your March expert reports, Patent Owner investigated and analyzed the
`information that was available to assess the harm caused by Mylan’s misconduct—
`harm that, again, cannot now be undone even if Mylan were to commit to ceasing its
`violation going forward—and then researched, prepared, and served a draft motion for
`sanctions. Your complaint that Patent Owner did so with a “lengthy” motion (which
`actually satisfies the normal 15-page limit) ignores Rule 11(d)(2), which required Patent
`Owner to do precisely this. And as you will recall, Patent Owner did so in the midst of
`defending numerous depositions and reviewing Mylan’s Reply.
`
`You now appear to make another amorphous suggestion that Mylan might yet do or
`commit to do something more to follow its stipulation, at least going forward. As we
`cautioned when you raised a similar unspecified notion in our June 14 meet and confer
`(which was later proven inadequate when you put it in writing), if some new approach
`falls short of Mylan’s actual stipulation this will be inadequate again, and we will
`consider what Mylan commits to when it actually does so. As we have already detailed,
`your prior attempt (following the June 14 call) to change Mylan’s actual stipulation that
`Mylan would not pursue the overlapping grounds at all and immediately upon
`institution into some different commitment that would not prevent Mylan from doing
`anything until later, at the point of dispositive “motions and trial,” is facially improper
`and inadequate. And, of course – like adding a “footnote” today saying what Mylan will
`rely on going forward from the March expert reports – it says and does nothing about
`Mylan’s conduct in preparing and presenting those March expert reports with its
`codefendants, or the harm Mylan’s violation of its stipulation has caused and continues
`to cause.
`
`Finally, regarding your question about the brief we will file upon authorization from the
`Board, as we said in our first email to you on this topic we will be revising that initial
`draft, including based on what you have said in our meet and confer discussions—but
`the factual basis remains the same.
`
`Novo Nordisk Exhibit 2654
`Mylan Pharms. Inc. v. Novo Nordisk A/S
`IPR2023-00724
`Page 00004
`
`

`

`
`Respectfully,
`Steve
`
`
`
`J. Steven Baughman
`Groombridge, Wu, Baughman & Stone LLP
`O +1 202-505-5832, M +1 617-378-5548
`steve.baughman@groombridgewu.com
`
`From: J. Steven Baughman <steve.baughman@groombridgewu.com>
`Sent: Monday, July 1, 2024 3:58 PM
`To: White, Brandon (Perkins Coie) <BMWhite@perkinscoie.com>
`Cc: White-ptab@perkinscoie.com; Beel, Bryan D. (Perkins Coie) <BBeel@perkinscoie.com>; Greb-
`ptab@perkinscoie.com; prochnow-ptab@perkinscoie.com; jones-ptab@perkinscoie.com; tietz-
`ptab@perkinscoie.com; lembo-ptab@perkinscoie.com; Bloodworth, Shannon (Perkins Coie)
`<SBloodworth@perkinscoie.com>; kelley_nathan-ptab@perkinscoie.com;
`RSwartz@perkinscoie.com; Semaglutide-Ozempic@perkinscoie.com; Wong, Jovial
`(jwong@winston.com) <jwong@winston.com>; Border, Scott <SBorder@winston.com>;
`slin@winston.com; Sodikoff, Brian <brian.sodikoff@katten.com>; Ferenc, Christopher B.
`<christopher.ferenc@katten.com>; Novo-Semaglutide-IPR@groombridgewu.com; Anstaett, David L.
`(Perkins Coie) <DAnstaett@perkinscoie.com>
`Subject: RE: IPR2023-00724 - Service of draft proposed motion for sanctions
`
`Counsel,
`
`Please find below our draft email to the Board requesting a call to authorize a motion for
`sanctions and a motion for additional discovery. Could you please confirm your
`availability for a call with the Board next Thursday and Friday, July 10 and 11, and
`Monday, July 15? Given the holiday on Thursday, we intend to write to the Board on
`Monday, July 8.
`
`We have not heard from you on this topic since our email last Tuesday and assume
`Petitioner's positions remain the same, including regarding Petitioner's refusal to answer
`our questions below or to provide any discovery.
`
`Regarding counsel for Sun's query about the possibility of deferring potentially
`overlapping discovery as to the joining petitioners (and without waiver of or prejudice to
`Petitioner's position that, per the representations of Sun and DRL in connection with
`joinder, Patent Owner is entitled to rely on the positions of Petitioner Mylan on behalf of
`all joined petitioners), Patent Owner is open to further discussion in advance of the call
`
`Novo Nordisk Exhibit 2654
`Mylan Pharms. Inc. v. Novo Nordisk A/S
`IPR2023-00724
`Page 00005
`
`

`

`with the Board to try to narrow this aspect of the dispute. If Sun and/or DRL may be open
`to answering some basic questions about participation in the March 2024 expert reports
`as a possible basis for deferring aspects of Patent Owner's discovery requests as to Sun
`and DRL, please let us know and we are happy to arrange a discussion.
`
`Best regards,
`Steve
`
`
`--DRAFT
`
`Patent Owner respectfully requests a call with the Board to seek permission to file a
`motion for sanctions, pursuant to Rule 42.12, based on Petitioner Mylan's violation of its
`promise to the Board and Patent Owner that, upon institution, Mylan "will not pursue in
`the district court any instituted grounds against the originally-issued claims" (Pet. 66), by
`actively litigating three instituted grounds in district court--including in three expert
`reports expressly made on behalf of Mylan and its co-defendants and served by Mylan.
` The 21-day period specified in Rule 42.11(d)(2) has passed, and Patent Owner seeks
`sanctions that are not available in the district court. Counsel for Petitioner Mylan
`confirms that Petitioner opposes this request.
`
`Because Petitioner has refused any discovery regarding its conduct in connection with
`the expert reports noted above, Patent Owner--in order to understand the extent of
`Petitioner's violation--further requests leave to file a motion for limited additional
`discovery from Petitioners regarding their respective retention, direction, and payment
`of these three experts in connection with the instituted '462 grounds who, prior to
`institution, were experts in this IPR and only for Mylan. Counsel for Petitioner Mylan has
`stated that Mylan believes no discovery is appropriate and opposes this request.
`
`Counsel for both parties are available to discuss their respective positions with the
`Board on Thursday, July 11, between 3 and 5pm ET, Friday, July 12, between 3 and
`5pm ET, or Monday, July 15, between 1 and 5pm ET, or as the Board otherwise directs.
`
`Respectfully submitted,
`
`
`J. Steven Baughman
`Groombridge, Wu, Baughman & Stone LLP
`O +1 202-505-5832, M +1 617-378-5548
`steve.baughman@groombridgewu.com
`
`Novo Nordisk Exhibit 2654
`Mylan Pharms. Inc. v. Novo Nordisk A/S
`IPR2023-00724
`Page 00006
`
`

`

`
`From: J. Steven Baughman <steve.baughman@groombridgewu.com>
`Sent: Tuesday, June 25, 2024 1:23 PM
`To: White, Brandon (Perkins Coie) <BMWhite@perkinscoie.com>
`Cc: White-ptab@perkinscoie.com; Beel, Bryan D. (Perkins Coie) <BBeel@perkinscoie.com>; Greb-
`ptab@perkinscoie.com; prochnow-ptab@perkinscoie.com; jones-ptab@perkinscoie.com; tietz-
`ptab@perkinscoie.com; lembo-ptab@perkinscoie.com; Bloodworth, Shannon (Perkins Coie)
`<SBloodworth@perkinscoie.com>; kelley_nathan-ptab@perkinscoie.com;
`RSwartz@perkinscoie.com; Semaglutide-Ozempic@perkinscoie.com; Wong, Jovial
`(jwong@winston.com) <jwong@winston.com>; Border, Scott <SBorder@winston.com>;
`slin@winston.com; Sodikoff, Brian <brian.sodikoff@katten.com>; West, Christopher W.
`<christopher.west@katten.com>; Ferenc, Christopher B. <christopher.ferenc@katten.com>; Novo-
`Semaglutide-IPR@groombridgewu.com; Anstaett, David L. (Perkins Coie)
`<DAnstaett@perkinscoie.com>
`Subject: RE: IPR2023-00724 - Service of draft proposed motion for sanctions
`
`Brandon,
`
`We are, first, surprised by Mylan’s conspicuous attempt to alter and limit Mylan's
`commitment to the Board to pursuing the instituted grounds only “by motion or at
`trial.” As you know, in its petition Mylan explicitly promised it would not pursue those
`instituted grounds in district court litigation at all upon institution (Pet.66):
`
`
`In addition, Petitioner stipulates that if the Board institutes, Petitioner will not
`pursue in the district court any instituted grounds against the originally-issued
`claims unless a change in law otherwise permits. This further weighs in favor of
`institution.
`
`
`Far from “reaffirm[ing]” or “reiterat[ing]” its promise, Mylan now tries to rewrite it going
`forward—all the while refusing to answer any questions in the IPR about what Mylan has
`already done.
`
`There is no basis for Mylan’s suggestion that, so long as it stops short of doing so in a
`“motion or… trial,” Mylan is somehow entitled to pursue these foresworn grounds in
`litigation in other ways—such as by submitting reports asserting and detailing those
`improper grounds on Mylan’s own behalf and on behalf of its co-defendants (organized
`and prepared by Mylan to carry on even if Mylan is eventually forced, going forward, to
`follow Mylan’s petition stipulation). Indeed, the point of making a Fintiv-related
`stipulation like Mylan’s is to assure the Board that wasteful, duplicative litigation by the
`petitioner will stop in full and immediately at institution—not at some future time or only
`in pre-trial motions or arguments at trial.
`
`Novo Nordisk Exhibit 2654
`Mylan Pharms. Inc. v. Novo Nordisk A/S
`IPR2023-00724
`Page 00007
`
`

`

`
`Mylan’s attempt to recast its promise also calls into question what Mylan now concedes
`it won’t do, going forward, at trial or in motion practice. It is apparent that Mylan, after
`institution, agreed to share with its litigation co-defendants Mylan’s three IPR experts,
`who not only copied vast swaths of their IPR declarations but also, with Mylan’s
`apparent sponsorship and participation, included further additional opinions responding
`to specific arguments raised by Patent Owner in the IPR. Mylan then formally submitted
`these three reports to Patent Owner in litigation on behalf of Mylan and all of its
`codefendants. This is certainly an example of Mylan “pursu[ing] in the district court [the
`three] instituted grounds,” contrary to its stipulation. Does Mylan agree that, going
`forward, it will not pursue these grounds, whether alone or in collaboration (openly or
`“behind the scenes”) with its codefendants? Or, is it Mylan’s position that Mylan need
`only refrain from officially signing on to arguments Mylan helps to prepare on those
`foresworn grounds when they are advanced against Patent Owner in the district court?
`
`While Mylan argues it was “forced… to participate in coordinated and consolidated pre-
`trial proceedings,” Mylan’s characterization of the litigation history (even if it were
`accepted, arguendo) would not absolve Mylan of its obligations to follow its
`commitments to the Board or any other requirements—whether in the interests of
`Mylan’s “convenience” or otherwise. (Notably, Mylan’s reliance on Patent Owner’s
`arguments for consolidated pre-trial proceedings in the MDL ignore that these were
`made nearly a year prior to the filing of Mylan’s petition, and that Mylan’s promise came
`after consolidation was ordered and Mylan was fully aware it would be involved in pre-
`trial proceedings with defendants not bound by Mylan’s promise. Similarly, the October
`31, 2023 joint stipulation was entered into after institution was granted and Mylan’s
`promise was in force, and did not relieve Mylan of its promise—"coordinating []
`discovery efforts” does not mean Mylan can substantively assist those other
`defendants.) For example, the suggestion that Mylan is somehow incapable of funding
`and sharing experts only on permissible topics, and not on the grounds Mylan promised
`the Board and Patent Owner it would not pursue, is nonsensical—and it is, of course,
`belied by the conduct of Mylan’s own co-petitioners, Sun and DRL, who (as Sun noted in
`our June 14 meet and confer) have expressly stated they are not joining certain aspects
`of the co-defendants’ shared expert reports following institution of their joined
`petitions. E.g., Responsive Expert Report of Arthur Z. Schwartzbard, M.D., F.A.C.C., at 1
`n.1 (“I understand that Dr. Reddy’s Laboratories, Ltd., Dr. Reddy’s Laboratories, Inc.,
`Sun Pharmaceutical Industries Ltd., and Sun Pharmaceutical Industries, Inc. do not
`adopt my opinions as they relate to anticipation or obviousness of the ’462 patent.”).
`
`Finally, Mylan’s attempt to rewrite its stipulation to the Board going forward notably
`
`Novo Nordisk Exhibit 2654
`Mylan Pharms. Inc. v. Novo Nordisk A/S
`IPR2023-00724
`Page 00008
`
`

`

`omits any comment on what Mylan has already done, including in the March 19, 2024,
`expert reports it joined and served for all the defendants months after institution. While
`Mylan has yet to acknowledge it did anything to violate its stipulation, Mylan has not
`explained its conduct or disputed any of the facts presented in our draft motion for
`sanctions, and we intend to seek the Board’s assistance. Notwithstanding Mylan’s
`stated refusal in our meet and confer to consider any discovery on any aspect of this
`matter, we also intend to seek the Board’s permission for related discovery, and will
`follow up on that topic in separate correspondence. But in the meantime, we ask again:
`can Mylan represent to Patent Owner that (other than completed work Mylan had
`already performed solely in connection with the IPR) Mylan had no substantive
`involvement in the preparation, discussion, or other development of the invalidity
`theories in the March 19, 2024 expert reports of Drs. Bantle, Jusko, and Dalby that Mylan
`promised it would not pursue in the district court?
`
`Regarding Mylan’s repeated threat that—if Patent Owner seeks the Board’s assessment
`of and assistance with Mylan’s conduct here—Mylan will “seek its own sanctions,” we
`respectfully submit this is facially improper and unfounded, as confirmed by Mylan’s
`conduct in our June 14 meet and confer. During that discussion, Mylan’s counsel
`repeatedly suggested he had in mind controlling legal authority that a sanctions motion
`against Mylan would be impermissible and improper—but in response to our repeated,
`explicit requests, he flatly refused to identify any such authority. We are not aware of
`any, and we ask again that Mylan either identify it to us so that we may consider it, or
`cease making improper threats of retaliation.
`
`Respectfully,
`Steve
`
`
`
`J. Steven Baughman
`Groombridge, Wu, Baughman & Stone LLP
`O +1 202-505-5832, M +1 617-378-5548
`steve.baughman@groombridgewu.com
`
`From: White, Brandon (Perkins Coie) <BMWhite@perkinscoie.com>
`Sent: Friday, June 21, 2024 10:51 AM
`To: J. Steven Baughman <steve.baughman@groombridgewu.com>
`Cc: White-ptab@perkinscoie.com; Beel, Bryan D. (Perkins Coie) <BBeel@perkinscoie.com>; Greb-
`ptab@perkinscoie.com; prochnow-ptab@perkinscoie.com; jones-ptab@perkinscoie.com; tietz-
`ptab@perkinscoie.com; lembo-ptab@perkinscoie.com; Bloodworth, Shannon (Perkins Coie)
`<SBloodworth@perkinscoie.com>; kelley_nathan-ptab@perkinscoie.com;
`
`Novo Nordisk Exhibit 2654
`Mylan Pharms. Inc. v. Novo Nordisk A/S
`IPR2023-00724
`Page 00009
`
`

`

`RSwartz@perkinscoie.com; Semaglutide-Ozempic@perkinscoie.com; Wong, Jovial
`(jwong@winston.com) <jwong@winston.com>; Border, Scott <SBorder@winston.com>;
`slin@winston.com; Sodikoff, Brian <brian.sodikoff@katten.com>; West, Christopher W.
`<christopher.west@katten.com>; Ferenc, Christopher B. <christopher.ferenc@katten.com>; Novo-
`Semaglutide-IPR@groombridgewu.com; Anstaett, David L. (Perkins Coie)
`<DAnstaett@perkinscoie.com>
`Subject: RE: IPR2023-00724 - Service of draft proposed motion for sanctions
`
`Steve,
`
`Attached is a copy of a letter provided to counsel in In re Ozempic (Semaglutide) Patent
`Litigation, MDL No. 22-MD-3038 (CFC). MPI reaffirms in this letter that it will not pursue
`by motion or at trial in the district court litigation any grounds of invalidity instituted in Mylan
`Pharmaceuticals Inc. v. Novo Nordisk A/S, No. IPR2023-00724 (PTAB), against the
`originally-issued claims of U.S. Patent No. 10,335,462, unless a change in law otherwise
`permits.
`
`While Novo Nordisk now appears to take issue with the Defendants in the district court
`litigation sharing experts and serving common expert reports, that is exactly what Novo
`Nordisk expected and relied upon before the JPML to force MPI to litigate in Delaware. Novo
`Nordisk understood and expected that there would be overlapping invalidity issues and shared
`experts between the cases it filed in Delaware and the case it filed against MPI in the Northern
`District of West Virginia and leveraged that expectation to compel MPI’s transfer from the
`Northern District of West Virginia to Delaware. Moreover, the Delaware court ordered the
`parties to coordinate discovery in the litigation and Novo expressly agreed that the Mylan case
`should remain in Delaware for trial. Given Novo Nordisk’s expectation of shared experts and
`overlapping invalidity positions on the consolidated Delaware litigation, it is not surprising
`that Novo Nordisk’s Delaware counsel, despite raising other issues concerning the contentions
`and expert reports served in the Delaware litigation, has never suggested that MPI has
`improperly pursued any issue. MPI remains in full compliance with its representations to the
`Board.
`
`Novo’s draft motion for sanctions is baseless, and the discovery it seeks is unwarranted.
`Should Novo Nordisk continue to pursue this motion or this discovery, MPI reserves the right
`to seek its own sanctions.
`
`
`Brandon White | Perkins Coie LLP
`D. +1.202.654.6206
`
`From: Anstaett, David L. (MSN) <DAnstaett@perkinscoie.com>
`Sent: Friday, June 14, 2024 8:56 AM
`To: J. Steven Baughman <steve.baughman@groombridgewu.com>
`Cc: White, Brandon (WDC) <BMWhite@perkinscoie.com>; *White-ptab <White-
`ptab@perkinscoie.com>; Beel, Bryan D. (POR) <BBeel@perkinscoie.com>; *Greb-ptab <Greb-
`ptab@perkinscoie.com>; *prochnow-ptab <prochnow-ptab@perkinscoie.com>; *Jones-ptab <jones-
`ptab@perkinscoie.com>; *tietz-ptab <tietz-ptab@perkinscoie.com>; *lembo-ptab <lembo-
`ptab@perkinscoie.com>; Bloodworth, Shannon (WDC) <SBloodworth@perkinscoie.com>;
`
`Novo Nordisk Exhibit 2654
`Mylan Pharms. Inc. v. Novo Nordisk A/S
`IPR2023-00724
`Page 00010
`
`

`

`*Kelley_Nathan-ptab <kelley_nathan-ptab@perkinscoie.com>; Swartz, Rodney (POR)
`<RSwartz@perkinscoie.com>; *Semaglutide-Ozempic <Semaglutide-Ozempic@perkinscoie.com>;
`Wong, Jovial (jwong@winston.com) <jwong@winston.com>; Border, Scott
`<SBorder@winston.com>; slin@winston.com; Sodikoff, Brian <brian.sodikoff@katten.com>; West,
`Christopher W. <christopher.west@katten.com>; Ferenc, Christopher B.
`<christopher.ferenc@katten.com>; Novo-Semaglutide-IPR@groombridgewu.com
`Subject: RE: IPR2023-00724 - Service of draft proposed motion for sanctions
`
`Steve,
`
`Please send a dial-in number for a call at 6:30pm EST today.
`
`Regards,
`Dave
`
`David Anstaett | Perkins Coie LLP
`PARTNER
`33 East Main Street Suite 201
`Madison, WI 53703-3095
`D. +1.608.663.5408
`F. +1.608.663.7499
`E. DAnstaett@perkinscoie.com
`
`From: J. Steven Baughman <steve.baughman@groombridgewu.com>
`Sent: Thursday, June 13, 2024 8:15 PM
`To: Anstaett, David L. (MSN) <DAnstaett@perkinscoie.com>
`Cc: White, Brandon (WDC) <BMWhite@perkinscoie.com>; *White-ptab <White-
`ptab@perkinscoie.com>; Beel, Bryan D. (POR) <BBeel@perkinscoie.com>; *Greb-ptab <Greb-
`ptab@perkinscoie.com>; *prochnow-ptab <prochnow-ptab@perkinscoie.com>; *Jones-ptab <jones-
`ptab@perkinscoie.com>; *tietz-ptab <tietz-ptab@perkinscoie.com>; *lembo-ptab <lembo-
`ptab@perkinscoie.com>; Bloodworth, Shannon (WDC) <SBloodworth@perkinscoie.com>;
`*Kelley_Nathan-ptab <kelley_nathan-ptab@perkinscoie.com>; Swartz, Rodney (POR)
`<RSwartz@perkinscoie.com>; *Semaglutide-Ozempic <Semaglutide-Ozempic@perkinscoie.com>;
`Wong, Jovial (jwong@winston.com) <jwong@winston.com>; Border, Scott
`<SBorder@winston.com>; slin@winston.com; Sodikoff, Brian <brian.sodikoff@katten.com>; West,
`Christopher W. <christopher.west@katten.com>; Ferenc, Christopher B.
`<christopher.ferenc@katten.com>; Novo-Semaglutide-IPR@groombridgewu.com
`Subject: RE: IPR2023-00724 - Service of draft proposed motion for sanctions
`
`Dave,
`
`I’m happy to speak to you from Japan, but the two specific hours you offered for a meet and
`confer are 4-6am. If you prefer Friday over Monday, I can talk any time after 6:30pm ET Friday.
`
`(We obviously disagree with your other characterizations, but can address those at an
`appropriate time.)
`
`Best,
`
`Novo Nordisk Exhibit 2654
`Mylan Pharms. Inc. v. Novo Nordisk A/S
`IPR2023-00724
`Page 00011
`
`

`

`Steve
`
`
`
`J. Steven Baughman
`Groombridge, Wu, Baughman & Stone LLP
`O +1 202-505-5832, M +1 617-378-5548
`steve.baughman@groombridgewu.com
`
`From: Anstaett, David L. (Perkins Coie) <DAnstaett@perkinscoie.com>
`Sent: Thursday, June 13, 2024 3:37 PM
`To: J. Steven Baughman <steve.baughman@groombridgewu.com>
`Cc: White, Brandon (Perkins Coie) <BMWhite@perkinscoie.com>; White-ptab@perkinscoie.com;
`Beel, Bryan D. (Perkins Coie) <BBeel@perkinscoie.com>; Greb-ptab@perkinscoie.com; prochnow-
`ptab@perkinscoie.com; jones-ptab@perkinscoie.com; tietz-ptab@perkinscoie.com; lembo-
`ptab@perkinscoie.com; Bloodworth, Shannon (Perkins Coie) <SBloodworth@perkinscoie.com>;
`kelley_nathan-ptab@perkinscoie.com; RSwartz@perkinscoie.com; Semaglutide-
`Ozempic@perkinscoie.com; Wong, Jovial (jwong@winston.com) <jwong@winston.com>; Border,
`Scott <SBorder@winston.com>; slin@winston.com; Sodikoff, Brian <brian.sodikoff@katten.com>;
`West, Christopher W. <christopher.west@katten.com>; Ferenc, Christopher B.
`<christopher.ferenc@katten.com>; Novo-Semaglutide-IPR@groombridgewu.com
`Subject: Re: IPR2023-00724 - Service of draft proposed motion for sanctions
`
`Steve,
`
`Given that Patent Owner has accused Petitioner of “breathtaking misconduct,” we are
`surprised to learn that neither you nor anyone on your team is available to confer on
`Friday. Patent Owner’s request for discovery to support its proposed motion, which is
`utterly lacking in any factual or legal basis, even prior to the 21-day period required by
`the rules is frivolous. Regardless, Patent Owner is required to meet and confer before
`bringing such a motion request to the Board. So while I understand from your email that
`it is personally inconvenient for you to meet and confer on Friday, your personal
`inconvenience pales in comparison to the harm Novo’s actions have caused Petitioner.
`And as you were able to send your baseless motion and discovery demand from Japan,
`the need for you to be available to meet and confer while overseas was foreseeable.
`
`We remain available on Friday at anytime you or one of the many members of your team
`is available.
`
`Regards,
`Dave
`
`
`Novo Nordisk Exhibit 2654
`Mylan Pharms. Inc. v. Novo Nord