From:
`To:
`Cc:
`
`Subject:
`Date:
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`Trials
`J. Steven Baughman; Trials
`White, Brandon (Perkins Coie); Beel, Bryan D. (Perkins Coie); White-ptab@perkinscoie.com; Greb-
`ptab@perkinscoie.com; prochnow-ptab@perkinscoie.com; jones-ptab@perkinscoie.com; tietz-
`ptab@perkinscoie.com; lembo-ptab@perkinscoie.com; Semaglutide-Ozempic@perkinscoie.com; Novo-
`Semaglutide-IPR@groombridgewu.com; Megan Raymond
`RE: IPR2023-00724 - Request for Conference Call
`Wednesday, November 29, 2023 10:56:55 AM
`
`Dear Counsel,
`
`From the Board –
`
`The time for filing a request for rehearing in the above-referenced case has expired. We do not
`agree that the addition of Petitioner Mylan as a party to a trial that may begin a few days before our
`final written decision is due or the filing of two additional petitions by other petitioners constitutes
`good cause for the waiver of the request for rehearing deadline. Also, we noted in our Institution
`Decision that “Patent Owner does not address Petitioner’s assertions that a trial here would most
`likely conclude before the parallel Delaware litigation, and Petitioner’s stipulation ‘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.’” Paper 10, 16. Patent Owner’s request for
`leave to file a request for rehearing of institution is denied. No call is necessary at this time.
`
`Regards,
`
`Esther Goldschlager
`Supervisory Paralegal Specialist
`Patent Trial & Appeal Board
`U.S. Patent & Trademark Office
`
`From: J. Steven Baughman <steve.baughman@groombridgewu.com>
`Sent: Monday, November 27, 2023 7:58 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: White, Brandon (Perkins Coie) <BMWhite@perkinscoie.com>; Beel, Bryan D. (Perkins Coie)
`<BBeel@perkinscoie.com>; White-ptab@perkinscoie.com; Greb-ptab@perkinscoie.com; prochnow-
`ptab@perkinscoie.com; jones-ptab@perkinscoie.com; tietz-ptab@perkinscoie.com; lembo-
`ptab@perkinscoie.com; Semaglutide-Ozempic@perkinscoie.com; Novo-Semaglutide-
`IPR@groombridgewu.com; Megan Raymond <megan.raymond@groombridgewu.com>
`Subject: IPR2023-00724 - Request for Conference Call
`
`CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE SOURCE before
`responding, clicking on links, or opening attachments.
`
`Patent Owner writes to request leave to file a request for rehearing of institution, or other
`comparable briefing as the Board may deem appropriate, to address changes in circumstances that
`have arisen since institution and that impact the Fintiv factors, including that (1) after an October 31,
`2023 stipulation and order by the district court adding Mylan to a trial that was originally scheduled
`
`Exhibit 3002
`
`

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`only for other parties, Mylan is now scheduled for trial before the FWD in this IPR would be due
`(without regard to whether the last sentence of 35 U.S.C. §315(b) becomes applicable), and (2) there
`are two pending copycat petitions. Patent Owner requests 5 pages of briefing to address these
`issues. Patent Owner has, alternatively, requested that Petitioner agree to provide a Sotera
`stipulation, but Petitioner has declined. To the extent Patent Owner’s request for additional briefing
`is granted, Patent Owner would not oppose an opposition brief from Petitioner of equal
`length. Regarding Petitioner's assertions below arguing its positions, Patent Owner notes its
`understanding Petitioner’s inclusion of such argument in its email is improper and a violation of the
`Board's procedures. Accordingly, Patent Owner does not attempt herein to respond to the
`substance of those arguments, other than to note its disagreement and to indicate that it is
`prepared to address those arguments on any call that the Board may schedule and in the requested
`briefing. Petitioner states its position as follows: Patent Owner’s request for leave rests on two
`alleged “change[s] in circumstances that have arisen since institution.” But there are no changed
`circumstances, and Patent Owner’s request is untimely. First, Petitioner’s trial date is not a “change
`in circumstances.” Although Patent Owner asserts that Petitioner is “now” scheduled for trial late in
`2024, the Delaware trial was scheduled on June 30, 2022, and that trial date was addressed in the
`Petition. See Pet. at 65; see also Ex. 1082. It remains the case that “a final written decision should
`issue before a decision is expected to be issued by any district court” as stated in the Petition.
`Second, while two copycat petitions have been filed, Patent Owner has indicated it intends to file
`preliminary responses, and there has been no joinder ruling. The mere existence of copycat petitions
`is not a changed circumstance for this trial. Third, Patent Owner’s request is an untimely attempt to
`do by rehearing what Patent Owner did not do before: address the Fintiv factors on the merits.
`Petitioner addressed Fintiv in its Petition and offered a Sand Revolution stipulation, Pet. at 65-66, but
`Patent Owner’s Preliminary Response addressed neither Fintiv nor the stipulation. It is also too late
`for Patent Owner to address Fintiv now because any request for rehearing should have been filed by
`October 18, 2023. For all these reasons, Petitioner respectfully requests that the Board deny the
`request for leave to file for rehearing.
`
`The parties are available for the requested call at 4pm ET on Thursday (November 30), Friday
`(December 1), or Monday (December 4), or as the Board may otherwise direct. (These times reflect
`that counsel for Patent Owner are presently on business travel in Asia.)
`
`Respectfully submitted,
`J. Steven Baughman
`Counsel for Patent Owner
`
`J. Steven Baughman
`Groombridge, Wu, Baughman & Stone LLP
`801 17th Street, NW, Suite 1050
`Washington, DC 20006
`O +1 202-505-5832, M +1 617-378-5548
`steve.baughman@groombridgewu.com
`Pronouns: he/his
`
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