`From:
`Sent:
`To:
`Cc:
`
`Subject:
`
`Trials <Trials@USPTO.GOV>
`Wednesday, November 29, 2023 10:57 AM
`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
`
`Follow Up Flag:
`Flag Status:
`
`Follow up
`Flagged
`
`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
`1
`
`Novo Nordisk Exhibit 2005
`Dr. Reddy's Laboratories v. Novo Nordisk A/S
`IPR2024-00009
`Page 00001
`
`
`
`trial that was originally scheduled 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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`2
`
`Novo Nordisk Exhibit 2005
`Dr. Reddy's Laboratories v. Novo Nordisk A/S
`IPR2024-00009
`Page 00002
`
`