`571-272-7822
`Entered: March 29, 2024
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`DR. REDDY’S LABORATORIES, INC. and
`DR. REDDY’S LABORATORIES, LTD.,
`Petitioner,
`v.
`NOVO NORDISK A/S,
`Patent Owner.
`____________
`
`IPR2024-00009
`Patent 10,335, 462 B2
`____________
`
`
`Before JOHN G. NEW, SUSAN L. C. MITCHELL, and ROBERT A. POLLOCK,
`Administrative Patent Judges.
`
`MITCHELL, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`
`IPR2024-00009
`Patent 10,335,462 B2
`
`
`On March 22, 2024, Petitioner contacted the Board by email requesting
`authorization to file into the record of this proceeding a Sotera1 stipulation,
`referenced in its Reply Brief, and Petitioner also asserts it will file the same
`stipulation in the parallel district court litigation should the Board institute an inter
`partes review. Petitioner represented that Patent Owner “objects to the filing of
`the stipulation, which differs in scope from the one set forth in Petitioner’s Reply
`Brief, and which would be the third stipulation by Petitioner in this IPR.” Patent
`Owner requested a call in the event the Board was inclined to grant the request and
`also requested briefing to respond to the filing.
`
`On Wednesday, March 27, 2024, the Board held a conference call with the
`parties for which Judges Mitchell, Pollock, and New were present, and the parties
`were represented by their respective counsel. Petitioner explained that it seeks to
`file this Sotera stipulation to respond to Patent Owner’s assertions that, as a joining
`party, Petitioner may argue that any estoppel based on grounds that “could have
`reasonably been raised” is a nullity. See Patent Owner Sur-Reply 2–3. Petitioner
`asserts that the additional language in the stipulation agreeing that it is estopped to
`the same extent as the Petitioner in the original case to which it seeks joinder
`resolves any ambiguity on this point. Petitioner also stated that it would not
`present any invalidity arguments in the parallel district court litigation based on
`35 U.S.C. §§ 102 or 103.
`
`Patent Owner responds that this is Petitioner’s “third bite at the apple” to file
`an appropriate stipulation to respond to Patent Owner’s concerns. Patent Owner
`asserts that because such a stipulation was not presented with the Petition, Patent
`
`
`1 Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1,
`2020) (precedential as to § II.A) (discussing Petitioner’s broad stipulation to limit
`invalidity grounds in district court).
`
`
`
`2
`
`
`
`IPR2024-00009
`Patent 10,335,462 B2
`
`Owner has spent time and effort responding to Petitioner’s changing position, and
`has thus been prejudiced.
`Upon consideration of these arguments presented by the parties, we found
`good cause to grant Petitioner’s request to file its Sotera declaration to limit its
`ability to present certain invalidity arguments in the parallel district court litigation.
`We also authorized additional briefing for Patent Owner to address discretionary
`denial issues in view of this stipulation.
`Petitioner also sought authorization to file an Order by the District Court in
`the parallel litigation moving the trial date from September to December. We
`granted such authorization to file the Order as an exhibit in this proceeding.
`
`ORDER
`
`Accordingly, it is
`ORDERED that by no later than March 28, 2024, Petitioner will file as
`exhibits: (1) its Sotera stipulation; and (2) the District Court Order changing the
`trial date;
`ORDERED that by no later than April 3, 2024, Patent Owner will file any
`additional briefing, not to exceed three pages, addressing discretionary denial
`issues in view of Petitioner’s Sotera declaration.
`
`
`
`
`
`
`3
`
`
`
`
`
`IPR2024-00009
`Patent 10,335,462 B2
`
`PETITIONER:
`
`Jovial Wong
`Scott Border
`WINSTON & STRAWN LLP
`jwong@winston.com
`sborder@winston.com
`
`PATENT OWNER:
`
`Jon Baughman
`Megan Raymond
`GROOMBRIDGE, WU, BAUGHMAN & STONE LLP
`steve.baughman@groombridgewu.com
`megan.raymond@groombridgewu.com
`
`
`
`
`
`4
`
`
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