From:
`To:
`Cc:
`Subject:
`Date:
`
`Trials
`Ferenc, Christopher B.; Trials
`Sodikoff, Brian; Megan Raymond; Novo-Semaglutide-IPR@groombridgewu.com; J. Steven Baughman
`RE: IPR2024-00107
`Wednesday, May 15, 2024 2:39:26 PM
`
`Counsel,
`
`The Board authorizes Petitioner to file its updated stipulation as an exhibit in this proceeding in
`accordance with its May 13 e-mail, reproduced below. The Board also authorizes Patent Owner to
`file a 3-page brief to address discretionary denial issues by no later than Monday, May 20, 2024. The
`Board also authorizes Petitioner to file a one-page response to Patent Owner’s brief addressing
`discretionary denial issues by Wednesday, May 22, 2024. The Board does not believe a call is
`necessary at this time.
`
`Regards,
`Eric W. Hawthorne
`Supervisory Paralegal Specialist
`Patent Trial and Appeal Board
`
`
`
`From: Ferenc, Christopher B. <christopher.ferenc@katten.com>
`Sent: Monday, May 13, 2024 12:32 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: Sodikoff, Brian <brian.sodikoff@katten.com>; Megan Raymond
`<megan.raymond@groombridgewu.com>; Novo-Semaglutide-IPR@groombridgewu.com; J. Steven
`Baughman <steve.baughman@groombridgewu.com>
`Subject: IPR2024-00107
`
`CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE SOURCE before
`responding, clicking on links, or opening attachments.
`
`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 refusal to confirm
`to Patent Owner that it will not 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).
`
`If the Board is inclined to grant Patent Owner’s request for additional briefing, Petitioners request
`authorization to file a 1-page response.
`
`The parties are available for a call with the Board at the following times: Monday, May 13 from 4-5,
`or Wednesday, May 15 from 2-3, or otherwise at the Board’s convenience.
`
`Regards,
`Chris Ferenc
`Counsel for Petitioners
`
`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
`
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