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Mylan Pharmaceuticals Inc v. Sanofi-Aventis Deutschland GmbH

Docket IPR2018-01677, Patent Trial and Appeal Board (Sept. 10, 2018)
Bart Gerstenblith, Hyun Jung, James Mayberry, presiding
Case TypeInter Partes Review
Patent8992486
Patent Owner Sanofi-Aventis Deutschland GmbH
Petitioner Mylan Pharmaceuticals Inc
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11 Refund Approval: Notice of Refund

Document IPR2018-01677, No. 11 Refund Approval - Notice of Refund (P.T.A.B. Feb. 5, 2019)
Petitioner’s request for a refund of certain post-institution fees paid on September 10, 2018, in the above proceeding is hereby granted.
The amount of $21,600.00 has been refunded to Petitioner’s deposit account.
The parties are reminded that unless otherwise permitted by 37 C.F.R. § 42.6(b)(2), all filings in this proceeding must be made electronically in the Patent Trial and Appeal Board End to End (PTAB E2E), accessible from the Board Web site at http://www.uspto.gov/PTAB.
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9 Termination Decision Document: Order Granting Petitioner’s Motion and Dismissing Petition

Document IPR2018-01677, No. 9 Termination Decision Document - Order Granting Petitioner’s Motion and Dismissing Petition (P.T.A.B. Dec. 19, 2018)
Mylan Pharmaceuticals Inc. (“Petitioner”) filed a Petition (Paper 2) requesting institution of an inter partes review of claims 51–57 of U.S. Patent No. 8,992,486 B2.
Petitioner states that an “incorrect document was uploaded due to a clerical error.” Mot.
After Petitioner discovered the error and contacted the Board, the Board presented Petitioner the option of filing a motion to dismiss the Petition with the filing of a corrected petition in a new case.
Authorization for the Motion was provided in an email communication regarding Petitioner’s asserted clerical error.
Richard Torczon Douglas Carsten Wesley Derryberry Tasha Thomas Jeffrey W. Guise Arthur Dykhuis Lorelei Westin Franklin Chu Nicole W. Stafford
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6 Notice of Filing Date Accorded to Petition: Notice of Accord Filing Date

Document IPR2018-01677, No. 6 Notice of Filing Date Accorded to Petition - Notice of Accord Filing Date (P.T.A.B. Oct. 4, 2018)
Failure to provide copies of all patents and printed publications • that Petitioner relies upon in support of the petition.
For more information, please consult the Office Patent Trial Practice Guide, 77 Fed. Reg. 48756 (Aug. 14, 2012), which is available on the Board Web site at http://www.uspto.gov/PTAB.
Patent Owner is advised of the requirement to submit mandatory notice information under 37 C.F.R. § 42.8(a)(2) within 21 days of service of the petition.
The parties are advised that under 37 C.F.R. § 42.10(c), recognition of counsel pro hac vice requires a showing of good cause.
If the parties actually engage in alternative dispute resolution, the PTAB would be interested to learn what mechanism (e.g., arbitration, Case IPR2018-01677 Patent No. 8,992,486 mediation, etc.) was used and the general result.
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8 Motion: Petitioners Unopposed Motion to Dismiss Petition

Document IPR2018-01677, No. 8 Motion - Petitioners Unopposed Motion to Dismiss Petition (P.T.A.B. Nov. 8, 2018)
Case IPR2018-01677 Patent No. 8,992,486 Petitioner Mylan Pharmaceuticals Inc. (“Mylan”) filed its petition on September 10, 2018, but the incorrect document was uploaded due to a clerical error.
Mylan discovered the error on October 26, 2018 and immediately notified the Board by email and requested authorization to file the correct petition under 37 CFR 42.104(c).
In an email on October 29, 2018, Supervisory Paralegal Andrew Kellogg informed the parties that a panel had not yet been assigned and gave Mylan two options: (1) file the correct petition and a motion to correct a clerical error, which would be ruled on later once the panel was assigned or (2) file a motion to dismiss IPR2018-01677 and file a new IPR petition in a separate proceeding prior to the bar date.
Mylan elected the second option and filed a petition in a new proceeding, IPR2019-00122.
Patent Owner Sanofi has indicated that it does not oppose this motion.
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2 Petition: Petition for Inter Partes Review of USP 8,992,486

Document IPR2018-01677, No. 2 Petition - Petition for Inter Partes Review of USP 8,992,486 (P.T.A.B. Sep. 10, 2018)
Cartridge 40 is manufactured of glass and comprises a tube defining an inner chamber 212 which openly terminates at its distal end in a neck 214 having a cap 216 including a rubber disc 218 disposed thereover.
Cartridge 40 is manufactured of glass and comprises a tube defining an inner chamber 212 which openly terminates at its distal end in a neck 214 having a cap 216 including a rubber disc 218 disposed thereover.
[51.Preamble] A clutch for use within a pen type drug delivery device, Møller discloses: “A bottom 19 in a deep cup shaped element, which has a tubular part 20 fitting into the dose setting drum 17 and encompassing the gearbox 9, forms an injection button.
The clutch of claim 51, further comprising a plurality of axially extending “A bottom 19 in a deep cup shaped element, which has a tubular part 20 fitting into the dose setting drum 17 and encompassing the gearbox 9, forms an injection button.
The cup shaped element (i.e. the clutch) thus contains a plurality of axially extended teeth 32 (or) formed in an interior of a flange to facilitate the clutch’s interaction with the dose setting button 18 and dose-setting drum 17.
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10 Refund Request: Petitioners Refund Request

Document IPR2018-01677, No. 10 Refund Request - Petitioners Refund Request (P.T.A.B. Dec. 20, 2018)

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7 Notice: Petitioners Mandatory Change of Information Notices

Document IPR2018-01677, No. 7 Notice - Petitioners Mandatory Change of Information Notices (P.T.A.B. Oct. 12, 2018)

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