IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`TEVA PHARMACEUTICALS USA, INC.,
`Petitioner
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`v.
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`CORCEPT THERAPEUTICS, INC.
`Patent Owner
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`Case PGR2019-00048
`Patent No. 10,195,214 B2
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`PETITIONER’S REPLY IN SUPPORT OF
`PETITION FOR POST-GRANT REVIEW
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`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`TEVA PHARMACEUTICALS USA, INC.,
`Petitioner
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`v.
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`CORCEPT THERAPEUTICS, INC.
`Patent Owner
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`Case PGR2019-00048
`Patent No. 10,195,214 B2
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`PETITIONER’S REPLY IN SUPPORT OF
`PETITION FOR POST-GRANT REVIEW
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`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`PGR2019-00048
`Patent 10,195,214
`Teva respectfully submits this authorized Reply to address the argument in
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`Corcept’s POPR that institution would be “inefficient” because a district-court case
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`involving the ’214 patent “is progressing toward...trial in the summer of 2020.”
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`POPR, 1, 5-9. Corcept is incorrect. As explained below, the district-court case does
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`not justify denying institution because the district court is unlikely to issue a final
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`decision on the validity of the ’214 patent until well into 2021 (long after the Board
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`would issue a Final Written Decision in this proceeding).
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`As Corcept admits in a footnote, Corcept sued Teva on the ’214 patent only
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`about seven months ago, in February 2019. Id., 6 n.1. That lawsuit was then
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`consolidated with an ongoing case involving three other patents (none of which is
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`in the same family as the ’214 patent). The consolidated case is entering claim
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`construction, with the parties set to file opening Markman briefs in October and to
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`propose a Markman hearing date on December 30, 2019. TEVA1063, 2. That is the
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`last deadline on the schedule. Contrary to Corcept’s argument, POPR, 7, the court
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`has not scheduled a Markman hearing, much less a trial. TEVA1063, 2.
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`This schedule was entered by the district court at Corcept’s urging. Teva
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`proposed (and would still desire) a much more expedited schedule, but the Court
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`adopted Corcept’s proposal instead. See TEVA1064, 2-3. Moreover, under
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`Corcept’s proposal, fact discovery will not end until the “[l]ater of Markman
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`decision or March 30, 2020,” with expert reports due 60 days later, responsive
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`- 1 -
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`PGR2019-00048
`Patent 10,195,214
`expert reports due 60 days after that, reply expert reports due 30 days after that,
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`and expert discovery closed 45 days after that. Id., 3. If Corcept has its way, then,
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`expert discovery will not end until, at the earliest, mid-October, and any district-
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`court decision would likely come well into 2021, long after the FWD. Institution is
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`appropriate under those circumstances, particularly given the strong showing of
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`unpatentability set forth in Teva’s petition. See Mylan Pharm. Inc. v. Sanofi-
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`Aventis Deutscheland GmbH, IPR2018-01682, Paper 19 at 16-17 (P.T.A.B. Apr. 3,
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`2019) (declining to deny petition in view of parallel district-court action because
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`district court had not set a trial date); Samsung Elecs. Co., Ltd. v. Immersion Corp.,
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`IPR2018-01500, Paper 10 at 13-14 (P.T.A.B Apr. 2, 2019) (declining to deny
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`institution in view of parallel district-court action because the petitioner made
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`strong showing of unpatentability); Facebook, Inc. v. Search & Soc. Media
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`Partners, LLC, IPR2018-01622, Paper 8 at 9-10 (P.T.A.B. Mar. 4, 2019)
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`(declining to deny institution in view of parallel district-court action because “no
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`claim constructions ha[d] been determined and discovery remain[ed] open”).
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`The institution decisions cited in Corcept’s POPR (at 7-8) are inapposite. In
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`those cases, the parallel district-court case was set to proceed to trial months before
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`a Final Written Decision would issue. See NHK Spring Co., Ltd. v. Intri-Plex
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`Techs., Inc., IPR2018-00752, Paper 8 (P.T.A.B. Sept. 12, 2018); Mylan Pharm.,
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`Inc. v. Bayer Intellectual Prop. GMBH, IPR2018-01143, Paper 13 at 13 (P.T.A.B.
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`PGR2019-00048
`Patent 10,195,214
`Dec. 3, 2018); E-One, Inc. v. Oshkosh Corp., IPR2019-00161, Paper 16 (P.T.A.B.
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`May 15, 2019). Here, that is not the case. And, in any event, “NHK Spring does not
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`suggest, much less hold, that inter partes review should be denied under § 314(a)
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`solely because a district court is scheduled to consider the same validity issues
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`before the inter partes review would be complete.” Intuitive Surgical, Inc. v.
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`Ethicon LLC, IPR2018-01703, Paper 7 at 13 (P.T.A.B. Feb. 19, 2019).
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`Corcept also suggests that the district-court case may involve preliminary
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`injunction proceedings prior to the end of the 30-month stay in August 2020. See
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`POPR, 6-7. Perhaps so; but PI proceedings will not finally resolve the patentability
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`of the challenged claims. The question at the PI stage is whether the accused
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`infringer has “raise[d] a ‘substantial question’ concerning validity, enforceability,
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`or infringement.” Genentech, Inc. v. Novo Nordisk A/S, 108 F.3d 1361, 1364 (Fed.
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`Cir. 1997). A PI-stage decision, then, may not involve validity at all (for example,
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`if Teva shows a substantial question concerning infringement). And even if it does,
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`any decision on validity would be only a preliminary determination. See Altana
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`Pharma AG v. Teva Pharms. USA, Inc., 566 F.3d 999, 1006 (Fed. Cir. 2009). Thus,
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`even if PI proceedings occur, final resolution of the validity of the ’214 patent will
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`still have to await a decision after trial on the merits—a decision that, under
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`Corcept’s proposed schedule, will not come until well into 2021. Institution will
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`not be inefficient.
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`PGR2019-00048
`Patent 10,195,214
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`Respectfully Submitted
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`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
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` Deborah Sterling, Ph.D.
`Date: September 23, 2019
` Lead Attorney for Petitioner
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`1100 New York Avenue, N.W. Registration No. 62,732
`Washington, D.C. 20005-3934
`(202) 371-2600
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`CERTIFICATE OF SERVICE (37 C.F.R. § 42.6(e))
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`The undersigned hereby certifies that the above-captioned “Petitioner’s
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`Reply In Support of Petition for Post-Grant Review,” along with Exhibits 1063 and
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`1064, were served in their entirety upon the Patent Owner on September 23, 2019,
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`via email to the following individuals:
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`F. Dominic Cerrito
`Eric C. Stops
`John P. Galanek
`Frank C. Calvosa
`Quinn Emanuel Urquhart & Sullivan, LLP
`51 Madison Avenue, 22nd Floor
`New York, NY 10010
`nickcerrito@quinnemanuel.com
`ericstops@quinnemanuel.com
`johngalanek@quinnemanuel.com
`frankcalvosa@quinnemanuel.com
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` STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
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` Deborah Sterling, Ph.D.
`Date: September 23, 2019
` Lead Attorney for Petitioner
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`1100 New York Avenue, N.W. Registration No. 62,732
`Washington, D.C. 20005-3934
`(202) 371-2600
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