`571-272-7822
`
`
`
`
`
` Paper 30
` Entered: June 19, 2019
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`MYLAN PHARMACEUTICALS INC.,
`Petitioner,
`
`v.
`
`SANOFI-AVENTIS DEUTSCHLAND GMBH,
`Patent Owner.
`____________
`
`Cases
`IPR2018-01670 (Patent 8,679,069 B2)
`IPR2018-01676 (Patent 8,603,044 B2)
`IPR2018-01678 (Patent 8,992,486 B2)
` IPR2018-01682 (Patent 9,526,844 B2)1
`____________
`
`Before HYUN J. JUNG, BART A. GERSTENBLITH, and
`JAMES A. TARTAL, Administrative Patent Judges.
`
`JUNG, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`35 C.F.R. § 42.5(a)
`
`
`1 This Order is entered into each case. The parties are not authorized to use
`a multiple-case caption.
`
`
`
`IPR2018-01670 (Patent 8,679,069 B2)
`IPR2018-01676 (Patent 8,603,044 B2)
`IPR2018-01678 (Patent 8,992,486 B2)
`IPR2018-01682 (Patent 9,526,844 B2)
`
`
`On June 19, 2019, a conference call was held between counsel for
`Mylan Pharmaceuticals Inc. (“Petitioner”), counsel for Sanofi-Aventis
`Deutschland GmbH (“Patent Owner”), and Judges Jung, Gerstenblith, and
`Tartal. Patent Owner requested the conference to seek authorization to file a
`limited number of physical exhibits in the above-captioned proceedings. For
`the following reasons, Patent Owner’s request is denied.
`Patent Owner indicated that the physical exhibits it intended to file
`would demonstrate functionality and other aspects of the devices disclosed
`by, for example, one or more references asserted in this proceeding.
`Petitioner expressed concerns with Patent Owner’s request, including the
`need to maintain a reviewable record and the limited relevance of such
`evidence to the challenges based on obviousness over the prior art.
`First, we note that the Board does not have an established procedure
`in place to accept and keep physical evidence as part of an inter partes
`review record. Moreover, the importance of maintaining a publicly
`accessible record of the proceeding would not be promoted by the
`introduction of physical exhibits into the record. As stated in the Scheduling
`Order, the “Board has a strong interest in the public availability of trial
`proceedings.” See, e.g., Paper 20, 3 in IPR2018-001670. Our rules require
`exhibits to be filed primarily electronically. 37 C.F.R. § 42.6(b). Finally,
`we are not persuaded that other means of supporting Patent Owner’s
`arguments are so insufficient to necessitate physical exhibits. In this regard,
`Patent Owner stated its intent to provide photographs and video of physical
`exhibits it intended to rely on in support of its arguments. To the extent
`Patent Owner suggested that such video would be insufficient to convey
`
`
`
`2
`
`
`
`IPR2018-01670 (Patent 8,679,069 B2)
`IPR2018-01676 (Patent 8,603,044 B2)
`IPR2018-01678 (Patent 8,992,486 B2)
`IPR2018-01682 (Patent 9,526,844 B2)
`
`aspects that can only be perceived through handling the exhibits, we are not
`persuaded that handling of a physical exhibit properly constitutes evidence
`supporting patentability.
`
`
`ORDER
`In view of the foregoing, it is ORDERED that Patent Owner’s request
`to file physical exhibits in this proceeding is denied.
`
`
`PETITIONER:
`
`
`Richard Torczon
`Wesley Derryberry
`Douglas Carsten
`Jeffrey W. Guise
`Nicole W. Stafford
`Lorelei Westin
`Arthur Dykhuis
`Tasha Thomas
`Franklin Chu
`Elham F. Steiner
`WILSON SONSINI GOODRICH & ROSATI
`rtorczon@wsgr.com
`wderryberry@wsgr.com
`dcarsten@wsgr.com
`jguise@wsgr.com
`nstafford@wsgr.com
`lwestin@wsgr.com
`adykhuis@wsgr.com
`tthomas@wsgr.com
`ychu@wsgr.com
`esteiner@wsgr.com
`
`
`
`
`3
`
`
`
`IPR2018-01670 (Patent 8,679,069 B2)
`IPR2018-01676 (Patent 8,603,044 B2)
`IPR2018-01678 (Patent 8,992,486 B2)
`IPR2018-01682 (Patent 9,526,844 B2)
`
`PATENT OWNER:
`
`Elizabeth Stotland Weiswasser
`Anish R. Desai
`Sudip K. Kundu
`Kathryn M. Kantha
`Adrian C. Percer
`Brian C. Chang
`William S. Ansley
`Matthew D. Seiger
`WEIL, GOTSHAL & MANGES LLP
`elizabeth.weiswasser@weil.com
`anish.desai@weil.com
`sudip.kundu@weil.com
`kathryn.kantha@weil.com
`adrian.percer@weil.com
`brian.chang@weil.com
`sutton.ansley@weil.com
`matthew.seiger@weil.com
`
`W. Karl Renner
`John S. Goetz
`Joshua A. Griswold
`Matthew S. Colvin
`FISH & RICHARDSON P.C.
`PTABInbound@fr.com
`
`
`
`
`
`4
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
