UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`
`MYLAN PHARMACEUTICALS INC.,
`Petitioner,
`
`v.
`
`MERCK SHARP & DOHME CORP.,
`Patent Owner.
`__________________
`
`Case No. IPR2020-00040
`U.S. Patent No. 7,326,708
`__________________
`
`DECLARATION OF ANTHONY H. SHEH
`
`
`
`
`
`
`
`
`
`
`
`
`Merck Sharp & Dohme Corp. Exhibit 2014
`Mylan Pharmaceuticals Inc. v. Merck Sharp & Dohme Corp.
`IPR2020-00040
`Page 1
`
`
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`
`MYLAN PHARMACEUTICALS INC.,
`Petitioner,
`
`v.
`
`MERCK SHARP & DOHME CORP.,
`Patent Owner.
`__________________
`
`Case No. IPR2020-00040
`U.S. Patent No. 7,326,708
`__________________
`
`DECLARATION OF ANTHONY H. SHEH
`
`
`
`
`
`
`
`
`
`
`
`
`Merck Sharp & Dohme Corp. Exhibit 2014
`Mylan Pharmaceuticals Inc. v. Merck Sharp & Dohme Corp.
`IPR2020-00040
`Page 1
`
`
`
`DECLARATION OF ANTHONY H. SHEH
`
`I, Anthony H. Sheh, hereby declare as follows.
`
`I.
`
`INTRODUCTION
`
`1.
`
`I am more than 18 years of age and competent to present this
`
`declaration based on my personal knowledge of the facts set forth herein.
`
`2.
`
`I understand that this declaration is being submitted in support of
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`Patent Owner’s Supplemental Brief Regarding Apple Inc. v. Fintiv, Inc., IPR2020-
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`00019, Paper 11 (P.T.A.B. Mar. 20, 2020). It is intended to provide a limited
`
`supplement to the evidentiary record related to the Board’s request for additional
`
`briefing and evidence regarding the factors articulated in Apple v. Fintiv. See
`
`Paper 17 at 3 (“FURTHER ORDERED that the filing of limited additional
`
`evidence (only that which is absolutely necessary) to address the Fintiv factors is
`
`authorized; no other new evidence is permitted.”).
`
`3.
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`I am a member of the bar of the U.S Patent & Trademark Office, have
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`been an associate at Williams & Connolly since October 2017, and have been
`
`designated as backup counsel for Patent Owner in this proceeding.
`
`4.
`
`I am actively engaged in the representation of Patent Owner Merck
`
`Sharp & Dohme Corp. (“Merck”) in this case and in related matters in federal
`
`district courts, including the assertion of U.S. Patent No. 7,326,708 (EX1001, “the
`
`’708 patent”) in Merck Sharp & Dohme Corp. v. Mylan Pharmaceuticals Inc.,
`
`C.A. No. 19-cv-101-IMK (N.D. W. Va.); In re Sitagliptin Phosphate (’708 & ’921)
`
`2
`
`Merck Sharp & Dohme Corp. Exhibit 2014
`Mylan Pharmaceuticals Inc. v. Merck Sharp & Dohme Corp.
`IPR2020-00040
`Page 2
`
`
`
`DECLARATION OF ANTHONY H. SHEH
`
`Patent Litigation, MDL No. 19-2902-RGA (D. Del.); and related cases. I have
`
`personal knowledge of the matters referenced below.
`
`5.
`
`EX2015 is a true and correct copy of the docket sheet for In re
`
`Sitagliptin Phosphate (’708 & ’921) Patent Litigation, MDL No. 19-2902-RGA
`
`(D. Del.), as of April 13, 2020.
`
`6.
`
`EX2016 is a true and correct copy of a Stipulation and [Proposed]
`
`Order to Amend Scheduling Order, In re Sitagliptin Phosphate (’708 & ’921)
`
`Patent Litigation, MDL No. 19-2902-RGA (D. Del. Mar. 16, 2020), ECF No. 83.
`
`7.
`
`EX2017 is a true and correct copy of the docket sheet for Merck
`
`Sharp & Dohme Corp. v. Mylan Pharms. Inc., C.A. No. 19-cv-101-IMK (N.D. W.
`
`Va.), as of April 13, 2020.
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`8.
`
`EX2018 is a true and correct copy of Defendant’s Answer to
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`Plaintiff’s Complaint and Counterclaims, Merck Sharp & Dohme Corp. v. Mylan
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`Pharms. Inc., No. 19-cv-101-IMK (N.D. W. Va. May 31, 2019), ECF No. 32.
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`9.
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`EX2019 is a true and correct copy of Merck and Mylan’s Joint
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`Quarterly Status Report, Merck Sharp & Dohme Corp. v. Mylan Pharms. Inc., No.
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`19-cv-101-IMK (N.D. W. Va. Jan. 3, 2020), ECF No. 50.
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`10. EX2020 is a true and correct copy of the REDACTED VERSION,
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`Brief in Support of Mylan Pharmaceuticals Inc. and Mylan Inc.’s Motion to
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`Dismiss for Improper Venue and Failure to State a Claim, Merck Sharp & Dohme
`
`3
`
`Merck Sharp & Dohme Corp. Exhibit 2014
`Mylan Pharmaceuticals Inc. v. Merck Sharp & Dohme Corp.
`IPR2020-00040
`Page 3
`
`
`
`Corp. v. Mylan Pharmaceuticals Inc., No. 19-315-RGA (D. Del. Mar. 28, 2019),
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`DECLARATION OF ANTHONY H. SHEH
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`ECF No. 15.
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`11. EX2021 is a true and correct copy of the docket sheet for In re
`
`Sitagliptin Phosphate (’708 & ’921) Patent Litigation, MDL No. 2902 (J.P.M.L.),
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`as of April 13, 2020.
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`12. EX2022 is a true and correct copy of Merck’s Memorandum in
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`Support of Motion to Transfer, In re Sitagliptin Phosphate (’708 & ’921) Patent
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`Litigation, MDL No. 2902 (J.P.M.L. May 15, 2019), ECF No. 1-1.
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`13. EX2023 is true and correct copy of In re Sitagliptin Phosphate (’708
`
`& ’921) Patent Litigation, 402 F. Supp. 3d 1366 (J.P.M.L. 2019).
`
`14. EX2024 is a true a correct copy of the docket sheet for Plastic
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`Omnium Advanced Innovation & Research v. Donghee America Inc., No. 16-cv-
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`187-LPS (D. Del.), as of April 13, 2020.
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`15. Discovery is ongoing in the Delaware MDL proceedings on the issues
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`of infringement and validity of the ’708 patent. No MDL defendant has stipulated
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`to infringement of any claim of the ’708 patent.
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`16. To date, Merck has received and objected and/or responded to 14
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`interrogatories, over 120 requests for production, and 8 requests for admission
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`from the MDL defendants relating to the ’708 patent. Merck has propounded a
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`total of 72 interrogatories and 936 requests for production to the MDL defendants,
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`4
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`Merck Sharp & Dohme Corp. Exhibit 2014
`Mylan Pharmaceuticals Inc. v. Merck Sharp & Dohme Corp.
`IPR2020-00040
`Page 4
`
`
`
`DECLARATION OF ANTHONY H. SHEH
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`and has served a third-party subpoena relating to the ’708 patent. The parties have
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`expended substantial time and resources attempting to narrow and/or resolve their
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`discovery disputes.
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`17. Substantial completion of document production in the Delaware
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`proceedings is due on April 22, 2020. See EX2015 (docket entry dated March 17,
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`2020, so ordering the stipulation at docket entry 83, EX2016).
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`18. To date, Merck has produced 1,922,357 pages of documents to
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`defendants in MDL No. 19-2902-RGA; Mylan has produced 23,605 pages; and the
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`remaining defendants have produced at least 699,347 pages.
`
`*
`
`*
`
`*
`
`I hereby declare that all statements made herein of my own knowledge true
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`and that all statements made on information and belief are believed to be true; and
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`further that these statements were made with the knowledge that willful false
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`statements and the like so made are punishable by fine or imprisonment, or both,
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`under Section 1001 of Title 18 of the United States Code.
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`
`Dated: April 14, 2020
`
`
`
`Anthony H. Sheh
`
`
`
`
`
`
`5
`
`Merck Sharp & Dohme Corp. Exhibit 2014
`Mylan Pharmaceuticals Inc. v. Merck Sharp & Dohme Corp.
`IPR2020-00040
`Page 5
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