7/15/2020
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`Mylan Pharmaceuticals, Inc., v. Merck Sharp, et al.Telephonic Conference
`
` UNITED STATES PATENT AND TRADEMARK OFFICE
`
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Page 1
`
`MYLAN PHARMACEUTICALS, INC., )
`
` )
` Petitioner, )
`
` ) Case No. IPR2020-00040
` vs. )
`
` ) U.S. Patent
`MERCK SHARP & DOHME CORP., ) No. 7,326,708
`
` )
` Patent Owner.)
`
`________________________________)
`
` TELEPHONIC CONFERENCE
` July 15, 2020
`
` REPORTED BY: STEPHANIE WHITEHEAD, RDR, RMR, CRR,
`
` CSR No. 10093
`
`____________________________________________________
` DIGITAL EVIDENCE GROUP
`
` 1730 M Street, NW, Suite 812
` Washington, D.C. 20036
`
` (202) 232-0646
`
`www.DigitalEvidenceGroup.com Digital Evidence Group C'rt 2020
`
`202-232-6046
`Merck Sharp & Dohme Corp. Exhibit 2041
`Mylan Pharmaceuticals Inc. v. Merck Sharp and Dohme Corp.
`IPR2020-00040 Page 1
`
`
`
`Mylan Pharmaceuticals, Inc., v. Merck Sharp, et al.Telephonic Conference
`
` UNITED STATES PATENT AND TRADEMARK OFFICE
`
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Page 1
`
`MYLAN PHARMACEUTICALS, INC., )
`
` )
` Petitioner, )
`
` ) Case No. IPR2020-00040
` vs. )
`
` ) U.S. Patent
`MERCK SHARP & DOHME CORP., ) No. 7,326,708
`
` )
` Patent Owner.)
`
`________________________________)
`
` TELEPHONIC CONFERENCE
` July 15, 2020
`
` REPORTED BY: STEPHANIE WHITEHEAD, RDR, RMR, CRR,
`
` CSR No. 10093
`
`____________________________________________________
` DIGITAL EVIDENCE GROUP
`
` 1730 M Street, NW, Suite 812
` Washington, D.C. 20036
`
` (202) 232-0646
`
`www.DigitalEvidenceGroup.com Digital Evidence Group C'rt 2020
`
`202-232-6046
`Merck Sharp & Dohme Corp. Exhibit 2041
`Mylan Pharmaceuticals Inc. v. Merck Sharp and Dohme Corp.
`IPR2020-00040 Page 1
`
`
`
`7/15/2020
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`Mylan Pharmaceuticals, Inc., v. Merck Sharp, et al.Telephonic Conference
`
` A P P E A R A N C E S
`
`Page 2
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`APR JUDGES: SHERIDAN K. SNEDDEN
`
` ROBERT A. POLLOCK
`
` TIMOTHY G. MAJORS
`
`FOR PETITIONER:
`
` Katten Muchin
`
` BY: JITENDRA MALIK, Ph.D, ESQ.
`
` 550 South Tryon Street
`
` Charlotte, North Carolina 28202
`
` 704.344.3185
`
` jitty.malik@katten.com
`
`FOR PATENT OWNER:
`
` Williams & Connolly
`
` BY: STANLEY FISHER, ESQ.
`
` 725 Twelfth Street, N.W.
`
` Washington, D.C. 20005
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` sfisher@wc.com
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`ALSO PRESENT: ELISE BAUMGARTEN, BRUCE GENDERSON
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`www.DigitalEvidenceGroup.com Digital Evidence Group C'rt 2020
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`202-232-6046
`Merck Sharp & Dohme Corp. Exhibit 2041
`Mylan Pharmaceuticals Inc. v. Merck Sharp and Dohme Corp.
`IPR2020-00040 Page 2
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`
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`Page 3
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` On Wednesday, July 15, 2020 commencing at the hour
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`of 1:00 p.m. (EDT), the following proceedings were had
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`telephonically before me, Stephanie L. Whitehead, Certified
`
`Shorthand Reporter in and for the State of California.
`
` Wednesday, July 15, 2020; 1:00 p.m.
`
` (The following telephonic hearing was
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` reported, and the record may reflect
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` failures in transmission or speaker
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` identification if clarification may
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` not be feasible.)
`
` JUDGE MAJORS: All right. This is Judge Majors.
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`Online with me are Judges Pollock and Sneddon. I know we
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`have Mr. Malik on and Mr. Fisher on for the petitioner in
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`IPR2020-00040 and -- Mr. Malik on for petitioner, and
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`Mr. Fisher on for patent owner in that case as well as the
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`court reporter.
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` Is there anybody else on the line?
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` MR. MALIK: No one else for petitioner, your
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`Honor.
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`www.DigitalEvidenceGroup.com Digital Evidence Group C'rt 2020
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`202-232-6046
`Merck Sharp & Dohme Corp. Exhibit 2041
`Mylan Pharmaceuticals Inc. v. Merck Sharp and Dohme Corp.
`IPR2020-00040 Page 3
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`Page 4
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` MR. GENDERSON: Your Honor --
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` MS. BAUMGARTEN: -- Baumgarten.
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` THE REPORTER: I'm sorry. I didn't get that
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`last appearance.
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` MS. BAUMGARTEN: Apologies. This is Elise
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`Baumgarten on behalf of patent owner as well.
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` THE REPORTER: Thank you.
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` JUDGE MAJORS: Hi, Ms. Baumgarten.
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` MR. GENDERSON: Bruce Genderson on behalf of
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`patent owner.
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` JUDGE MAJORS: All right. Mr. Fisher and
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`Mr. Malik, are you going to be speaking today on behalf of
`
`your respective clients?
`
` MR. FISHER: Yes, your Honor.
`
` MR. MALIK: Yes, your Honor.
`
` JUDGE MAJORS: Okay. Do either of you know --
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`just guessing, but are the other -- the other petitioners
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`for which the joinder motion, they're not going to be on
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`this call; is that right?
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` MR. MALIK: To the best of petitioner's
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`knowledge that's the case, yes.
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` JUDGE MAJORS: Okay. All right. Why don't we
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`www.DigitalEvidenceGroup.com Digital Evidence Group C'rt 2020
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`202-232-6046
`Merck Sharp & Dohme Corp. Exhibit 2041
`Mylan Pharmaceuticals Inc. v. Merck Sharp and Dohme Corp.
`IPR2020-00040 Page 4
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`get going then. As I said, this is a conference call in
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`IPR2020-00040. We're here to address a request by patent
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`owner, which we'll start with that. And, Mr. Malik, we
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`saw that you had sent in an e-mail of your own on behalf
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`of petitioner.
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` But why don't we start then with Mr. Fisher.
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`We've read your e-mail; you can outline patent owner's
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`position. And then, Mr. Malik, you'll have an opportunity
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`to respond.
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` MR. FISHER: Sure, your Honor. This is Stan
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`Fisher for patent owner Merck. We thought it prudent to
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`reach out to your Honors to request permission to file a
`
`motion to adjust the scheduling order in Mylan IPR. In
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`light of the pending joinder motions in IPR2020-01045,
`
`-0160, and -0172, we understand that Mylan likely or does
`
`oppose any adjustment to the schedule.
`
` Briefly, your Honor, we think that schedule
`
`adjustment will give the Board and the parties time to
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`sort out a number of issues raised by the joinder motions
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`and highlighted in our opposition papers which were filed
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`in the new cases that I just identified.
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` Based on the present schedule in the Mylan IPR,
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`www.DigitalEvidenceGroup.com Digital Evidence Group C'rt 2020
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`202-232-6046
`Merck Sharp & Dohme Corp. Exhibit 2041
`Mylan Pharmaceuticals Inc. v. Merck Sharp and Dohme Corp.
`IPR2020-00040 Page 5
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`
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`7/15/2020
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`Page 6
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`a reply briefing on a joinder won't be submitted by --
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`I'll call them the new petitioners until the week leading
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`up to our patent owner response being due. We're of
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`course then unsure when a decision on joinder might be
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`issued by the Board.
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` If joinder's granted, as discussed in our
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`opposition there's party discovery on the new joinder
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`plaintiffs relating to some inconsistent statements and
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`positions we believe they've taken, we'd like the
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`opportunity to speak to discovery. We understand that it
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`may be opposed, and we may need to come to the Board, to
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`your Honors, to address those issues.
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` And, you know, I think the bottom line is we'd
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`like the opportunity to sort out joinder, to sort out the
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`central sequencing of the schedule and, if joinder's
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`granted, to allow for some discovery or at least our
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`ability to seek some discovery all before we need to
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`depose what would then be a joint expert and to
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`potentially -- you know, and then to submit our patent
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`owner response.
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` You know, I think that the bottom line here is
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`we'd like to have some certainty regarding the parties
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`www.DigitalEvidenceGroup.com Digital Evidence Group C'rt 2020
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`202-232-6046
`Merck Sharp & Dohme Corp. Exhibit 2041
`Mylan Pharmaceuticals Inc. v. Merck Sharp and Dohme Corp.
`IPR2020-00040 Page 6
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`
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`7/15/2020
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`Page 7
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`and, you know, what potential discovery and evidence might
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`be part of a trial before we need to proceed and, you
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`know, exercise various judgments concerning strategy for
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`the expert deposition and our patent owner response.
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`Which petitioners are in the trial, what discovery or
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`evidence may be part of the trial affects those strategy
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`decisions. And in that regard, it would be helpful to
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`have a schedule adjustment to allow the Board to sort out
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`these issues and to have some certainty before we need to,
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`you know, make decisions and take positions that will, you
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`know, affect Merck's rights throughout the rest of the
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`trial.
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` You know, I think your Honors know the very
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`standard, and we'd like the opportunity to submit, you
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`know, a brief. It need not be long; many of these
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`positions are already outlined in our opposition papers in
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`the other case. But the opportunity to put in writing in
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`this case a motion to adjust the schedule so that, you
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`know, depending on what happens with the joinder issues we
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`can proceed in due course.
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` So I'm happy to answer any questions on that or
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`to respond to anything Mr. Malik has to say.
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`202-232-6046
`Merck Sharp & Dohme Corp. Exhibit 2041
`Mylan Pharmaceuticals Inc. v. Merck Sharp and Dohme Corp.
`IPR2020-00040 Page 7
`
`
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`7/15/2020
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`Mylan Pharmaceuticals, Inc., v. Merck Sharp, et al.Telephonic Conference
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`Page 8
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` JUDGE MAJORS: Mr. Malik, why don't you go
`
`first, and then we may have a few questions for one or
`
`both of you.
`
` MR. MALIK: Sure. Thank you, your Honors.
`
` So first of all, this dispute has nothing to do
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`with Mylan. It has to do with the uninstituted joinder
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`petition dealing with ancillary issues as detailed out in
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`Merck's opposition regarding some inconsistent statements.
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`And to be honest, Mylan isn't even sure what the nature of
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`the inconsistent statements are. All it says in their
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`opposition brief -- I'm looking at the Watson brief -- is
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`they have a good faith belief that they can discover
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`something.
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` And, you know, generally discovery
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`pre-institution from an uninstituted petitioner are
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`extremely rare outside the context of many RPI issues.
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`And, you know, the truth of the matter is discovery may
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`not even be necessary of the joinder petitions because if
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`the PTAB denies further --
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` THE REPORTER: I'm sorry, Mr. Malik. I'm sorry
`
`to interrupt. I can't hear you after "because if the PTAB
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`denies." And if you could slow down a tad.
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`www.DigitalEvidenceGroup.com Digital Evidence Group C'rt 2020
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`202-232-6046
`Merck Sharp & Dohme Corp. Exhibit 2041
`Mylan Pharmaceuticals Inc. v. Merck Sharp and Dohme Corp.
`IPR2020-00040 Page 8
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`
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`7/15/2020
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`Page 9
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` MR. MALIK: Sure.
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` If the PTAB denies the joinder motion, then
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`essentially this becomes an academic exercise. If you
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`take a look at their opposition, there's a host of issues
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`they object on, not just the discovery issue.
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` We do cite a couple cases about adjusting the
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`schedule on page 9 of the opposition to Watson.
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`Obviously, I am not counsel for Watson. In both those
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`cases, the Clear-vu Lightning case, that had to do with a
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`time bar issue and RPI issue as to whether or not the
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`party was time barred. The Finjan case, the again RPI
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`issue, and in that case discovery was actually agreed upon
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`by the parties.
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` In the -- what Merck essentially wants to do is
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`derail this whole schedule right now for an ancillary
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`issue. And I mean, let's just -- if you think about what
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`Merck wants to do, they effectively want to file a motion
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`to adjust the schedule, and let's just say they take a
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`month to resolve, and then assuming the PTAB grants their
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`request, we then have a Garmin dispute between the joinder
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`petitioners not involving Mylan.
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` And let's just say that it takes two to three
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`www.DigitalEvidenceGroup.com Digital Evidence Group C'rt 2020
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`202-232-6046
`Merck Sharp & Dohme Corp. Exhibit 2041
`Mylan Pharmaceuticals Inc. v. Merck Sharp and Dohme Corp.
`IPR2020-00040 Page 9
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`7/15/2020
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`Page 10
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`months to resolve because we don't even know how it
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`resolves. First of all, the PTAB may deny the request,
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`despite actors [phonetic] and then we have to produce
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`those documents. I mean, we're essentially going to be
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`held in abeyance for almost two to three months after that
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`fact.
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` And within that time period we also have
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`multiple PORPs at Merck's option. We have oppositions
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`from the -- from the -- I assume replies for the joinder
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`petition, et cetera, et cetera.
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` What we think the better way to handle this
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`is -- this is not an exceptional case. In fact, recently
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`in the Apple Fintiv decision that was informative just two
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`days ago, you know the Board made a point that, you know,
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`absent an exceptional case it's going stick to the
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`one-year bar. And so what I would suggest is we simply
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`look at how the PTAB has dealt with this before in joinder
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`cases.
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` And the cases that I would basically tell you is
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`IPR2019-00207 which dealt with lead petitioner Amneal and
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`then the silent joinder petition with Mylan it's
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`2019-10095. And in the interest full disclosure, I was
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`www.DigitalEvidenceGroup.com Digital Evidence Group C'rt 2020
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`202-232-6046
`Merck Sharp & Dohme Corp. Exhibit 2041
`Mylan Pharmaceuticals Inc. v. Merck Sharp and Dohme Corp.
`IPR2020-00040 Page 10
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`7/15/2020
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`Page 11
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`lead counsel for Mylan at the time, as I still am.
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` Basically Mylan was joined on November and a
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`discovery dispute effectively erupted, and the PTAB made
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`its decision on the discovery issue after the entire case
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`had effectively been ended. All depositions had been
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`taken, the patent owner and petitioner had given all their
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`papers, and on December 31, 2019, well after Mylan was
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`joined, well after everything was closed, a dispute
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`erupted about whether or not an inventor, in this case,
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`Dr. Warner, was going to be deposed. And the PTAB had
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`enough time in that joinder case to order additional
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`depositions and order additional briefing. That is paper
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`39 in IPR2019-207.
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` And so this isn't an exceptional case that
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`requires us to completely stop the schedule right now but
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`routine and has been dealt with before. In our view,
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`Mylan's view, that's the better view, the better approach.
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` Well, first, you know, the panel have dealt with
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`this before. No need to derail the schedule. And then
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`more importantly, there are going to be other disputes
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`that are going to occur in this IPR. In fact, so much so
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`that in the institution decision on page 27 you actually
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`www.DigitalEvidenceGroup.com Digital Evidence Group C'rt 2020
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`202-232-6046
`Merck Sharp & Dohme Corp. Exhibit 2041
`Mylan Pharmaceuticals Inc. v. Merck Sharp and Dohme Corp.
`IPR2020-00040 Page 11
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`Page 12
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`noted that to the extent patent owner Presagia has
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`potential discovery disputes, they could be handled.
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` So if we look at Merck's approach, they want to
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`deal with these things in sequence up front using up any
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`excess time that we may have at the end of the schedule.
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`Where the approach that we suggest, Mylan suggests, is we
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`bring all the disputes at the end -- and I'm sure there's
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`going to be more. This is a very complex IPR; we could
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`have anywhere between one and four petitioners -- and then
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`we can deal with everything in parallel at the end rather
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`than doing the sequential approach that Mylan says.
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` And, you know, that includes any depositions,
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`any associated briefing, just like the joinder Dapsone
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`matter. And just like the joinder Dapsone matter, that
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`panel eventually did issue a order adjusting the schedule
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`for the final written decision by one month. That's the
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`paper 30 -- 56 in that particular thing.
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` So we think that the more efficient way, the one
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`that allows any flexibility in the schedule to remain,
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`is -- is the way to basically hold these things in
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`abeyance, and then we'll deal with them at the end. I
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`mean, the main IPR can go forward. And, most importantly,
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`www.DigitalEvidenceGroup.com Digital Evidence Group C'rt 2020
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`202-232-6046
`Merck Sharp & Dohme Corp. Exhibit 2041
`Mylan Pharmaceuticals Inc. v. Merck Sharp and Dohme Corp.
`IPR2020-00040 Page 12
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`Page 13
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`just like the Dapsone matter where the PTAB had to decide
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`how they wanted to extend the schedule in light of the
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`underlying District Court cases. There were two -- one
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`was in West Virginia -- Mylan was in west Virginia. I
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`think Amneal was in the District of New Jersey.
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` The PTAB made a point in its final written -- I
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`mean, its institution decision in this matter on page 27
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`that it's going to have to consider basically balancing
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`any -- you know, the time of the final written decision,
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`vis-a-vis the time of the District Court.
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` And so if we deal with these issues at the end,
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`you know, in connection with it, the PTAB can also
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`consider if an extension is needed, whether the existing
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`schedule deal with all the issues in parallel, and how
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`much of an extension is actually needed if at all by the
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`PTAB based on the District Court action.
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` So you know, it seems to me that if we just look
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`at how the PTAB has dealt with joinder cases in the past,
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`this is -- I don't understand what the big deal is, why we
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`have to deal with it right now.
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` JUDGE MAJORS: Okay. Mr. Fisher, just briefly,
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`what's -- can you just outline -- we understood from your
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`www.DigitalEvidenceGroup.com Digital Evidence Group C'rt 2020
`
`202-232-6046
`Merck Sharp & Dohme Corp. Exhibit 2041
`Mylan Pharmaceuticals Inc. v. Merck Sharp and Dohme Corp.
`IPR2020-00040 Page 13
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`
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`7/15/2020
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`Mylan Pharmaceuticals, Inc., v. Merck Sharp, et al.Telephonic Conference
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`Page 14
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`statement that there's an opposition that's been filed,
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`and I see that but haven't studied that paper.
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` What's the general gist if you can let us know?
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` MR. FISHER: Sure, your Honor. Yes, so an
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`opposition has been filed in the three cases that have
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`requested joinder where there are new petitions and
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`joinder requests. We sought to confirm over a couple-week
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`period with new petitioners and Mylan regarding procedure
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`on a number of fronts. You know, there are, I would say,
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`two major issues: One is that these particular
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`petitioners have party discovery that, if they were
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`joined, we believe we're entitled to as a matter of right.
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`It isn't even a discretionary ask; that it relates to
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`inconsistent positions.
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` I think the best example of this is that new
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`petitioner Teva who seeks to, you know, join in on this
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`IPR and of course adopt Mylan's position has, you know,
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`taken the position in prior proceedings and has generated
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`a significant amount of data relating to one of the issues
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`in the instituted trial whether the particular prior art
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`reference, the '871 patent, which is the primary patent
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`that's being relied upon for anticipation and obviousness,
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`www.DigitalEvidenceGroup.com Digital Evidence Group C'rt 2020
`
`202-232-6046
`Merck Sharp & Dohme Corp. Exhibit 2041
`Mylan Pharmaceuticals Inc. v. Merck Sharp and Dohme Corp.
`IPR2020-00040 Page 14
`
`
`
`7/15/2020
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`Mylan Pharmaceuticals, Inc., v. Merck Sharp, et al.Telephonic Conference
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`Page 15
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`whether that particular patent inherently discloses a
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`1:1 hydrogen phosphate salt. There's been quite a bit of
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`data generated as to whether or not it is possible using
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`reasonable conditions to make a non 1:1 salt.
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` And the "me too" declaration they filed was by a
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`gentleman named Dr. Len Chyall. He, as a declarant in
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`this case, obviously filed a "me too" declaration, but he
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`was the one in those prior proceedings that generated all
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`this data that we would like to have made part of this
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`proceeding because we believe it does bear on an issue
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`that is already in this proceeding, whether this 1:1 salt
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`is inherently --
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` JUDGE MAJORS: Okay.
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` MR. FISHER: -- anticipated.
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` JUDGE MAJORS: Okay. So let me -- let me catch
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`up.
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` So one part of it is Merck, patent owner, would
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`like to take some party discovery, if and when the parties
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`are joined. And I'm not saying whether they will or
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`won't, but that's part one.
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` MR. FISHER: Absolutely. Absolutely. I mean,
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`it's not right for us to take that discovery unless and
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`www.DigitalEvidenceGroup.com Digital Evidence Group C'rt 2020
`
`202-232-6046
`Merck Sharp & Dohme Corp. Exhibit 2041
`Mylan Pharmaceuticals Inc. v. Merck Sharp and Dohme Corp.
`IPR2020-00040 Page 15
`
`
`
`7/15/2020
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`Mylan Pharmaceuticals, Inc., v. Merck Sharp, et al.Telephonic Conference
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`Page 16
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`until they're joined in.
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` There are some related issues for the other two
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`joinder petitioners that we would like to take party
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`discovery on. So we still have to have a process, your
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`Honor, where we could, once joinder was ordered, have time
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`to take the discovery or, if needed, you know, litigate
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`the issue and have that discovery be part of the
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`proceeding such that it could be used in a deposition with
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`who would, I guess, be the joint expert of the parties.
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` It seems to me to really get things quite out of
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`sort if you're dealing with, you know, the discovery
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`issues at the end after the record is essentially closed
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`and you've deposed all the experts who, you know, won't
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`have an opportunity to consider it unless, you know,
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`extreme measures are taken. So that was one issue.
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` You know, related to that was how do we -- how
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`do we sequence that discovery such that it can be taken
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`before our patent owner response is due on the current
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`schedule. The other had to do with, you know, the
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`understudy role of the various petitioners. And, you
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`know, there's been a long line of cases that develop, you
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`know, various concessions that newly joined petitioners
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`www.DigitalEvidenceGroup.com Digital Evidence Group C'rt 2020
`
`202-232-6046
`Merck Sharp & Dohme Corp. Exhibit 2041
`Mylan Pharmaceuticals Inc. v. Merck Sharp and Dohme Corp.
`IPR2020-00040 Page 16
`
`
`
`7/15/2020
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`Mylan Pharmaceuticals, Inc., v. Merck Sharp, et al.Telephonic Conference
`
`typically make about the way the proceeding would work.
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`And we were able to reach agreement on some but not all of
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`the typical concessions that we see, so that was, you
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`Page 17
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`know, the other aspect.
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` JUDGE MAJORS: So, like, what type of issues?
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`What type of issue do you contend or patent owner contends
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`the other petitioners are not willing to agree to?
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` MR. FISHER: Well, you know, I think one thing,
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`your Honor, is that there is going to be, you know,
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`discovery relating to who gets the chance to weigh in and
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`when. Those are issues that, for example, Mylan has taken
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`the position that it has an opportunity to weigh in if
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`we're going to be dealing with a party discovery issue in
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`addition to whatever, you know, party it is.
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` You know, so some of it does relate to the
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`discovery issues that we've raised. And then there's a
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`host of things like HMS [phonetic] and, you know, not
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`filing additional papers and things of that nature which
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`we've outlined in our opposition papers that typically are
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`agreed to but haven't been here.
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` JUDGE MAJORS: Right. Patent owner's not taking
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`the position though that -- a hypothetical: So patent
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`www.DigitalEvidenceGroup.com Digital Evidence Group C'rt 2020
`
`202-232-6046
`Merck Sharp & Dohme Corp. Exhibit 2041
`Mylan Pharmaceuticals Inc. v. Merck Sharp and Dohme Corp.
`IPR2020-00040 Page 17
`
`
`
`7/15/2020
`
`Mylan Pharmaceuticals, Inc., v. Merck Sharp, et al.Telephonic Conference
`
`Page 18
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`owner wants to take some discovery and maybe the argument
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`is it's routine. Maybe the argument is it's additional,
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`however that may be framed. You're not taking the
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`position though -- or patent owner is not taking the
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`position that as an understudy that the joined
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`petitioners, assuming we were to join, that they -- they
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`would get a chance to response to the requested discovery,
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`right? I mean, even though it is in a "me too" sense,
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`they're not going to get a substantive brief, at least in
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`the traditional model that the Board has allowed in the
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`"me too" petition.
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` MR. FISHER: Absolutely, your Honor. Of course
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`they should be able to weigh in and certainly, you know,
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`have an opportunity to object if that's their -- if that's
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`what they want to do. You know, our -- I think the whole
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`tenor of our opposition is we understand that in a case
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`like this it may make sense to have these "me too"
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`petitions joined. But there were some procedural aspects
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`of that that we were unable to work out with the joinder
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`petitioners and Mylan that, having not worked them out, we
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`feel have prejudiced Merck's ability to litigate this
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`trial in a way that's fair to Merck and enables Merck to
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`www.DigitalEvidenceGroup.com Digital Evidence Group C'rt 2020
`
`202-232-6046
`Merck Sharp & Dohme Corp. Exhibit 2041
`Mylan Pharmaceuticals Inc. v. Merck Sharp and Dohme Corp.
`IPR2020-00040 Page 18
`
`
`
`7/15/2020
`
`Mylan Pharmaceuticals, Inc., v. Merck Sharp, et al.Telephonic Conference
`
`present all the issues in a way that -- that it deems best
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`fit and on a schedule that's workable. Because you know
`
`this whole joinder thing is quite a distraction in its own
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`Page 19
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`right.
`
` And if they're not in the case, then we plow
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`ahead with Mylan and, you know, the schedule is what the
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`schedule is. If joinder happens and, you know, we think
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`as a matter of right or as a matter of discretion we're
`
`entitled to take the discovery, we want to make sure that
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`the process is fair and that we have the opportunity to do
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`it in a sequenced way that is logical.
`
` JUDGE MAJORS: Let me again just throw something
`
`out because, again, it sounded to me that there's a
`
`scheduling issue relative to the discovery that patent
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`owner wants. That's issue No. 1.
`
` Issue No. 2, I guess there's some concessions or
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`stipulations that patent owner is seeking to get from the
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`other petitioners about the nature of their participation
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`that at least an agreement has not been provided
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`satisfactory to patent owner. But in a hypothetical
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`sense, what if -- what if the Board were to say, okay, the
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`other parties are joined and they're going to be joined as
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`www.DigitalEvidenceGroup.com Digital Evidence Group C'rt 2020
`
`202-232-6046
`Merck Sharp & Dohme Corp. Exhibit 2041
`Mylan Pharmaceuticals Inc. v. Merck Sharp and Dohme Corp.
`IPR2020-00040 Page 19
`
`
`
`7/15/2020
`
`Mylan Pharmaceuticals, Inc., v. Merck Sharp, et al.Telephonic Conference
`
`Page 20
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`of next week?
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` For example, if Merck withdrew their opposition
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`to the joinder with the caveat that they really have to
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`play an understudy role -- they're not going to come in,
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`they don't get their own experts, so on and so forth --
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`then the discovery could start immediately. And sure,
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`there may be a dispute, it may take longer than some
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`people think, but that wouldn't necessarily derail the
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`schedule from where it is right now. Maybe there would be
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`some movement around, you know, weeks here or there to
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`make sure people have enough time for preparation.
`
` Do you follow what I'm saying, Mr. Fisher?
`
` MR. FISHER: I follow what you're getting at,
`
`your Honor. And I think the devil is in the details. I
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`mean, we're not necessarily asking for major movement
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`here. I mean, we threw out in our opposition two months.
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`We're certainly willing to negotiate a schedule that's
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`workable. You know, if it's two or three weeks, that
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`would be better in the circumstance than -- than, you
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`know, the current situation where this -- you know,
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`whenever the order comes down, we would essentially be in
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`a rush to, you know, get whatever discovery there is,
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`www.DigitalEvidenceGroup.com Digital Evidence Group C'rt 2020
`
`202-232-6046
`Merck Sharp & Dohme Corp. Exhibit 2041
`Mylan Pharmaceuticals Inc. v. Merck Sharp and Dohme Corp.
`IPR2020-00040 Page 20
`
`
`
`7/15/2020
`
`Mylan Pharmaceuticals, Inc., v. Merck Sharp, et al.Telephonic Conference
`
`Page 21
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`follow up on it, and then have to all right, you know,
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`prepare to take this one expert and beyond.
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` So again, the devil is in the details. I mean,
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`I think what you're describing, you know, if around the
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`edges there's some flexibility, that would be helpful.
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` JUDGE MAJORS: Yeah. And listen, I'm not
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`suggesting anybody did anything wrong here, but if the
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`concern was one of timing, at least for my part, I would
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`have hoped this could have come up earlier and we could
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`have expedited, for example, the briefing on the joinder
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`issues and see if we could get this resolved faster so
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`that patent owner could get the discovery that it thinks
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`its entitled to.
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` But it is what it is. So we're here now, and I
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`guess the schedule as it is right now, patent owner has a
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`filing due in the middle of next month. And probably, I
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`gather, you want to take the deposition of petitioner's --
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`petitioner Mylan's expert before that?
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` MR. FISHER: Yes, your Honor. And can I briefly
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`respond to the talking points?
`
` JUDGE MAJORS: Sure.
`
` MR. FISHER: You know, we -- this joinder
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`www.DigitalEvidenceGroup.com Digital Evidence Group C'rt 2020
`
`202-232-6046
`Merck Sharp & Dohme Corp. Exhibit 2041
`Mylan Pharmaceuticals Inc. v. Merck Sharp and Dohme Corp.
`IPR2020-00040 Page 21
`
`
`
`7/15/2020
`
`Mylan Pharmaceuticals, Inc., v. Merck Sharp, et al.Telephonic Conference
`
`Page 22
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`petition came in a little over a month ago. You know, the
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`issues we've raised for which discovery is sought were not
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`issues that were readily apparent from the face of the
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`declarations. I mean, you know, it takes a little time to
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`dig in and understand, you know, what -- what these
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`parties bring to the table and what they may have done in
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`the past, you know?
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` JUDGE MAJORS: Yeah. Okay. Fair. Fair enough.
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` MR. FISHER: Okay.
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` JUDGE MAJORS: Just another quick point,
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`Mr. Fisher. And if your mind is changed, or if your
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`client's mind is changed, that's fine too. But is patent
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`owner envisioning filing a POPR, or just would it be along
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`the lines of -- obviously, you disagree with the merits of
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`the case and probably the bases on which the Board
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`instituted. But I'm just trying to get a sense of where
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`we're heading, or where we think we're heading, relative
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`to the papers that are going to be filed in the other
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`proceedings.
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` MR. FISHER: Fair question, your Honor. I mean,
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`subject to something happening, we don't anticipate filing
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`a preliminary patent owner response. I'm glad I'm not the
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`www.DigitalEvidenceGroup.com Digital Evidence Group C'rt 2020
`
`202-232-6046
`Merck Sharp & Dohme Corp. Exhibit 2041
`Mylan Pharmaceuticals Inc. v. Merck Sharp and Dohme Corp.
`IPR2020-00040 Page 22
`
`
`
`7/15/2020
`
`Mylan Pharmaceuticals, Inc., v. Merck Sharp, et al.Telephonic Conference
`
`only one who calls it a "
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