`Tel: 571-272-7822
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`Paper: 61
`Date: November 9, 2020
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`MYLAN PHARMACEUTICALS INC.
`Petitioner,
`
`v.
`
`MERCK SHARP & DOHME CORP.,
`Patent Owner.
`_____________
`
`IPR2020-00040 (Patent 7,326,708 B2)1
`_______________
`
`Before SHERIDAN K. SNEDDEN, ROBERT A. POLLLOCK, and
`TIMOTHY G. MAJORS, Administrative Patent Judges.
`
`MAJORS, Administrative Patent Judge.
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`
`
`ORDER
`Conduct of the Proceeding
`Authorizing Motion to File Request for Certificate of Correction
`37 C.F.R. §§ 1.323, 42.5, 42.20
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`1 Petitioners in IPR2020-01045, IPR2020-01060, and IPR2020-01072 were
`joined as parties to this proceeding. See Papers 44–46.
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`
`
`IPR2020-00040
`Patent 7,326,708 B2
`
`On November 6, 2020, the Board held a conference call with the
`parties to discuss Patent Owner’s request for authorization to file a motion
`seeking leave to file a certificate of correction. A court reporter was present
`for the call; the parties are instructed to file a transcript when available.
`Patent Owner’s request for leave to file a certificate of correction
`relates to claims 5–7 of U.S. Patent 7,326,708 B2 (“the ’708 patent”).
`Claims 5–7 are not challenged in this proceeding. As discussed during the
`conference call, Patent Owner contends that claims 5–7 include an evident
`mistake by the patent applicant that is correctable under 35 U.S.C. § 255.
`As such, Patent Owner requests authorization to file a motion before the
`Board, requesting that the Board cede jurisdiction over the ’708 patent
`specific to claims 5–7 so that Patent Owner may petition the Director for a
`certificate of correction on those claims. Petitioner objects, arguing the
`alleged mistake is not correctable and points to colloquy and an oral order
`from claim construction proceedings in a related district court case, in which
`it was alleged the court determined claims 5–7 were indefinite and could not
`be corrected by the court.
`Upon hearing preliminary argument from the parties at the conference
`call, we authorize Patent Owner’s request for leave to file its motion.
`Whether the relief Patent Owner seeks from the Board is justified will be
`decided after receiving the motion and authorized briefing (detailed below).
`See generally Honeywell Int’l Inc. v. Arkema Inc., 939 F.3d 1345, 1349–50
`(Fed. Cir. 2019) (explaining the steps and showing required by patent owner
`seeking a certificate of correction under 35 U.S.C. § 255 for a patent
`undergoing post-grant proceedings before the Board).
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`2
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`IPR2020-00040
`Patent 7,326,708 B2
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`Accordingly, it is:
`ORDERED that Patent Owner is authorized to file a Motion to File
`Request for Certificate of Correction of Claims 5–7, which motion will be
`no more than ten (10) pages and will be filed no later than November 17,
`2020; Patent Owner will also file the relevant transcript from related district
`court proceedings, discussed above, as an exhibit to its motion;
`FURTHER ORDERED that Petitioner may file an Opposition to
`Patent Owner’s authorized motion, which Opposition will be no more than
`ten (10) pages and will be filed no later than December 4, 2020; and
`FURTHER ORDERED that Patent Owner may file a Reply in support
`of Patent Owner’s authorized motion, which Reply will be no more than
`three (3) pages and will be filed no later than December 11, 2020.
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`3
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`IPR2020-00040
`Patent 7,326,708 B2
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`
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`FOR PETITIONER:
`Jovial Wong
`WINSTON & STRAWN LLP
`jwong@winston.com
`
`Jitendra Malik
`Alissa M. Pacchioli
`Christopher W. West
`Heike S. Radeke
`KATTEN MUCHIN ROSEMAN LLP
`jitty.malik@kattenlaw.com
`alissa.pacchioli@kattenlaw.com
`christopher.west@katten.com
`heike.radeke@katten.com
`
`
`FOR PATENT OWNER:
`Stanley E. Fisher
`Jessamyn S. Berniker
`Shaun P. Mahaffy
`Anthony H. Sheh
`WILLIAMS & CONNOLLY LLP
`sfisher@wc.com
`jberniker@wc.com
`smahaffy@wc.com
`asheh@wc.com
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