11/6/2020
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`Mylan Pharmaceuticals, Inc. v. Merck Sharp & Dohme, Corp.
`
`Hearing
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`Page 1
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` UNITED STATES PATENT AND TRADEMARK OFFICE
` ____________________
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
` ____________________
`
`MYLAN PHARMACEUTICALS INC. TEVA PHARMACEUTICALS USA,
` INC., WATSON LABORATORIES, INC., DR. REDDY'S
` LABORATORIES, INC., DR REDDY'S LABORATORIES, LTD.,
` and SUN PHARMACEUTICALS INDUSTRIES LTD, Petitioner,
` V.
` MERCK SHARP & DOHME CORP.,
` Patent Owner.
`
` ____________________
` IPR2020-00040
` Patent 7,326,708B2
` ____________________
` HEARING BEFORE THE PTAB
` Telephonic conference
` 11/06/2020
` 9:01 a.m. (EDT)
`BEFORE:
`HONORABLE TIMOTHY G. MAJORS
`HONORABLE SHERIDAN K. SNEDDEN
`HONORABLE ROBERT A. POLLOCK
`
`REPORTED BY: AMANDA GORRONO, CLR
`CLR NO. 052005-01
`
`____________________________________________________
` DIGITAL EVIDENCE GROUP
` 1730 M Street, NW, Suite 812
` Washington, D.C. 20036
` (202) 232-0646
`
`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2020
`
`202-232-6046
`
`Merck Exhibit 2275, Page 1
`Mylan Pharmaceuticals Inc. v. Merck Sharp & Dohme Corp.
`IPR2020-00040
`
`
`
`Mylan Pharmaceuticals, Inc. v. Merck Sharp & Dohme, Corp.
`
`Hearing
`
`Page 1
`
` UNITED STATES PATENT AND TRADEMARK OFFICE
` ____________________
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
` ____________________
`
`MYLAN PHARMACEUTICALS INC. TEVA PHARMACEUTICALS USA,
` INC., WATSON LABORATORIES, INC., DR. REDDY'S
` LABORATORIES, INC., DR REDDY'S LABORATORIES, LTD.,
` and SUN PHARMACEUTICALS INDUSTRIES LTD, Petitioner,
` V.
` MERCK SHARP & DOHME CORP.,
` Patent Owner.
`
` ____________________
` IPR2020-00040
` Patent 7,326,708B2
` ____________________
` HEARING BEFORE THE PTAB
` Telephonic conference
` 11/06/2020
` 9:01 a.m. (EDT)
`BEFORE:
`HONORABLE TIMOTHY G. MAJORS
`HONORABLE SHERIDAN K. SNEDDEN
`HONORABLE ROBERT A. POLLOCK
`
`REPORTED BY: AMANDA GORRONO, CLR
`CLR NO. 052005-01
`
`____________________________________________________
` DIGITAL EVIDENCE GROUP
` 1730 M Street, NW, Suite 812
` Washington, D.C. 20036
` (202) 232-0646
`
`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2020
`
`202-232-6046
`
`Merck Exhibit 2275, Page 1
`Mylan Pharmaceuticals Inc. v. Merck Sharp & Dohme Corp.
`IPR2020-00040
`
`
`
`11/6/2020
`
`Mylan Pharmaceuticals, Inc. v. Merck Sharp & Dohme, Corp.
`
`Hearing
`
` 11/06/2020
` 9:01 a.m. (EDT)
`
`Page 2
`
` TELEPHONIC HEARING IN RE: MYLAN
`PHARMACEUTICALS INC. et al v. MERCK SHARP & DOHME
`CORP., before Amanda Gorrono, Certified Live Note
`Reporter, and Notary Public of the State of New York.
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`Merck Exhibit 2275, Page 2
`Mylan Pharmaceuticals Inc. v. Merck Sharp & Dohme Corp.
`IPR2020-00040
`
`
`
`11/6/2020
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`Mylan Pharmaceuticals, Inc. v. Merck Sharp & Dohme, Corp.
`
`Hearing
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`Page 3
`
`A P P E A R A N C E S
`(Via Telephone):
`
`ON BEHALF OF PETITIONER MYLAN:
` JITENDRA MALIK, ESQUIRE
` KATTEN MUCHIN ROSENMAN, LLP
` 550 South Tryon Street
` Suite 2900
` Charlotte, North Carolina 28202-4213
` PHONE: 704.444.2000
` E-MAIL: Jitty.malik@katten.com
`
`ON BEHALF OF PATENT OWNER:
` DAVID M. KRINSKY, ESQUIRE
` WILLIAMS & CONNOLLY, LLP
` 725 Twelfth Street, N.W.
` Washington, D.C. 20005
` PHONE: 202.434.5338
` E-MAIL: Dkrinsky@wc.com
`
`ALSO PRESENT:
`Stan Fisher, Esquire, Williams & Connolly
`Keith Zullow, Esquire Goodwin Procter for Petitioners
`Watson and Teva
`Russ Faegenburg, Esquire, Lerner David for
`Dr. Reddy's Petitioners
`Claire Fundakowski, Esquire, Winston and Strawn for
`Petitioner Sun
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`
`Merck Exhibit 2275, Page 3
`Mylan Pharmaceuticals Inc. v. Merck Sharp & Dohme Corp.
`IPR2020-00040
`
`
`
`11/6/2020
`
`Mylan Pharmaceuticals, Inc. v. Merck Sharp & Dohme, Corp.
`
`Hearing
`
`Page 4
` JUDGE MAJORS: This is Judge Majors
`and online with me are Judges Pollock and Snedden, as
`well. Counsel, you can go ahead and identify
`yourselves.
` MR. KRINSKY: Good morning. This is
`David Krinsky for patent owner Merck, from Williams &
`Connolly. My partner Stan Fisher is also on the
`line.
` MR. MALIK: Good morning. This is
`Jitendra Malik from Katten, for Petitioner Mylan.
` MR. ZULLOW: Good morning. This is
`Keith Zullow from Goodwin Procter for Petitioners
`Watson and Teva.
` MR. FAEGENBURG: Good morning. Russ
`Faegenburg of Lerner David for the Dr. Reddy's
`petitioners.
` MS. FUNDAKOWSKI: Good morning.
`Claire Fundakowski from Winston and Strawn, on behalf
`of Sun Petitioner.
` JUDGE MAJORS: Okay. Great. I
`think, correct me if I'm wrong, but I think we have
`counsel on for Petitioners, all of the joint parties,
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`Merck Exhibit 2275, Page 4
`Mylan Pharmaceuticals Inc. v. Merck Sharp & Dohme Corp.
`IPR2020-00040
`
`
`
`11/6/2020
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`Mylan Pharmaceuticals, Inc. v. Merck Sharp & Dohme, Corp.
`
`Hearing
`
`Page 5
`as well as Patent Owner. So unless anyone tells me
`to the contrary, why don't we go ahead and begin.
` We're here today for a conference
`call in IPR 2020-00040, as well as the joined
`Petitions, joined cases.
` This call was requested by Patent
`Owner. We've read your E-mail, Mr. Krinsky, I
`understand you're going to be doing the arguing today
`for Patent Owner.
` So with that, why don't you go ahead
`and begin, and then Mr. Malik, you'll have an
`opportunity to respond.
` MR. KRINSKY: Thank you, Your Honor.
`This is David Krinsky for Merck. I think it might
`make the most sense for me to just briefly lay out
`the relief we're seeking, and the context in which it
`arises, and than briefly address what I understand to
`be the controversy between the parties.
` The '708 patent, which is the subject
`of this IPR, has a set of claims that are not at
`issue with the IPR, Claims 5 through 7, and actually
`also Claim 8, which comes from Claim 7, that
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`Merck Exhibit 2275, Page 5
`Mylan Pharmaceuticals Inc. v. Merck Sharp & Dohme Corp.
`IPR2020-00040
`
`
`
`11/6/2020
`
`Mylan Pharmaceuticals, Inc. v. Merck Sharp & Dohme, Corp.
`
`Hearing
`
`Page 6
`
`characterize specific polymorph of the crystal
`polyhydrate sulfate using x-ray powder defraction.
` And these claims, even though Mylan
`didn't file a petition on them, are at issue because
`they did not copend the District Court proceeding.
`And in that proceeding, the District Court held a
`Markman hearing, and it held those claims to be
`indefinite because they contain some incorrect
`language to refer to absorption bands, which a person
`of ordinary skill would recognize isn't the right
`term to talk about x-ray powder diffraction. What
`they really mean is to the language of the
`specification diffraction seeks.
` And having the -- in light of that
`District Court ruling, we want to get a certificate
`of correction conforming the language of the claims
`to the language of the specification, which does use
`the correct language.
` And this doesn't affect the IPR in
`any way. The claims, as I said, are not at issue.
`They also have patentability independent of whatever
`the Board decides in the IPR. But under the statute,
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`Merck Exhibit 2275, Page 6
`Mylan Pharmaceuticals Inc. v. Merck Sharp & Dohme Corp.
`IPR2020-00040
`
`
`
`11/6/2020
`
`Mylan Pharmaceuticals, Inc. v. Merck Sharp & Dohme, Corp.
`
`Hearing
`
`Page 7
`
`we still need the Board to issue petition for a
`certificate of correction, because Your Honors have
`jurisdiction over the patent.
` And so that's why we're here. We
`think, given the lack of any connection between this
`certificate and the IPR proceeding, we don't really
`think this ought to be controversial. But we
`understand the Petitioners oppose it on basically two
`grounds, if I understand correctly from the
`communications we've had from them.
` One, that on the merits, Merck is not
`entitled to a certificate of correction. And two,
`the District Court already decided this, which I
`think is why Petitioners sought to submit a
`transcript of the Markman hearing. Those are both
`wrong.
` And on the merits question, further
`it's the wrong forum to decide that question. The
`Federal Circuit made it clear that in a situation
`like this, where someone seeks a certificate of
`correction during an IPR, the Board has something of
`a keeping role, and certainly to protect its own
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`
`Merck Exhibit 2275, Page 7
`Mylan Pharmaceuticals Inc. v. Merck Sharp & Dohme Corp.
`IPR2020-00040
`
`
`
`11/6/2020
`
`Mylan Pharmaceuticals, Inc. v. Merck Sharp & Dohme, Corp.
`
`Hearing
`
`Page 8
`jurisdiction to make sure that a certificate doesn't
`change claims out from under the Board, that the
`Board's in the process of considering.
` But the Court's also made it clear
`that the director hasn't delegated authority to
`determine whether a certificate should issue to the
`Board. It's instead, you know, promulgated this
`procedure, where we think you further given a
`certificate grant.
` And, you know, what the Board can
`decide is whether there's a sufficient basis that may
`be correctable, just as I think a low-threshold bar,
`it's not even clear to me that that is really
`applicable in a case like this one here, where the
`certificate doesn't affect the IPR proceeding one way
`or another.
` But in any event, we cleared that
`bar. I don't think anyone disputes this proceeding,
`that there is a clearly evident mistake in these
`claims, the term "absorption band" is just not one
`the is used in the context of (inaudible.)
` And I think we are clearly entitled
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`202-232-6046
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`Merck Exhibit 2275, Page 8
`Mylan Pharmaceuticals Inc. v. Merck Sharp & Dohme Corp.
`IPR2020-00040
`
`
`
`11/6/2020
`
`Mylan Pharmaceuticals, Inc. v. Merck Sharp & Dohme, Corp.
`
`Hearing
`
`Page 9
`to a certificate under the governing standard for
`determining when those should issue, which is whether
`a mistake is -- the PTO can fix mistakes even where
`there is a broadening, which there isn't here, that
`are clearly evident from the specifications,
`drawings, and prosecution history, as to how the
`error should appropriately be corrected.
` And that's the case here, because as
`I said, in Column 13 of the Patent, you have the
`correct language. So given all of that, we believe
`we're entitled to leave.
` I do want to address the second point
`that I think you may hear about, which is the
`District Court has already decided this, just very
`briefly, I think that's just not correct. The
`District Court here was confronting this in the
`context of a Markman hearing, and ruled that it would
`have to essentially rewrite the claims, in order to
`fix the indefiniteness problem.
` But that's exactly what a certificate
`of correction is for, is to change the language of
`the Patent. And the District Court has certainly not
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`202-232-6046
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`Merck Exhibit 2275, Page 9
`Mylan Pharmaceuticals Inc. v. Merck Sharp & Dohme Corp.
`IPR2020-00040
`
`
`
`11/6/2020
`
`Mylan Pharmaceuticals, Inc. v. Merck Sharp & Dohme, Corp.
`
`Hearing
`
`Page 10
`decided whether a certificate should issue. I should
`note that should the certificates branch issue a
`certificate, the petitioners will have an opportunity
`to go to the District Court, and let the District
`Court decide whether that certificate is valid. I'm
`sure the District Court will consider its own
`position on its ruling.
` But all that's been decided thus far
`that this is the wrong term. It renders the claim
`indefinite. And the Court, as part of claims
`construction, is in a position to fix it.
` With that, we respectfully request
`leave to petition for a certificate.
` JUDGE MAJORS: Okay. Thank you,
`Mr. Krinsky. This question from my own information,
`did the District Court, in the discussion concerning
`claim construction -- I take it that the District
`Court was presented with the argument that this, to
`use your characterization, sort of evident err in the
`claim, is of the type that the District Court is
`capable of addressing or fixing. There are some
`limited circumstances when that can take place. Was
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`Merck Exhibit 2275, Page 10
`Mylan Pharmaceuticals Inc. v. Merck Sharp & Dohme Corp.
`IPR2020-00040
`
`
`
`11/6/2020
`
`Mylan Pharmaceuticals, Inc. v. Merck Sharp & Dohme, Corp.
`
`Hearing
`
`Page 11
`that issue raised to the Court? And what did the
`Court say?
` MR. KRINSKY: Yes. Yes. So that was
`briefed to the Court. You know, we have a Markman
`transcript, in which the Court issued a oral ruling.
`We're expecting a written ruling, that we haven't
`gotten yet. So we don't have the District Court's,
`you know, final weighing in on every last issue in
`the briefing.
` But we absolutely did -- we argued
`that because the POSA would know what was meant, this
`term isn't indefinite. But even if it is a mistake,
`it's the kind of mistake the District Court can fix.
`And the District Court concluded that it was not the
`kind of mistake he could fix.
` I just -- I would submit that's just
`a different standard. The Federal Circuit's made it
`clear the powers of the PTO are different, and there
`are circumstances where the PTO can fix something the
`District Court can't. So I think he really focused
`on the line of cases like (inaudible) about what the
`patents what the claims say.
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`Merck Exhibit 2275, Page 11
`Mylan Pharmaceuticals Inc. v. Merck Sharp & Dohme Corp.
`IPR2020-00040
`
`
`
`11/6/2020
`
`Mylan Pharmaceuticals, Inc. v. Merck Sharp & Dohme, Corp.
`
`Hearing
`
`Page 12
` JUDGE MAJORS: Uh-huh. Well, thank
`you for that information. So unless there's anything
`further from you at the moment, why don't we
`transition over to Petitioner, Mr. Malik.
` MR. MALIK: This is Mr. Malik, the
`counsel for Mylan.
` Thank you, Judge Majors. I don't
`think there's too big of a dispute, as far as the
`central fact that it is correct that the District
`Court invalidated certain claims as being indefinite
`in the '708 patent.
` And in essence, what Merck seeks to
`do is change the language of some of the dependant
`claims from "absorption band at spectral D spacing"
`to "defraction takes corresponding to D spacing."
`This issue, as counsel for Merck said, has been
`raised in District Court.
` And I just want to read for Your
`Honors what the tentative Markman ruling from Judge
`Andrews said, as it relates to this. This was issued
`December 17, August 2020. Again, tentative date,
`it's not final. For that it said, "Point 3,
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`Merck Exhibit 2275, Page 12
`Mylan Pharmaceuticals Inc. v. Merck Sharp & Dohme Corp.
`IPR2020-00040
`
`
`
`11/6/2020
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`Mylan Pharmaceuticals, Inc. v. Merck Sharp & Dohme, Corp.
`
`Hearing
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`Page 13
`indefinite absorption bands, have no understood
`meaning, and is not a typographical error that I can
`correct."
` Obviously, they made the request in
`front of Judge Andrews. We think that the PTAB
`should send it back to Judge Andrews. I mean,
`basically they did seek the relief from Judge
`Andrews. Judge Andrews said no. And in essence,
`they're coming to the PTAB, in essence, a different
`forum, you know, based on, obviously everyone's
`understanding of '314 the PTAB generally doesn't like
`to be in a position where there's tension. So we
`think the proper approach here is to send it back to
`Judge Andrews, and Merck can make whatever request
`they want.
` Be that as it may, their request for
`a certificate of correction is pursuant to 37 CFR
`1.323. And if you look at the language, that CFR
`statute then refers to 35 USC 255, which is the
`certificate of correction. And in essence, it's the
`governing standard under Section 255 is a clerical or
`typographical error.
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`Merck Exhibit 2275, Page 13
`Mylan Pharmaceuticals Inc. v. Merck Sharp & Dohme Corp.
`IPR2020-00040
`
`
`
`11/6/2020
`
`Mylan Pharmaceuticals, Inc. v. Merck Sharp & Dohme, Corp.
`
`Hearing
`
`Page 14
`
` Obviously, I think we can all
`determine for ourselves a clerical or typographical
`error. This a major rewrite of the claims. Or a
`minor character in the rewrite that Merck is
`suggesting in essence will change a claim from
`potentially being indefinite to not. We don't think
`it's a minor character.
` You know, the '255 also says that the
`correction doesn't involve changes in the Patent such
`that would constitute new matter or require
`reexamination. In changing the claims to this degree
`would require, in our view, a substantive
`examination. Even if they can point to the
`specifications, and it says there's written support
`there, obviously that does not end the inquiry. We
`also have to -- an examiner typically will determine
`whether or not there is sufficient written support,
`sufficient enablement, and every other condition of
`patentability.
` Whether or not these claims are
`issued in front of the PTAB, I don't think is an
`issue. The fact remains is that the PTAB has
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`Merck Exhibit 2275, Page 14
`Mylan Pharmaceuticals Inc. v. Merck Sharp & Dohme Corp.
`IPR2020-00040
`
`
`
`11/6/2020
`
`Mylan Pharmaceuticals, Inc. v. Merck Sharp & Dohme, Corp.
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`Hearing
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`Page 15
`jurisdiction of the entire patent. That function is
`to prevent the examining corps from doing something,
`while the judges are considering something else.
` Be that as it may, if the PTAB is
`willing to consider Merck's request, the CFR Rule
`2.323 makes pretty clear that it can only be done by
`motion. It says the request must comply with the
`requirements of this section, and be accompanied by a
`motion. It then refers to CFR Section 41.121 which
`is the motion parameters.
` It does give, if you look at that
`Section 41.121, it does give the PTAB wide discretion
`as to page limits, word count. It's not necessary by
`the default rule, but the rule clearly contemplates
`an opening motion, opposition, and reply.
` If the PTAB is inclined to hear Merck
`out, and do it through the motion practice, as
`required by the rules, Mylan would submit that
`obviously we have to make some decisions as to well,
`as to what page limits, timing, et cetera, et cetera.
`And I simply would submit that we could use the
`default rules of 42.24. Works for every other motion
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`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2020
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`202-232-6046
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`Merck Exhibit 2275, Page 15
`Mylan Pharmaceuticals Inc. v. Merck Sharp & Dohme Corp.
`IPR2020-00040
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`
`
`11/6/2020
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`Mylan Pharmaceuticals, Inc. v. Merck Sharp & Dohme, Corp.
`
`Hearing
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`Page 16
`in front of the PTAB. It's 15 pages for opening
`motion, 15 pages for opposition, I believe it's five.
`And the default timing for -- in 37 CFR 42.25, which
`is the standard rule in front of the PTAB. It's one
`month after filing the paper, followed by one month
`for the reply.
` Mylan is more concerned about the
`timing, Your Honor. Just to be candid, we have our
`reply in the IPR due November 17th. We still have
`one outstanding deposition. So obviously we'll
`comply with whatever rule you say for timing, should
`you want to entertain this by motion, but we would
`believe the default rules are best. Because
`obviously by being default, the PTAB's already
`determined the balance of the interest of the two
`parties.
` So that's kind of where Mylan stands.
`Obviously a lot of it is up to the PTAB as to what
`they want to do, and whether they want to entertain
`this motion.
` JUDGE MAJORS: Okay. Thank you.
`Mr. Malik. I guess the question for you, you may be
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`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2020
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`202-232-6046
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`Merck Exhibit 2275, Page 16
`Mylan Pharmaceuticals Inc. v. Merck Sharp & Dohme Corp.
`IPR2020-00040
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`
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`11/6/2020
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`Mylan Pharmaceuticals, Inc. v. Merck Sharp & Dohme, Corp.
`
`Hearing
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`Page 17
`right or Petitioners may ultimately be right, as far
`as whether the -- again I'll call it an error for
`present purposes, but whether this error is of the
`type that is correctable via certificate of
`correction. But my reading of the Federal Circuit's
`guidance on this, is that that's ultimately a
`question for the director. And the sufficient basis
`test, if you will, is what the Board is to look at,
`for purposes of deciding whether to authorize a
`motion and cede jurisdiction for purposes of a party
`seeking the certificate.
` So I guess, again, the question is
`one read of that is, that might be considered a
`somewhat, a lower threshold than weighing in on the
`ultimate question, if you follow.
` MR. MALIK: I do, Your Honor. And I
`think ultimately that was I think one of the reasons
`we, Mylan, offered to file the Markman transcript,
`which obviously, if you wish to look at it to make
`that consideration.
` Ultimately whether that threshold is
`met or not, I think, obviously Merck sees things one
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`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2020
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`202-232-6046
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`Merck Exhibit 2275, Page 17
`Mylan Pharmaceuticals Inc. v. Merck Sharp & Dohme Corp.
`IPR2020-00040
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`
`
`11/6/2020
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`Mylan Pharmaceuticals, Inc. v. Merck Sharp & Dohme, Corp.
`
`Hearing
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`Page 18
`way, Mylan see things another way. I understand the
`Markman transcript will allow the PTAB to, I guess,
`independently look at Judge Andrews' statements and
`what went on, as to whether or not that threshold has
`been met.
` So I think, basically, in response to
`that, we simply renew our motion -- our request to
`file the Markman transcript, and then the PTAB can
`make whatever determination it wants, with respect to
`the District Court proceedings. I certainly
`appreciate that point.
` And I think that also the point that
`I'm making is that this was discussed before Judge
`Andrews. And obviously it's a relevant
`consideration, at least that's my understanding, for
`the PTAB to decide whether it wants to do this. And
`so I think that simply the fairest -- the best, the
`objective method would simply be file the transcript,
`and then you can decide for yourself, based on your
`independent review, rather than hearing counsel
`arguing their respective points.
` I think the bigger point that I want
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`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2020
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`202-232-6046
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`Merck Exhibit 2275, Page 18
`Mylan Pharmaceuticals Inc. v. Merck Sharp & Dohme Corp.
`IPR2020-00040
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`
`
`11/6/2020
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`Mylan Pharmaceuticals, Inc. v. Merck Sharp & Dohme, Corp.
`
`Hearing
`
`Page 19
`to make is that I know that Merck has asked for leave
`just to file the certificate of correction. My
`reading of the rules, as I said, 1.323 says that this
`has to be done by motion. And then if we
`cross-reference that with 41.121, there is an
`opposition -- a full briefing schedule.
` So that, I don't think, at least my
`reading of the rules, I don't think we can bypass and
`go straight to the certificate of correction. So
`I defer --
` JUDGE MAJORS: I agree. It does
`require an authorized motion. I think that, to my
`understanding, that was the purpose of today's call.
`And I don't know, maybe Patent Owner will say
`otherwise, but I don't know that they're suggesting
`that there's no opportunity for opposition via
`briefing on Petitioner's part.
` We can discuss whether we're going to
`authorize the motion in a bit, and what if any, page
`issues or timing on the papers would be. And I guess
`just for sake of argument, before we -- I confer with
`my colleagues, I think ultimately if there is a
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`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2020
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`202-232-6046
`
`Merck Exhibit 2275, Page 19
`Mylan Pharmaceuticals Inc. v. Merck Sharp & Dohme Corp.
`IPR2020-00040
`
`
`
`11/6/2020
`
`Mylan Pharmaceuticals, Inc. v. Merck Sharp & Dohme, Corp.
`
`Hearing
`
`Page 20
`motion to be authorized here, I think whether it's
`the Board looking at what Judge Andrews said, or the
`director via the folks that look into the issues of
`certificate of correction, I think it would be
`important for them to understand this background.
`Whether it's persuasive to us or persuasive to them,
`you know, time will tell.
` So, again, I think, we want to be
`transparent, as far as the background here. And to
`my eyes, it's somewhat just a question of has Patent
`Owner made out the sufficient basis test? And if so,
`then the issue would ultimately be decided by the
`Certificate of Correction Group.
` One other, just, question. And this
`is, I guess, to both of you. For purpose of ceding
`jurisdiction, if that's the way this goes, I don't
`think, at least for my part, I'm not inclined to stop
`the entire IPR. And I'm not sure if that's what
`Patent Owner is requesting, since these claims are
`not at issue in this IPR.
` So I believe other panels have ceded
`jurisdiction on a limited basis for purposes of
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`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2020
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`202-232-6046
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`Merck Exhibit 2275, Page 20
`Mylan Pharmaceuticals Inc. v. Merck Sharp & Dohme Corp.
`IPR2020-00040
`
`
`
`11/6/2020
`
`Mylan Pharmaceuticals, Inc. v. Merck Sharp & Dohme, Corp.
`
`Hearing
`
`Page 21
`having a Patent Owner seek a certificate. But where
`the underlying IPR is not implicated, they've kept
`that case on track.
` MR. KRINSKY: This is David Krinsky,
`for Patent Owner. Our position would certainly be
`that the IPR can proceed as it was. I mean, these
`claims are not part of the IPR. The IPR doesn't
`affect what's going to happen with the certificate,
`which is precisely why we think it's perfectly fine
`for them to proceed in parallel.
` But yes, our position would be that
`the Board should cede it's jurisdiction, as to Claims
`5 through 8.
` MR. MALIK: Mylan agrees we should
`continue on the IPR on the current schedule. And
`then obviously, the certificate of correction issue
`we can deal with it in parallel upon briefing.
` JUDGE MAJORS: Okay. All right.
`Unless there's anything further from either Patent
`Owner or Petitioner, I'm going to put everyone on
`hold, and confer with the other two judges, and we'll
`jump back on, just as soon as we can.
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`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2020
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`202-232-6046
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`Merck Exhibit 2275, Page 21
`Mylan Pharmaceuticals Inc. v. Merck Sharp & Dohme Corp.
`IPR2020-00040
`
`
`
`11/6/2020
`
`Mylan Pharmaceuticals, Inc. v. Merck Sharp & Dohme, Corp.
`
`Hearing
`
`Page 22
` MR. KRINSKY: Thank you, Your Honor.
` MR. MALIK: Thank you.
` (Pause in proceeding.)
` JUDGE MAJORS: We're back. This is
`Judge Majors again. After conferring with Judges
`Snedden and Pollock, we are going to authorize Patent
`Owner to file its motion to cede jurisdiction, for
`purposes of seeking the certificate of correction.
` Question first to Patent Owner: Do
`you think you need the full set of briefing?
`Obviously, opening brief, but do you want the reply?
`And if so, do you want to suggest any limits on
`pages? Or do you feel that the full amount is
`necessary?
` MR. KRINSKY: So Your Honor, I think
`we're happy to do whatever is helpful for the Board.
`I think given that, you know, we've had some -- this
`call, and we've had some limited communications
`before this call about the Patent -- the Petitioner's
`position, we think it makes sense to have a reply,
`just because I don't know exactly what they're going
`to say in opposition. But I don't know that we need
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`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2020
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`202-232-6046
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`Merck Exhibit 2275, Page 22
`Mylan Pharmaceuticals Inc. v. Merck Sharp & Dohme Corp.
`IPR2020-00040
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`
`
`11/6/2020
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`Mylan Pharmaceuticals, Inc. v. Merck Sharp & Dohme, Corp.
`
`Hearing
`
`Page 23
`quite as fulsome a briefing schedule and page limits
`as are under the default. I think those are probably
`a fine benchmark.
` JUDGE MAJORS: Okay. And what's your
`position on timing?
` MR. KRINSKY: I mean, the default
`motion schedule is fairly spread out. You know, we
`don't think this is a complicated issue, and we'd
`like to go ahead and try to get our position before
`the bench has actually decided, sooner rather than
`later. So I think something a little more
`accelerated than that would be good. But again, I
`don't know that we have a strong view. I haven't
`conferred with (inaudible) on this.
` JUDGE MAJORS: Right. Okay. And
`Mr. Malik, what do you have to say on page limits,
`and, if any, and the timing? I heard you earlier in
`terms of the reply, and not everyone of course is
`busy working on that.
` MR. MALIK: As far as the page
`limits, I mean, I just threw out the default rule
`simply seemed that it was to me 15/15 and 5. But
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`202-232-6046
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`Merck Exhibit 2275, Page 23
`Mylan Pharmaceuticals Inc. v. Merck Sharp & Dohme Corp.
`IPR2020-00040
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`11/6/2020
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`Mylan Pharmaceuticals, Inc. v. Merck Sharp & Dohme, Corp.
`
`Hearing
`
`Page 24
`obviously, as long as we get the equal space with
`Merck on the opposition, we're fine with that. It's
`whatever Your Honors believe.
` Again, the timing, as I said, and I
`won't reiterate the point. It's more of the concern
`for me, given that the events of the next week and a
`half. I'll simply leave it.
` JUDGE MAJORS: Okay. Understood on
`that. So, why don't -- why don't we do ten pages for
`the opening brief, and ten pages for the opposition.
`And just as a proportional reduction, maybe three
`pages on the reply. That way Patent Owner, you'll
`have an opportunity to flag any big issues.
` MR. KRINSKY: That's fine with me,
`Your Honor.
` JUDGE MAJORS: Okay. All right. And
`let me pull my calender up, and see the dates here.
`Mr. Krinsky, would the 13th of November be too
`ambitious for your opening brief?
` MR. KRINSKY: No, Your Honor. That's
`fine.
` JUDGE MAJORS: And Mr. Malik, remind
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`www.DigitalEvidenceGroup.comDigital Evidence Group C'rt 2020
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`202-232-6046
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`Merck Exhibit 2275, Page 24
`Mylan Pharmaceuticals Inc. v. Merck Sharp & Dohme Corp.
`IPR2020-00040
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`
`
`11/6/2020
`
`Mylan Pharmaceuticals, Inc. v. Merck Sharp & Dohme, Corp.
`
`Hearing
`
`Page 25
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`me, when is the reply actually due?
` MR. MALIK: The reply is due the
`17th, Your Honor.
` JUDGE MAJORS: The 17th?
` MR. MALIK: Yes, Your Honor. The
`17th of November.
` JUDGE MAJORS: Okay. Okay.
` I guess the next week after that is
`probably Thanksgiving.
` MR. MALIK: Would the 4th work, Your
`Honor?
` JUDGE MAJORS: The 4th? It's fine
`with me, if it's fine with Patent Owner. We could
`also do if there's a -- so you can do the 13th for
`Patent Owner, and the 4th for Petitioner's
`Opposition, if you feel that it's a more, sort of,
`equitable spreading out of ti
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