Baumgarten, Elise
`Zullow, Keith A; Faegenburg, Russell W.; Wong, Jovial; Malik, Jitty
`Pacchioli, Alissa M.; West, Christopher W.; Radeke, Heike Simone; Van Buskirk, Tedd W.; Teschner, Michael H.;
`Fundakowski, Claire; Fischer, Sarah; Merck-Sitagliptin; Rapalino, Emily L.
`RE: IPR2020-00040, IPR2020-01045, IPR2020-01060, IPR2020-01072
`Tuesday, July 21, 2020 5:19:35 PM
`
`From:
`To:
`Cc:
`
`Subject:
`Date:
`
`Counsel,
`
`I write to follow up on our meet and confer call from earlier today:
`
`1. With respect to expediting briefing on the Motions for Joinder, Merck agrees to Joinder
`Petitioners’ proposal that they submit one joint reply brief on July 29 with a page limit of 7
`pages.
`
`2. As stated on the call, Merck does not agree to withdraw its opposition to the Motions for
`Joinder in the absence of an agreement from all petitioners to sequence discovery and
`adjust the schedule so that Merck has the opportunity to seek party discovery in advance of
`deposing Mylan’s expert and submitting its Patent Owner Response. This is supported by
`the law, as the Board has denied joinder of “me too” petitions that raise discovery issues.
`See, e.g., Unified Patents, Inc. v. Personalweb Techs. et al., IPR2014-00702, Paper 12 at 4-6
`(P.T.A.B. July 24, 2014). Merck understands that Mylan opposes any adjustment to the
`schedule, and joinder petitioners believe such an adjustment is premature.
`
`3. With respect to other conditions of joinder, Merck believes that the parties have resolved
`several issues concerning the understudy role.
`
`a.
`
`b.
`
`c.
`
`d.
`
`First, on the call, Joinder Petitioners agree to withdraw permanently their currently
`submitted expert reports immediately after Dr. Chorgade is deposed. As long as Mylan
`remains the lead petitioner, Joinder Petitioners will not rely on any of their own experts.
`If Mylan ceases participating in the IPR, Joinder Petitioners reserve the right to have the
`new lead Joinder Petitioner submit and rely on its own expert testimony. But, at no
`point, should the Joinder Petitioners be allowed to rely on an expert report that they
`have previously withdrawn. With these clarifications, Merck believes that Merck and the
`Joinder Petitioners are in agreement.
`
`Second, Mylan and Joinder Petitioners stated that they both intend to abide by all word
`count limits that apply to single parties within the PTAB rules. Merck thus believes that
`Merck and the Joinder Petitioners are in agreement.
`
`Third, Joinder Petitioners agree to seek prior Board authorization to file any paper or to
`take any action on their own in the Mylan IPR. Merck thus believes that Merck and the
`Joinder Petitioners are in agreement.
`
`Fourth, Joinder Petitioners agree that that they will generally not participate in a
`speaking role in any telephonic conference or oral argument before the Board in the
`Mylan IPR. Joinder Petitioners, however, reserve the right to address any party specific
`
`1 of 2
`
`IPR2020-01045, Teva Ex. 1019
`IPR2020-01060, DRL Ex. 1019
`IPR2020-01072, Sun Ex. 1019
`
`
`Zullow, Keith A; Faegenburg, Russell W.; Wong, Jovial; Malik, Jitty
`Pacchioli, Alissa M.; West, Christopher W.; Radeke, Heike Simone; Van Buskirk, Tedd W.; Teschner, Michael H.;
`Fundakowski, Claire; Fischer, Sarah; Merck-Sitagliptin; Rapalino, Emily L.
`RE: IPR2020-00040, IPR2020-01045, IPR2020-01060, IPR2020-01072
`Tuesday, July 21, 2020 5:19:35 PM
`
`From:
`To:
`Cc:
`
`Subject:
`Date:
`
`Counsel,
`
`I write to follow up on our meet and confer call from earlier today:
`
`1. With respect to expediting briefing on the Motions for Joinder, Merck agrees to Joinder
`Petitioners’ proposal that they submit one joint reply brief on July 29 with a page limit of 7
`pages.
`
`2. As stated on the call, Merck does not agree to withdraw its opposition to the Motions for
`Joinder in the absence of an agreement from all petitioners to sequence discovery and
`adjust the schedule so that Merck has the opportunity to seek party discovery in advance of
`deposing Mylan’s expert and submitting its Patent Owner Response. This is supported by
`the law, as the Board has denied joinder of “me too” petitions that raise discovery issues.
`See, e.g., Unified Patents, Inc. v. Personalweb Techs. et al., IPR2014-00702, Paper 12 at 4-6
`(P.T.A.B. July 24, 2014). Merck understands that Mylan opposes any adjustment to the
`schedule, and joinder petitioners believe such an adjustment is premature.
`
`3. With respect to other conditions of joinder, Merck believes that the parties have resolved
`several issues concerning the understudy role.
`
`a.
`
`b.
`
`c.
`
`d.
`
`First, on the call, Joinder Petitioners agree to withdraw permanently their currently
`submitted expert reports immediately after Dr. Chorgade is deposed. As long as Mylan
`remains the lead petitioner, Joinder Petitioners will not rely on any of their own experts.
`If Mylan ceases participating in the IPR, Joinder Petitioners reserve the right to have the
`new lead Joinder Petitioner submit and rely on its own expert testimony. But, at no
`point, should the Joinder Petitioners be allowed to rely on an expert report that they
`have previously withdrawn. With these clarifications, Merck believes that Merck and the
`Joinder Petitioners are in agreement.
`
`Second, Mylan and Joinder Petitioners stated that they both intend to abide by all word
`count limits that apply to single parties within the PTAB rules. Merck thus believes that
`Merck and the Joinder Petitioners are in agreement.
`
`Third, Joinder Petitioners agree to seek prior Board authorization to file any paper or to
`take any action on their own in the Mylan IPR. Merck thus believes that Merck and the
`Joinder Petitioners are in agreement.
`
`Fourth, Joinder Petitioners agree that that they will generally not participate in a
`speaking role in any telephonic conference or oral argument before the Board in the
`Mylan IPR. Joinder Petitioners, however, reserve the right to address any party specific
`
`1 of 2
`
`IPR2020-01045, Teva Ex. 1019
`IPR2020-01060, DRL Ex. 1019
`IPR2020-01072, Sun Ex. 1019
`
`
`
`discovery issues. Merck does not oppose Joinder Petitioners right to oppose Merck’s
`requests for party specific discovery. Merck, however, reserves its right to oppose
`Joinder Petitioners participation in any substantive argument that should be handled by
`lead petitioner, even if related to party discovery.
`
`e.
`
`Fifth, Merck understands that Joinder Petitioners reserve the right to serve discovery
`requests on Merck, if Merck serves discovery on Joinder Petitioners. Merck does not
`agree. It is Merck’s position that any discovery requests to Merck should be made by
`the lead petitioner.
`
`Please let me know if any of this requires clarification.
`
`Elise
`
`Elise M. Baumgarten
`Williams & Connolly LLP
`725 Twelfth Street, N.W., Washington, DC 20005
`(P) 202-434-5894 | (F) 202-434-5029
`ebaumgarten@wc.com | www.wc.com/ebaumgarten
`
`From: Zullow, Keith A <KZullow@goodwinlaw.com>
`Sent: Friday, July 17, 2020 11:15 AM
`To: Baumgarten, Elise <EBaumgarten@wc.com>; Faegenburg, Russell W.
`<rfaegenburg@lernerdavid.com>; Wong, Jovial <JWong@winston.com>; Malik, Jitty
`<jitty.malik@katten.com>
`Cc: Pacchioli, Alissa M. <alissa.pacchioli@katten.com>; West, Christopher W.
`<christopher.west@katten.com>; Radeke, Heike Simone <heike.radeke@katten.com>; Van Buskirk,
`Tedd W. <tvanbuskirk@lernerdavid.com>; Teschner, Michael H. <mteschner@lernerdavid.com>;
`Fundakowski, Claire <CFundakowski@winston.com>; Fischer, Sarah <SFischer@goodwinlaw.com>;
`Merck-Sitagliptin <MerckSitagliptin@wc.com>; Rapalino, Emily L. <ERapalino@goodwinlaw.com>
`Subject: RE: IPR2020-00040, IPR2020-01045, IPR2020-01060, IPR2020-01072
`
`Elise: Teva/Watson, Sun and DRL are available to meet and confer on Tuesday – other than before
`11:00 am or from 1:00-3:00 pm.
`
`Regards,
`
`Keith
`
`From: Baumgarten, Elise <EBaumgarten@wc.com>
`Sent: Friday, July 17, 2020 9:33 AM
`To: Zullow, Keith A <KZullow@goodwinlaw.com>; Faegenburg, Russell W.
`<rfaegenburg@lernerdavid.com>; Wong, Jovial <JWong@winston.com>; Malik, Jitty
`<jitty.malik@katten.com>
`
`2 of 2
`
`IPR2020-01045, Teva Ex. 1019
`IPR2020-01060, DRL Ex. 1019
`IPR2020-01072, Sun Ex. 1019
`
`
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