`__________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`SUN PHARMACEUTICAL INDUSTRIES LTD
`Petitioner,
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`v.
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`MERCK SHARP & DOHME CORP.,
`Patent Owner.
`__________________
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`Case No. IPR2020-01072
`U.S. Patent No. 7,326,708
`__________________
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`PATENT OWNER’S PRELIMINARY RESPONSE
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`Case IPR2020-01072 | U.S. Patent 7,326,708
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`The Petition at issue is a “Me-Too” petition brought by Sun Pharmaceutical
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`Industries Ltd. (“Petitioner” or “Sun”) after the Board instituted trial on the petition
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`of Mylan Pharmaceuticals Inc. (“Mylan”) in IPR2020-00040 (“Mylan
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`Proceeding”). Paper 2. Sun filed a motion for joinder within one month of
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`institution of the Mylan Proceeding, seeking joinder. Paper 3. Merck has filed an
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`opposition to the joinder motion, Paper 7, and has participated in two calls with the
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`Board to address various conditions pertinent to joinder.
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`Pursuant to 37 C.F.R. § 42.107(b), Patent Owner Merck Sharp & Dohme
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`Corp. (“Merck”) hereby files a preliminary response in the above captioned case.
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`I.
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`If Joinder Is Ordered, Merck Reserves All Rights To Present Evidence
`and Argument In Response to the Sun Petition in Its Patent Owner
`Response and Other Papers.
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`In the Mylan Proceeding, Merck filed a Preliminary Patent Owner Response
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`opposing institution. IPR2020-00040, Paper 10. In that filing, Merck argued that
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`the Board should exercise its discretion pursuant to §§ 325(d) and 314(a) to deny
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`institution, and also argued that Mylan’s grounds were deficient because they did
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`not address the stoichiometry required by all challenged claims. Id. The Board
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`granted Mylan’s petition and instituted review in IPR2020-00040 notwithstanding
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`Merck’s Preliminary Patent Owner Response.
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`For efficiency and to conserve judicial resources, Merck will not restate, in
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`this Preliminary Patent Owner Response, the arguments it made in the Preliminary
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`Case IPR2020-01072 | U.S. Patent 7,326,708
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`Patent Owner Response in the Mylan Proceeding, which the Board has rejected,
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`preliminarily or otherwise. IPR2020-0040, Paper 21 at 64. However, Merck does
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`not waive any such evidence or arguments and reserves all rights in the above
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`captioned or any consolidated proceeding. Patent Owner specifically reserves all
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`rights to submit a Patent Owner Response and/or a Motion to Amend pursuant to
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`37 C.F.R. §§ 42.120 and 42.121. Patent Owner reserves the right to address
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`grounds presented in the Petition should the Board institute inter partes review, to
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`dispute in the Patent Owner’s Response any fact alleged to be material by
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`Petitioner, and to provide material facts in support of Patent Owner’s position.
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`Patent Owner reserves the right to raise any and all arguments against those
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`grounds and in favor of patentability during the trial.
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`II.
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`If Joinder Is Not Ordered, the Sun Petition Is Time Barred.
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`If joinder is not ordered in the instant proceeding, Merck opposes institution
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`because Petitioner is time barred from petitioning for inter partes review of U.S.
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`Patent No. 7,326,708. Merck filed patent infringement complaints concerning U.S.
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`Patent No. 7,326,708 on February 13, 2019, EX2040 (Sun complaint), and the Sun
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`petition was not filed until June 12, 2020. Paper 2 (filed 6/12/2020). Hence,
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`Petitioner was served with a complaint alleging infringement of U.S. Patent No.
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`7,326,708 more than one year prior to the filing of the instant petition. Absent
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`joinder, the Petition is thus time barred. See 35 U.S.C. § 315(b).
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`Case IPR2020-01072 | U.S. Patent 7,326,708
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`Respectfully submitted,
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`/Stanley E. Fisher/
`Stanley E. Fisher (Reg. No. 55,820)
`Bruce R. Genderson (Pro Hac Vice)
`Jessamyn S. Berniker (Reg. No. 72,328)
`Alexander S. Zolan (Pro Hac Vice)
`Elise M. Baumgarten (Pro Hac Vice)
`Shaun P. Mahaffy (Reg. No. 75,534)
`Anthony H. Sheh (Reg. No. 70,576)
`WILLIAMS & CONNOLLY LLP
`725 Twelfth Street, N.W.
`Washington, DC 20005
`T: (202) 434-5000
`F: (202) 434-5029
`sfisher@wc.com
`bgenderson@wc.com
`jberniker@wc.com
`azolan@wc.com
`ebaumgarten@wc.com
`smahaffy@wc.com
`asheh@wc.com
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`Counsel for Patent Owner
`Merck Sharp & Dohme Corp.
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`Date: August 14, 2020
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`Case IPR2020-01072 | U.S. Patent 7,326,708
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. § 42.6(e), the undersigned hereby certifies that a true
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`and correct copy of the foregoing was served on August 14, 2020, by delivering a
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`copy via electronic mail on the following attorneys of record:
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`Jovial Wong
`Charles B. Klein
`Claire A. Fundakowski
`Zachary B. Cohen
`WINSTON & STRAWN LLP
`1901 L. Street, N.W.
`Washington, D.C. 20036
`(202) 282-5000
`Sunipr@winston.com
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`/Anthony H. Sheh/
`Anthony H. Sheh
`Reg. No. 70,576
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