`
`By:
`
`
`Andrew O Larsen, Ph.D., Esq.
`Reg. No. 59,315
`MERCHANT & GOULD P.C.
`500 Fifth Avenue, Suite 4100
`New York, NY 10110
`Main Telephone: (212) 223-6658
`Main Facsimile: (212) 223-6521
`alarsen@merchantgould.com
`
`
`Christopher J. Sorenson, Esq.
`Pro Hac Vice
`MERCHANT & GOULD P.C.
`150 South Fifth Street, Suite 2200
`Minneapolis, MN 55402
`Main Telephone: (612) 336-4645
`Main Facsimile: (612) 332-9081
`csorenson@merchantgould.com
`
`Melissa Hayworth, Esq.
`Registration No. 45,774
`MERCHANT & GOULD P.C.
`1900 Duke Street, Suite 600
`Alexandria, VA 22314
`Main Telephone: (703) 684-2522
`Main Facsimile: (612) 332-9081
`mhayworth@merchantgould.com
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
`
`MSN LABORATORIES PRIVATE LTD. AND MSN PHARMACEUTICALS INC.
`Petitioners
`
`v.
`
`BAUSCH HEALTH IRELAND LIMITED,
`Patent Owner
`_____________________
`
`Case No. IPR2023-00016
`Patent No. 7,041,786
`_____________________
`
`PETITIONER'S REPLY TO PATENT OWNER'S OPPOSITION TO
`MOTION FOR JOINDER
`
`
`
`
`
`
`
`Pursuant to the Board's November 29, 2022 Order (IPR2023-00016, Paper
`
`12; "Order"), Petitioner MSN Private Laboratories Private Ltd. and MSN
`
`Pharmaceuticals Inc. ("Petitioner") submits this Reply to the Opposition to Motion
`
`for Joinder by Patent Owner Bausch Health Ireland Limited ("Patent Owner").
`
`In the Order, the Board stated that "[t]he scope of the 'understudy role' MSN
`
`is proposing is not clear from the Joinder Motion[,]" and asked for clarification on
`
`the role Petitioner would take if joinder were granted. Order, 3. The Board also
`
`provided its view on a proper "understudy role" as follows:
`
`To be clear, in our view an “understudy role” means that MSN would
`
`not make any substantive filings and would be bound by whatever
`
`substantive filings Mylan makes, so long as Mylan remains a party in
`
`the proceeding. The same is true for oral hearing presentations.
`
`Moreover, as an understudy MSN would not seek to take cross-
`
`examination testimony of any witness or have a role in defending the
`
`cross-examination of a witness beyond mere observation. The same
`
`would be true for other discovery. If Mylan’s participation terminates
`
`before the proceeding is complete, MSN would move into an active role
`
`and could make its own filings. But absent MSN would remain
`
`completely inactive as the understudy with the exception being
`
`
`
`1
`
`
`
`ministerial issues specifically directed to MSN (e.g., an update to
`
`MSN’s Mandatory Notices or Powers of Attorney).
`
`Id. at 3-4.
`
`Petitioner hereby adopts the Board's understanding of an understudy, and
`
`agrees to the following role should Petitioner's IPR be instituted and joined with
`
`the Mylan IPR, so long as Mylan remains a party to the proceeding:
`
`(1) That MSN will not make any substantive filings in a joined
`
`proceeding, and that MSN will be bound by whatever substantive filing Mylan
`
`makes (including any expert reports in support of a substantive filing by Mylan);
`
`(2) That MSN will not participate in the oral hearing in a joined
`
`proceeding, and so will be bound by Mylan’s presentation at oral hearing;
`
`(3) That MSN will not seek to take cross-examination testimony of any
`
`witness or have a role in defending the cross-examination of a witness in a joined
`
`proceeding;
`
`(4) That MSN will not seek any other discovery during a joined
`
`proceeding;
`
`(5) That MSN may still address ministerial issues specifically directed to
`
`MSN, for example, an update to MSN’s Mandatory Notices or Powers of Attorney,
`
`in a joined proceeding.
`
`
`
`2
`
`
`
`Furthermore, Petitioner and Patent Owner have discussed the need for
`
`Petitioner to clarify its ‘understudy role’ (see Order at 4), and have reached an
`
`agreement on the limitations defined above.
`
`In view of the above clarifications, Petitioner respectfully requests that its
`
`Motion for Joinder be granted, and that its Petition be instituted and joined into
`
`IPR2022-00722 pursuant to 35 U.S.C. § 315(c) and 37 C.F.R. § 42.122(b).
`
`Date: December 6, 2022
`
`
`By:
`
`Respectfully submitted,
`
`/Andrew O. Larsen/
`Andrew O Larsen, Ph.D., Esq.
`Reg. No. 59,315
`MERCHANT & GOULD P.C.
`500 Fifth Avenue, Suite 4100
`New York, NY 10110
`Main Telephone: (212) 223-6658
`Main Facsimile: (212) 223-6521
`alarsen@merchantgould.com
`
`Christopher J. Sorenson, Esq.
`Pro Hac Vice
`MERCHANT & GOULD P.C.
`150 South Fifth Street, Suite 2200
`Minneapolis, MN 55402
`Main Telephone: (612) 336-4645
`Main Facsimile: (612) 332-9081
`csorenson@merchantgould.com
`
`Melissa Hayworth, Esq.
`Registration No. 45,774
`MERCHANT & GOULD P.C.
`1900 Duke Street, Suite 600
`Alexandria, VA 22314
`Main Telephone: (703) 684-2522
`Main Facsimile: (612) 332-9081
`
`
`
`3
`
`
`
`mhayworth@merchantgould.com
`
`Counsel for Petitioners
`
`
`
`4
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies that a copy of the foregoing Petitioner's Reply to
`
`Patent Owner's Opposition to Motion for Joinder was served electronically via
`
`e-mail on December 6, 2022, in its entirety on the following:
`
`Justin J. Hasford
`FINNEGAN, HENDERSON, FARABOW,
`GARRETT & DUNNER, L.L.P.
`901 New York Avenue, NW
`Washington, DC 20001-4413
`justin.hasford@finnegan.com
`Bryan C. Diner
`FINNEGAN, HENDERSON, FARABOW,
`GARRETT & DUNNER, L.L.P.
`901 New York Avenue, NW
`Washington, DC 20001-4413
`bryan.diner@finnegan.com
`
`Joshua L. Goldberg
`FINNEGAN, HENDERSON, FARABOW,
`GARRETT & DUNNER, L.L.P.
`901 New York Avenue, NW
`Washington, DC 20001-4413
`joshua.goldberg@finnegan.com
`Kassandra M. Officer
`FINNEGAN, HENDERSON, FARABOW,
`GARRETT & DUNNER, L.L.P.
`901 New York Avenue, NW
`Washington, DC 20001-4413
`kassandra.officer@finnegan.com
`Lauren J. Robinson
`FINNEGAN, HENDERSON, FARABOW,
`GARRETT & DUNNER, L.L.P.
`901 New York Avenue, NW
`Washington, DC 20001-4413
`
`
`
`lauren.robinson@finnegan.com
`Caitlin E. O’Connell
`FINNEGAN, HENDERSON, FARABOW,
`GARRETT & DUNNER, L.L.P.
`901 New York Avenue, NW
`Washington, DC 20001-4413
`caitlin.o’connell@finnegan.com
`Kyu Yun Kim (Reg. No. 72,783)
`FINNEGAN, HENDERSON, FARABOW,
`GARRETT & DUNNER, L.L.P.
`901 New York Avenue, NW
`Washington, DC 20001-4413
`kyuyun.kim@finnegan.com
`
`
`/Andrew O. Larsen/
`By:
`Andrew O Larsen, Ph.D., Esq.
`Reg. No. 59,315
`MERCHANT & GOULD P.C.
`500 Fifth Avenue, Suite 4100
`New York, NY 10110
`Main Telephone: (212) 223-6658
`Main Facsimile: (212) 223-6521
`alarsen@merchantgould.com
`
`
`
`Date: December 6, 2022
`
`
`
`2
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
