`Tel: 571-272-7822
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`Paper 49
`Date: May 31, 2024
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`TWI PHARMACEUTICALS, INC.,
`Petitioner,
`
`v.
`
`MERCK SERONO SA,
`Patent Owner.
`____________
`
`IPR2023-00049 (Patent 7,713,947 B2)
` IPR2023-00050 (Patent 8,377,903 B2)1
`____________
`
`
`
`Before ULRIKE W. JENKS and TINA E. HULSE,
`Administrative Patent Judges.
`
`JENKS, Administrative Patent Judge.
`
`
`
`
`ORDER
`Conduct of proceeding
`37 C.F.R. § 42.5
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`
`
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`
`
`1 We exercise our discretion to issue one Order to be filed in each
`proceeding. The parties are not authorized to use this style heading for any
`subsequent papers.
`
`
`
`IPR2023-00049 (Patent 7,713,947 B2)
`IPR2023-00050 (Patent 8,377,903 B2)
`
`
`On May 29, 2024, a conference call was held in the above-referenced
`proceedings regarding Petitioner’s request for authorization to file a motion
`for additional discovery. See IPR2023-00049, Ex. 3002, 3–4;
`IPR2023-00050, Ex. 3003, 3–4. Present on the call were counsel for the
`parties and Judges Jenks and Hulse.
`Petitioner requested the conference call to seek authorization to file a
`motion for additional discovery relating to Patent Owner’s communications
`with third party declarants Dr. Nicholas Bodor and Dr. Yogesh Dandiker,
`and materials underlying their declarations. Petitioner contends Patent
`Owner has failed to comply with its routine discovery obligations because
`Patent Owner improperly instructed Dr. Bodor and Dr. Dandiker not to
`answer certain questions during their depositions, on the basis of privilege.
`The parties have met and conferred but have not reached agreement as to
`any discovery requests or Dr. Bodor’s and Dr. Dandiker’s claims to
`privilege.
`Patent Owner opposes Petitioner’s request to file a motion for
`additional discovery for several reasons. Patent Owner contends Petitioner’s
`request to file a motion for additional discovery relies on mere speculation,
`and the additional discovery Petitioner seeks is overly broad. Patent Owner
`also contends the additional discovery Petitioner seeks is protected by
`attorney-client privilege or constitutes privileged attorney work product
`because counsel for Patent Owner represents both Dr. Bodor and Dr.
`Dandiker.2 For example, Patent Owner asserts that Petitioner seeks all
`
`
`2 During the conference call with the Board, Patent Owner’s counsel was
`unsure of the exact dates Dr. Bodor and Dr. Dandiker retained Wilmer
`Cutler Pickering Hale and Dorr LLP as counsel.
`2
`
`
`
`IPR2023-00049 (Patent 7,713,947 B2)
`IPR2023-00050 (Patent 8,377,903 B2)
`
`documents reflecting communications between counsel for Patent Owner
`and Dr. Bodor and Dr. Dandiker, which it contends are protected by
`attorney-client privilege. Patent Owner also asserts that Petitioner seeks
`drafts of the declarations of Dr. Bodor and Dr. Dandiker, which it contends
`are protected by attorney work product privilege. Patent Owner argues that it
`has satisfied its routine discovery obligations because Dr. Bodor and Dr.
`Dandiker were cross-examined by Petitioner and the additional information
`Petitioner sought during the depositions is privileged.
`Having heard the parties’ respective arguments, we granted
`Petitioner’s request for authorization to file a motion for additional
`discovery during the conference call. We instructed the parties to focus on
`the issue of privilege in their briefs, including supporting case law, and
`cautioned Petitioner that its proposed discovery requests must be narrowly
`tailored. See Garmin Int’l, Inc. v. Cuozzo Speed Techs. LLC, IPR2012-
`00001, Paper 26 at 6–7 (PTAB March 5, 2013) (Paper 26) (precedential).
`Petitioner, therefore, is granted authorization to file a motion for
`additional discovery of no longer than ten (10) pages. Petitioner may include
`its proposed discovery requests as an appendix attached to its motion. Patent
`Owner is granted authorization to file an opposition to Petitioner’s motion of
`no longer than ten (10) pages.
`
`
`
`3
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`
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`IPR2023-00049 (Patent 7,713,947 B2)
`IPR2023-00050 (Patent 8,377,903 B2)
`
`
`ORDER
`
`Accordingly, it is:
`ORDERED that Petitioner’s request for authorization to file a motion
`for additional discovery is granted;
`FURTHER ORDERED that Petitioner shall file its motion no later
`than June 12, 2024;
`FURTHER ORDERED that Patent Owner is authorized to file an
`opposition to Petitioner’s motion no later than two weeks after the filing of
`the motion;
`FURTHER ORDERED that both Petitioner’s motion and Patent
`Owner’s opposition shall be no longer than ten (10) pages, excluding
`Petitioner’s proposed discovery requests, which may be placed in an
`appendix to the motion; and
`FURTHER ORDERED that no other briefing is authorized at this
`
`time.
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`
`4
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`
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`IPR2023-00049 (Patent 7,713,947 B2)
`IPR2023-00050 (Patent 8,377,903 B2)
`
`FOR PETITIONER:
`
`Philip Segrest
`Philip.segrest@huschblackwell.com
`
`Nathan Sportel
`Nathan.sportel@huschblackwell.com
`
`Stephen Howe
`Steve.howe@huschblackwell.com
`
`
`FOR PATENT OWNER:
`
`Emily Whelan
`Emily.whelan@wilmerhale.com
`
`Deric Geng
`Deric.geng@wilmerhale.com
`
`Cindy Kan
`Cindy.kan@wilmerhale.com
`
`Asher McGuffin
`Asher.mcguffin@wilmerhale.com
`
`Scott Bertulli
`Scott.bertulli@wilmerhale.com
`
`
`
`5
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`