throbber
Paper 53, June 12, 2024
`
`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)
`
`Before ULRIKE W. JENKS, ZHENYU YANG and TINA HULSE,
`Administrative Patent Judges.
`
`PETITIONER’S MOTION FOR ADDITIONAL DISCOVERY
`
`

`

`TABLE OF CONTENTS
`
`Page
`
`TABLE OF CONTENTS ........................................................................................... i
`
`TABLE OF AUTHORITIES ..................................................................................... ii
`
`EXHIBIT LIST ........................................................................................................ iv
`
`I.
`
`Statement of Material Facts ............................................................................... 1
`
`II. The Requested Materials Are Not Privileged .................................................... 3
`
`A. Attorney-Client Privilege ........................................................................... 4
`
`III. The Requests Are Necessary In The Interests Of Justice .................................. 9
`
`IV. Conclusion .......................................................................................................10
`
`CERTIFICATE OF SERVICE .................................................................................12
`
`
`
`
`
`
`
`– i –
`
`

`

`TABLE OF AUTHORITIES
`
`Page(s)
`
`Cases
`
`For Your Ease Only, Inc. v. Calgon Carbon Corp.,
`No. 02 C, 2003 WL 1989611 (N.D. Ill. Apr. 28, 2003) .......................................... 6
`Garmin Int’l, Inc. et al. v. Cuozzo Speed Techs. LLC,
`IPR2012-00001, Paper No. 26 (March 5, 2013) ................................................. 3 ,9
`In re Grand Jury Proceeding,
`79 F. App’x 476 (2d Cir. 2003) ........................................................................... 7, 8
`In re IPCom GmbH & Co., KG,
`428 F. App’x 984 (Fed. Cir. 2011) .......................................................................... 6
`In re Pac. Pictures Corp.,
`679 F.3d 1121 (9th Cir. 2012) ................................................................................. 7
`In re Spalding Sports Worldwide, Inc.,
`203 F.3d 800 (Fed. Cir. 2000) ............................................................................. 4, 5
`Infosystems, Inc. v. Ceridian Corp.,
`197 F.R.D. 303 (E.D. Mich. 2000) .......................................................................... 8
`Murphy v. Kmart Corp.,
`259 F.R.D. 421 (D.S.D. 2009)................................................................................. 8
`Rodriguez v. Seabreeze Jetlev LLC,
`620 F. Supp. 3d 1009 (N.D. Cal. 2022) .............................................................. 6, 7
`Shearing v. Iolab Corp.,
`975 F.2d 1541 (Fed. Cir. 1992) ........................................................................... 4, 5
`Siler v. Env’t Prot. Agency,
`908 F.3d 1291 (Fed. Cir. 2018) ............................................................................... 4
`United States v. Bergonzi,
`216 F.R.D. 487 (N.D. Cal. 2003) ............................................................................ 6
`
`– ii –
`
`

`

`Waymo LLC v. Uber Techs., Inc.,
`870 F.3d 1350 (Fed. Cir. 2017) ............................................................................... 7
`
`Regulations
`37 C.F.R. § 42.62(a) ................................................................................................... 4
`82 Fed. Reg. 51570 (Nov. 7, 2017) ............................................................................ 4
`
`
`
`
`
`– iii –
`
`

`

`Liliemark 1997 no. 2 (1997) pp. 120-131.
`
`Rice, George P.A., Massimo Filippi, and
`Giancarlo Comi. “Cladribine and progressive MS:
`clinical and MRI outcomesofa multicenter
`controlled trial.” Neurology Vol. 54, no. 5 (2000)
`pp. 1145-1155.
`Liliemark, Jan. “The clinical pharmacokinetics of
`cladribine.” Clinical pharmacokinetics Vol. 32,
`
`Ex. 1012
`
`Ex. 1013
`
`PackageInsert, Mar. 2019
`Lublin FD, Reingold SC. Definingtheclinical
`course of multiple sclerosis: results of an
`international survey. Neurology 1996;46:907—
`911.
`National Multiple Sclerosis Society, What is MS,
`Types ofMS,
`at-is-
`https://www.nationalmssociety.or
`MS/Types-of-MS, retrieved Sept. 20, 2022.
`Ex. 1014|National Multiple Sclerosis Society, What is MS,
`Types ofMS, Secondary Progressive MS,
`h ps://www.nationalmssociety.org
`
`EXHIBIT LIST
`
`DESCRIPTION
`
`Ex. 1001
`
`US 7,713,947 B2.
`
`SHORT
`
`°947 Patent
`
`Ex. 1002
`
`US 8,377,903 B2.
`
`°903 Patent
`
`Ex. 1003
`
`°018 File
`File History for Ser. No. 11/722,018, which
`5
`5
`Wrapper
`issued as the ’947 patent.
`File History Ser. No. 12/766,173, which issued as|*173 File
`Ex. 1004
`,
`the °903 patent.
`Wrapper
`Declaration ofDr. Benjamin M. Greenberg, M.D. oe
`Ex. 1005
`Ex. 1006 penn Vitae ofDr. Benjamin M.Greenberg, Greenberg CV
`Ex. 1007
`WO 2004/087101 A2.
`pour ‘WO
`
`Ex. 1008
`
`Ex. 1009
`
`.
`— oma os
`
`
`
`Ex. 1010 Merck KGaA et al v. Accord Healthcare, Inc. et al|Merck
`1-22-cv-00974 (DDE) Complaint.
`Complaint
`
`Package Insert
`
`Lublin 1996
`
`Ave—
`
`

`

`Casanova 2002
`
`.
`Ronnns2
`
`Nusanbens
`Pankawe
`tawert
`Sear
`
`Ex. 1016
`
`Ex. 1017
`
`Ex. 1021
`
`Ex. 1022
`
`
`
`No. 10.
`
`|=————«|.-s MS/Types-of-MS/Secondary-progressive-MS. _
`Ex. 1015
`Casanova,B., et al. “High clinical inflammatory
`activity prior to the development of secondary
`progression: a prospective 5-year follow-up
`study,” Multiple Sclerosis Journal, Feb. 2002, pp.
`59-63, vol. 8.
`Romine, J. et al. “A Double-Blind, Placebo-
`Controlled, Randomized Trial of Cladribine in
`Relapsing-Remitting Multiple Sclerosis,”
`Proceedings ofthe Association ofAmerican
`Physicians, Jan./Feb. 1999, pp. 35-44, vol. 111,
`No. 1.
`ImmunexCorporation, Novantrone®
`(Mixantrone) PackageInsert, Oct. 13, 2000
`“Novantrone® Packa
`Langtry, H.et al. “Cladribine: A Review ofits
`Ex. 1018
`Use in Multiple Sclerosis,” Biodrugs, May 1998,|Langtry 1998
`pp. 419-433, vol. 9, No.3.
`Tysabri
`BiogenIdec Inc., Tysarbi® (natazlizumab)
`Package Insert
`PackageInsert, Nov. 2004.
`Chiron Corporation, Betaseron® (Interferon beta-|Betaseron
`lb) Package Insert, 1993.
`Package Insert
`Biogen, Inc., Avonex™(Interferon Beta-1la)
`Avonex
`Package Insert, Nov. 1996.
`Package Insert
`Teva Pharms USA, Copaxone®(glatiramer
`Copaxone
`acetate for injection) Package Insert, 2001.
`Package Insert
`Ex. 1023 Serano,Inc., Rebif® (Interferon Beta-la) Package|Rebif Package
`Insert, May 2003.
`Insert
`Cursiefen, Simone, ef a/. “Escalating
`immunotherapy with mitoxantronein patients
`with very active relapsing-remitting or
`progressive multiple sclerosis,” European
`neurology, Apr. 2000, pp. 186-187, vol. 43, No.
`3
`Burt, Richard K., et al. “Treatment of
`autoimmunedisease by intense
`immunosuppressive conditioning and autologous
`hematopoietic stem cell transplantation,” Blood,
`The Journalofthe American Society of
`Hematology, Nov. 1998, pp. 3505-3514, vol. 92,
`
`Ex. 1024
`
`Ex. 1025
`
`Cursiefen 2000
`
`Burt 1998
`
`

`

`Ex. 1026
`
`Tortorella, Carla, et a/. “Cladribine. Ortho
`
`| BiotechInc.”CurrentOpinioninInvestigational
`Proc.Natl. Acad.Sci. USA.Feb. 1996. pp. 1716-|Beutler 1996
`
`Ex. 1041
`
`Center for Disease Control, Office of Enterprise
`Communication, Press Release, Oct. 27, 2004,
`https://www.cdc.gov/media/pressrel/r041027 htm.
`Selby, R. et al. “Safety and Tolerability of
`Subcutaneous Cladribine Therapy in Progressive
`Multiple Sclerosis,” Can. J. Neurol. Sci., 1998,
`pp. 295-299, vol. 25.
`Docket Navigator Printout of Case Activity for
`Merck KGaA et al v. Accord Healthcare, Inc. et al
`Food and Drug Administration, Orange Book:
`Approved Drug Products with Therapeutic
`Equivalence Evaluations, Patent and Exclusivity
`for: N022561,
`https://www.accessdata.fda.gov/scripts/cder/ob/pa
`tent_info.cfm?Product_No=001&Appl_No=0225
`61&Appl_
`type=N,retrieved Oct. 5, 2022.
`Merck KGaA et al v. Accord Healthcare, Inc. et al
`1-22-cv-00974 (DDE) Answer.
`
`Ex. 1027
`
`Ex. 1028
`
`Ex. 1030
`
`Ex. 1031
`
`Ex. 1032
`
`Ex. 1033
`
`Ex. 1038
`
`Ex. 1039
`Ex. 1040
`
`Drugs, Dec. 2001, pp. 1751-1756,vol. 2, no. 12.
`Beutler, E. et al. “The treatment of chronic
`rogressive multiple sclerosis with cladribine,”
`
`1720, vol. 93.
`Coles, Alasdair, et al. “Campath-1H treatment of
`multiple sclerosis: lessons from the bedside for
`the bench,” Clinical neurology and neurosurgery,
`June 2004, pp. 270-274,vol. 106, no. 3.
`
`exhibit notfilea
`
`March 2024 Email chain between Counsel for
`Petitioner and Counsel for Patent Owner
`Westinghouse Air Brake Techs. Corp. v. Siemens
`Mobility, Inc., Nos. IPR2017-01669, IPR2017-
`02044, Paper 60 (P.T.A.B. Jan.
`8, 2019
`
`— Te
`
`Coles 2004
`.
`
`CDCPress
`Release
`
`Selbv 1998
`*
`
`Complaint
`
`SS
`
`SS
`SSS
`es
`
`

`

`DESCRIPTION os
`ae1042|Reserved———————O
`
`ee1043|DepositionTranscriptofYogeshDandiker,Ph.D..,DeostonTansafYuetDandies]
`dated Ma 24, 2024 FILED UNDER SEAL
`=eae|
`ee|
`
`dated June 7, 2024 FILED UNDER SEAL
`
`dated May 28, 2024 FILEDUNDER SEAL _
`
`— Vli —
`
`

`

`Petitioner TWi Pharmaceuticals Inc. (“Petitioner”) respectfully requests
`
`authorization to conduct limited discovery, as set forth in the attached Appendix A.
`
`I.
`
`Statement of Material Facts
`
`On October 14, 2002, Petitioner filed its Petitions for Inter Partes Review of
`
`U.S. Patent Nos. 8,377,903 (IPR2023-00050) and 7,713,947 (IPR2023-00049),
`
`asserting that certain claims of each are invalid over various prior art, including the
`
`WO 2004/087101 A2 publication to Bodor and Dandiker (the ’101 Publication). In
`
`conjunction with its response, Patent Owner (“PO”) submitted declarations from the
`
`third party inventors of the prior art ’101 Publication. EX2054; EX2055. Each
`
`declaration referenced certain communications with an alleged affiliate of PO, and
`
`generally asserted those communications demonstrate that the disclosures of the
`
`’101 Publication were invented by someone other than themselves. EX2055, ¶¶ 27-
`
`29; EX2054, ¶¶ 28-30. Both third party witnesses have acknowledged, however, that
`
`other correspondence on this issue likely exists, despite not being disclosed in their
`
`declarations. EX2055, ¶ 29; EX1044, 51:6-15. Each also admitted that the materials
`
`attached to their declarations, as allegedly proving the points made therein, were
`
`provided by counsel for PO, not the witnesses themselves. EX2055, ¶ 28; EX2054,
`
`¶ 22. Importantly, both acknowledged that they are not employed by PO, and indeed
`
`have “no interest in this proceeding.” EX2055, ¶¶ 4, 6-11; EX2054, ¶¶ 4, 6-10.
`
`On May 16, 2024, after meeting and conferring with counsel for PO, counsel
`
`– 1 –
`
`

`

`for Petitioner requested a conference with the Board, and authorization to file a
`
`motion for additional discovery regarding the factual underpinnings of these
`
`declarations. That conference was scheduled for May 29, 2024. Between the date of
`
`Petitioner’s request for a conference, and when that conference occurred, Petitioner
`
`deposed Drs. Bodor and Dandiker. During these depositions, counsel for Petitioner
`
`attempted to explore what materials may have been provided to the declarants but
`
`not included in their declarations. However, in each instance, counsel for PO
`
`objected on the basis of privilege, and instructed the witness not to answer.
`
`Specifically, Drs. Bodor and Dandiker were instructed not to answer the following
`
`questions: whether there were any documents they reviewed or were provided in
`
`connection with this matter not cited in their declaration; whether counsel provided
`
`any facts for inclusion in their declarations; whether the attorneys provided them any
`
`materials not cited in their declaration that refreshed their recollection; and whether
`
`they requested any legal advice from attorneys about any of those other documents
`
`they may have reviewed. EX1043, 22:11-24:17, 125:20-126:18; EX1044, 49:12-
`
`50:9. 1 Nonetheless, both witnesses were clear—more materials do indeed exist
`
`
`1 Patent Owner continued to block permissible examination with Dr. Munafo,
`
`
`
`
`
`
`
`
`
`– 2 –
`
`

`

`relating to the subject matter of their declarations. EX2055, ¶ 29; EX1043, 125:20-
`
`126:1; EX1044, 51:6-15.
`
`On May 31, 2024, the Board issued an Order granting Petitioner authorization
`
`to file a motion for additional discovery. Per the Board’s request, Petitioner has
`
`attached a narrowed version of its discovery requests hereto as Appendix A. These
`
`consist of four, narrowly tailored requests for production that are aimed at
`
`uncovering the communications between Drs. Bodor and Dandiker (on the one
`
`hand), and PO or PO’s counsel (on the other hand), within a narrow window of
`
`time—the time during which they were preparing the declarations submitted in this
`
`matter—as well as any materials, documents, or drafts exchanged in the process. For
`
`the reasons discussed below, Petitioner respectfully submits that the requested
`
`materials are not privileged or work product, and moreover that the Garmin factors,
`
`on balance, weigh in favor of the additional discovery.
`
`II. The Requested Materials Are Not Privileged
`
`The requested materials are neither privileged nor work-product. Instead,
`
`these are factual materials communicated to third parties, without a common interest
`
`
`
`. EX1045, 6:14-7:1,
`
`7:3-8:9, 26:20-28:9, 143:2-144:3. Dr. Munafo’s testimony should be stricken or
`
`disregarded in its entirety.
`
`– 3 –
`
`

`

`in the outcome of this matter, and who were not being provided legal advice.
`
`A. Attorney-Client Privilege
`For attorney-client privilege to apply, the communications in question must
`
`be (1) between a client and their attorney, (2) intended to be and in fact were, kept
`
`confidential, and (3) for the purposes of obtaining or providing legal advice. Siler v.
`
`Env’t Prot. Agency, 908 F.3d 1291, 1297 (Fed. Cir. 2018). 2 This privilege is
`
`designed to “protect[] a client’s confidential communications to an attorney
`
`necessary to obtain legal counselling.” Shearing v. Iolab Corp., 975 F.2d 1541, 1546
`
`(Fed. Cir. 1992). “[t]he central inquiry is whether the communication is one that was
`
`made by a client to an attorney for the purpose of obtaining legal advice or services.”
`
`In re Spalding Sports Worldwide, Inc., 203 F.3d 800, 805 (Fed. Cir. 2000).
`
`Here, counsel for PO has asserted that both Drs. Dandiker and Bodor are
`
`clients of the Wilmer Hale law firm. While this may be true for the purposes of the
`
`depositions in this matter, counsel for PO has provided no evidence that either
`
`witness was a Wilmer Hale client for any other purpose in this matter, including in
`
`the preparation of their declarations. Even if the third parties were clients of Wilmer
`
`
`2 The Federal Rules of Evidence and common law relating thereto control the
`
`determination of whether privilege and/or work product protection applies here. See,
`
`e.g., 37 C.F.R. § 42.62(a); 82 Fed. Reg. 51570 (Nov. 7, 2017) at 51571.
`
`– 4 –
`
`

`

`Hale for the entirety of the requested time frame, that alone would not be enough for
`
`privilege to attach. Rather, for privilege to exist, the communications must have
`
`specifically been made for the purpose of rendering legal advice to that client.
`
`Shearing, 975 F.2d at 1546; In re Spalding, 203 F.3d at 805. Yet PO has pointed to
`
`nothing, either during the meet and confer or in the conference with the Board,
`
`indicating that any correspondence with Drs. Bodor and Dandiker relating to or
`
`underlying the preparation of their declarations was for the purpose of rendering
`
`legal advice to Drs. Dandiker and Bodor, who have admitted that they stand to gain
`
`or lose nothing as a result of this matter. They are not parties to this matter, are not
`
`inventors on the Patents-in-Suit, were not sued, and are not employees of PO. See
`
`supra at § A. Thus, PO cannot satisfy even the most threshold requirement for the
`
`existence of privilege regarding the specific materials sought by Appendix A.3
`
`Moreover, even if counsel for PO were to assert that the correspondence with
`
`Drs. Bodor and Dandiker took place (and that the declarations were prepared) as part
`
`of the provision of legal advice to the actual client—Merck—the presence of Drs.
`
`Bodor and/or Dandiker on any communications waived any privilege otherwise
`
`applicable thereto. Under Federal common law, the presence of any third party on
`
`
`3 The requests also seek correspondence between the declarants and Merck, not just
`
`the attorneys, for which PO has no colorable argument for privilege. Appendix A.
`
`– 5 –
`
`

`

`otherwise privileged communications waives that privilege, unless there is a
`
`common interest among the parties to the communication. See, e.g., For Your Ease
`
`Only, Inc. v. Calgon Carbon Corp., No. 02 C 7345, 2003 WL 1989611, at *2 (N.D.
`
`Ill. Apr. 28, 2003). But here there is no such common interest between the third party
`
`witnesses and Merck, and thus the doctrine cannot shield the requested materials.
`
`For the common interest doctrine to apply, the communication must be “made
`
`by separate parties in the course of a matter of common interest” and “designed to
`
`further that effort.” See United States v. Bergonzi, 216 F.R.D. 487, 495 (N.D. Cal.
`
`2003). “To maintain the privilege, the common interest must relate to a litigation
`
`interest, and not merely a common business interest.” For Your Ease Only, 2003 WL
`
`1989611 at *2. When information is shared other than “as part of a joint legal claim
`
`or defense,” the common interest doctrine does not apply. In re IPCom GmbH &
`
`Co., KG, 428 F. App’x 984, 986 (Fed. Cir. 2011). Moreover, “[t]o constitute a
`
`‘common interest’ the parties must have a strong identity of interest.” For Your Ease
`
`Only, 2003 WL 1989611 at *4. Indeed, in Rodriguez, the court held that the common
`
`interest doctrine applied solely to communications with third parties that were
`
`considered “beneficiaries” of the estate in question, and not to any third that were
`
`not beneficiaries, because of the lack of common interest in the outcome. Rodriguez
`
`v. Seabreeze Jetlev LLC, 620 F. Supp. 3d 1009, 1023 (N.D. Cal. 2022).
`
`Here, there is no common interest, nor were the declarations prepared in
`
`– 6 –
`
`

`

`furtherance of any interest of those third parties. Drs. Bodor and Dandiker are not
`
`employees of Merck, and have admitted that they have no interest in the outcome of
`
`this matter whatsoever. See supra at §A. Indeed, through their declarations, both third
`
`parties effectively limited their ownership rights, as between Merck and the
`
`witnesses. Thus, not only is there no common interest here, these third parties are, if
`
`anything, adverse to Merck. And when the parties’ interests are not aligned, the
`
`doctrine does not apply. See Waymo LLC v. Uber Techs., Inc., 870 F.3d 1350, 1361
`
`(Fed. Cir. 2017). Much like in Rodriguez, Drs. Bodor and Dandiker will not benefit
`
`from preserving the validity of the Patents-in-Suit, and the common interest doctrine
`
`therefore is inapplicable. See Rodriguez, 620 F. Supp. 3d at 1023.4
`
`2. Work Product Protection Does Not Apply
`
`The materials requested in Appendix A are also not protected from disclosure
`
`by the work product doctrine. The work product doctrine provides protection for
`
`certain materials prepared in anticipation of litigation, and it is the party asserting
`
`the protection that bears the burden of demonstrating it applies. In re Grand Jury
`
`
`4 Patent Owner has also failed to provide evidence of an agreement between the third
`
`parties and Merck to pursue a common legal strategy regarding this IPR, and thus
`
`cannot meet the threshold requirement for common interest to apply. See In re Pac.
`
`Pictures Corp., 679 F.3d 1121, 1129 (9th Cir. 2012).
`
`– 7 –
`
`

`

`Proceeding, 79 F. App’x 476, 477 (2d Cir. 2003). The protection is not absolute,
`
`however, nor does it apply to any of the materials requested herein.
`
`Specifically, the materials requested in RFP 1-3 relate to factual information
`
`conveyed between the third-party witnesses and either PO itself or Wilmer Hale,
`
`such as materials concerning factual disclosures of the declarations, and documents
`
`provided to or shown to the declarants. But such factual information is not protected
`
`by the work product doctrine, and therefore must be produced. Infosystems, Inc. v.
`
`Ceridian Corp., 197 F.R.D. 303, 306 (E.D. Mich. 2000).
`
`Moreover, the doctrine cannot shield draft affidavits, where those affidavits
`
`are statements of fact within the personal knowledge of the third party witness, rather
`
`than recitations of the legal theories of the attorney. Murphy v. Kmart Corp., 259
`
`F.R.D. 421, 431 (D.S.D. 2009). Here, neither declaration discusses the ultimate legal
`
`theories in this matter, but rather the alleged exchange of information between
`
`certain entities and the background of the Bodor ’101 Publication. This is factual
`
`information within the personal knowledge of the third-party witnesses, and
`
`therefore any draft declarations requested by RFP 4 are not protected by the work
`
`product doctrine. See id. (“[T]he work product privilege only protects documents
`
`prepared in anticipation of litigation that set forth the attorney’s theory of the case
`
`and [their] litigation strategy.” “[A]n attorney’s memorialization of events,
`
`effectively acting as a stenographer, does not fall within the sphere of documentation
`
`– 8 –
`
`

`

`protected by the work product privilege.” (internal citations omitted)).
`
`III. The Requests Are Necessary In The Interests Of Justice
`
`In an inter partes review, discovery is available for anything that “is otherwise
`
`necessary in the interest of justice.” Garmin Int’l, Inc. et al. v. Cuozzo Speed Techs.
`
`LLC, IPR2012-00001, Paper No. 26 at 5 (March 5, 2013). As the Board explained
`
`in Garmin v. Cuozzo, when evaluating a request for additional discovery, five factors
`
`are important to consider: (1) whether there is more than a mere possibility of finding
`
`something useful; (2) whether the requests seek the other party’s litigation positions;
`
`(3) whether the information requested can be generated by other means; (4) whether
`
`the questions and instructions are easily understandable; and (5) whether the requests
`
`are overly burdensome to answer. Id. at 5-7. Here, on balance, the factors weigh in
`
`favor of granting the requested additional discovery.
`
`Factor 1: The first factor to consider is whether there is more than a mere
`
`possibility of finding something useful. Id. at 6. This does not require the movant to
`
`come forth with direct evidence of what will be found, but rather to merely provide
`
`a sufficient basis for its request. As stated by the Board in Garmin, to be entitled to
`
`additional discovery, “the requester of information should already be in possession
`
`of a threshold amount of evidence or reasoning tending to show beyond speculation
`
`that something useful will be uncovered.” Id. (emphasis added). As explained above,
`
`there is ample reason to believe that the requested discovery will provide something
`
`– 9 –
`
`

`

`useful. Both declarants have admitted that they did not select the materials used to
`
`support the assertions in their declarations, and both admitted that other materials
`
`are likely to exist. See supra at § A. Moreover, it is clear that additional materials
`
`providing relevant evidence underlying the declarations were indeed provided to
`
`and/or shown to the witnesses when preparing their declarations. If this were not the
`
`case, counsel for PO could not have instructed the witnesses to refrain from
`
`answering questions in this regard, as the answer would have been “none.” Id.
`
`Factor 2: The requests do not seek PO’s litigation position.
`
`Factor 3: Petitioner has no ability to generate equivalent information by other
`
`means. The requested information is solely within the possession of Drs. Bodor and
`
`Dandiker, as well as counsel for PO. And when counsel for Petitioner attempted to
`
`uncover this information from Drs. Bodor and Dandiker directly through their
`
`depositions, counsel for PO objected, and instructed the witnesses not to answer.
`
`Factor 4: The requests do not include complicated instructions. Rather, the
`
`instructions are clear and aimed at facilitating a seamless collection and production.
`
`Factor 5: The requests are not overly burdensome. They consist of four
`
`narrowly tailored requests, which relate to a short period of time, and which are
`
`unlikely to require a significant expenditure of resources to collect and produce.
`
`IV. Conclusion
`
`Petitioner therefore respectfully requests that the Board grant this Motion.
`
`– 10 –
`
`

`

`June 12, 2024
`
`
`
`
`
`Respectfully submitted,
`/Philip D. Segrest, Jr./
`Philip D. Segrest, Jr. (Reg. No. 39,021)
`philip.segrest@huschblackwell.com
`Lead Counsel for Petitioner
`
`Nathan P. Sportel
` Stephen R. Howe
`Don J. Mizerk (pro hac vice)
`Backup Counsel for Petitioner
`HUSCH BLACKWELL LLP
`120 South Riverside Plaza, Suite 2200
`Chicago, IL 60606
`Tel. 312-655-1500
`Fax. 312-644-1501
`
`
`
`– 11 –
`
`

`

`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.105, Petitioner certifies that the foregoing
`
`document was served via electronic mail to the attorneys of record in this proceeding
`
`at the following:
`
`WILMER CUTLER PICKERING HALE AND DORR LLP
`WHMerckMavencladIPRs@wilmerhale.com
`Counsel for Patent Owner
`
`
`Asher S. McGuffin (Reg. No. 81,206)
`Asher.McGuffin@wilmerhale.com
`David B. Bassett (pro hac vice)
`David.Bassett@wilmerhale.com
`Cindy Kan (Reg. No. 76,385)
`Cindy.Kan@wilmerhale.com
`Mary Pheng (pro hac vice)
`Mary.Pheng@wilmerhale.com
`Gillian T. Farrell (pro hac vice)
`Gillian.Farrell@wilmerhale.com
`
`Emily R. Whelan (Reg. No. 50,391)
`Emily.Whelan@wilmerhale.com
`Vinita Ferrera (pro hac vice)
`Vinita.Ferrera@wilmerhale.com
`Deric X. Geng, Ph.D. (Reg. No. 73,434)
`Deric.Geng@wilmerhale.com
`Scott Bertulli (Reg. No. 75,886)
`Scott.Bertulli@wilmerhale.com
`
`
`
`
`June 12, 2024
`
`/Philip D. Segrest, Jr./
`Philip D. Segrest, Jr. (Reg. No. 39,021)
`philip.segrest@huschblackwell.com
`Lead Counsel for Petitioner
`
`Nathan P. Sportel
`Stephen R. Howe
`Don J. Mizerk (pro hac vice)
` Backup Counsel for Petitioner
`HUSCH BLACKWELL LLP
`120 South Riverside Plaza, Suite 2200
`Chicago, IL 60606
`Tel. 312-655-1500
`Fax. 312-644-1501
`
`
`
`
`
`
`
`– 12 –
`
`

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