Trials
`McGuffin, Asher S.; PTAB Hearings; Trials
`Philip.Segrest@huschblackwell.com; Mizerk, Don; Howe, Steve; Hitchens, A. Lauren; WH Merck Mavenclad IPRs;
`Whelan, Emily; Geng, Deric; Kan, Cindy; Gu, Wenli; Bassett, David; Ferrera, Vinita; Farrell, Gillian; Pheng, Mary;
`Million-Perez, H. Rachael
`RE: IPR2023-00049 & -00050 // Confidential Information at Oral Hearing
`Wednesday, September 18, 2024 2:18:46 PM
`
`From:
`To:
`Cc:
`
`Subject:
`Date:
`
`Counsel,
`
`The Board appreciates that the parties have come to an agreement and anticipate being able to
`present their arguments at the upcoming oral hearing without disclosing any confidential
`information. In the event that the parties feel the need to discuss any confidential information they
`should let the panel know at the beginning of the hearing and time will be set aside to discuss any
`confidential matters at the end.
`
`With respect to any pending motions to seal and oppositions, the panel will rely on the parties’
`briefing to make their decision.
`
`Regards,
`
`Esther Goldschlager
`Supervisory Paralegal Specialist
`Patent Trial & Appeal Board
`U.S. Patent & Trademark Office
`
`From: McGuffin, Asher S. <Asher.McGuffin@wilmerhale.com>
`Sent: Tuesday, September 17, 2024 1:09 PM
`To: PTAB Hearings <PTABHearings@USPTO.GOV>; Trials <Trials@USPTO.GOV>
`Cc: Philip.Segrest@huschblackwell.com; Mizerk, Don <Don.Mizerk@huschblackwell.com>; Howe,
`Steve <Steve.Howe@huschblackwell.com>; Hitchens, A. Lauren
`<Lauren.Hitchens@huschblackwell.com>; WH Merck Mavenclad IPRs
`<WHMerckMavencladIPRs@wilmerhale.com>; Whelan, Emily <Emily.Whelan@wilmerhale.com>;
`Geng, Deric <Deric.Geng@wilmerhale.com>; Kan, Cindy <Cindy.Kan@wilmerhale.com>; Gu, Wenli
`<Wenli.Gu@wilmerhale.com>; Bassett, David <David.Bassett@wilmerhale.com>; Ferrera, Vinita
`<Vinita.Ferrera@wilmerhale.com>; Farrell, Gillian <Gillian.Farrell@wilmerhale.com>; Pheng, Mary
`<Mary.Pheng@wilmerhale.com>; Million-Perez, H. Rachael <Rachael.Million-
`Perez@wilmerhale.com>
`Subject: IPR2023-00049 & -00050 // Confidential Information at Oral Hearing
`
`CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE SOURCE before
`responding, clicking on links, or opening attachments.
`
`RE: Confidential Information at Oral Hearing
`IPR2023-00049 // U.S. Patent No. 7,713,947
`IPR2023-00050 // U.S. Patent No. 8,377,903
`
`Exhibit 3004
`
`

`

`Your Honors,
`
`Patent Owner is writing to inform the Board of the parties’ respective positions on how to handle
`confidential information that Patent Owner is moving to seal at the oral hearing scheduled for
`October 1, 2024.
`
`Patent Owner anticipates the parties can argue their positions by using Patent Owner’s public,
`redacted versions of the exhibits and by referring to the confidential portions of those exhibits only
`by page number reference or at a sufficiently high level of generality to avoid revealing confidential
`information. Thus, on the condition that Petitioner agrees not to reveal any information that has
`been designated confidential by Patent Owner in its demonstratives or argument, Patent Owner does
`not believe any portion of the oral hearing needs to be sealed at this time. Patent Owner reserves the
`right to move to seal a portion of the oral hearing during the argument if it becomes necessary to
`avoid disclosure of confidential information. Further, if the Board anticipates discussion of the
`details of information that Patent Owner has designated confidential, then Patent Owner seeks to seal
`any such discussion, and would appreciate the Board’s guidance on segregating such discussion to a
`sealed portion of the hearing.
`
`Petitioner further notes that it has opposed Patent Owner’s pending motion to seal and that if the
`Board has questions for the parties about that pending motion at the hearing then responses to those
`questions may reference portions of materials that Patent Owner has identified as confidential.
`
`Best Regards,
`
`Asher S. McGuffin
`Reg. No. 81,206
`Back-up Counsel for Patent Owner
`
`Asher S. McGuffin | WilmerHale
`60 State Street
`Boston, MA 02109 USA
`+1 617 526 6201 (t)
`+1 617 526 5000 (f)
`asher.mcguffin@wilmerhale.com
`
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