Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 48
`Date: May 31, 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)
` 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
`
`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.
`
`
`Tel: 571-272-7822
`
`Paper 48
`Date: May 31, 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)
` 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
`
`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
`
`
`
`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.
`
`
`
`
`4
`
`
`
`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
`
`
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
