`Tel: 571-272-7822
`
`
`
`
` Paper 11
`Date: March 5, 2020
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`MYLAN PHARMACEUTICALS INC.
`Petitioner,
`
`v.
`
`MERCK SHARP & DOHME CORP.,
`Patent Owner.
`_____________
`
`IPR2020-00040
`Patent 7,326,708 B2
`_______________
`
`Before SHERIDAN K. SNEDDEN, ROBERT A. POLLLOCK, and
`TIMOTHY G. MAJORS, Administrative Patent Judges.
`
`MAJORS, Administrative Patent Judge.
`
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`
`
`
`IPR2020-00040 (Patent 7,326,708 B2)
`
`On March 4, 2020, the Board held a conference call with the parties
`pursuant to Petitioner’s request made in an email dated February 25, 2020.
`Ex. 3001. A court reporter was also present, and the Board instructed the
`parties to file a transcript of the conference as an exhibit when available.
`As indicated during the conference, Petitioner requests authorization
`to file a Reply to the Patent Owner’s Preliminary Response. See 37 C.F.R.
`§ 42.108(c). Petitioner seeks to respond to several issues raised in Patent
`Owner’s Preliminary Response. Those issues are the following: whether the
`claimed invention antedates certain prior art asserted in the Petition; whether
`the Board should exercise discretion and deny the Petition under 35 U.S.C.
`§ 325(d) because certain prior art was already before, and/or considered by,
`the examiner during prosecution of the challenged patent; and whether the
`Board should exercise discretion and deny the Petition under 35 U.S.C.
`§ 314(a) based, among other things, on the status of, and nature of the claims
`raised in, related district court litigation.
`Rule 42.108(c) states: “A petitioner may seek leave to file a reply to
`the preliminary response in accordance with §§ 42.23 and 42.24(c). Any
`such request must make a showing of good cause.” 37 C.F.R. § 42.108(c).
`Based on the argument made during the conference, we are persuaded
`that good cause exists here. The parties agree that additional pre-institution
`briefing should be permitted to address the antedation issue. We find that
`some matters raised by Patent Owner in the Preliminary Response in favor
`of discretionary denial (e.g., the number of the grounds implicated by the
`antedation evidence) were not reasonably foreseeable to Petitioner. And, we
`conclude on this record that the Board may benefit from further written
`argument from the parties addressing the discretionary denial issues raised.
`
`2
`
`
`
`IPR2020-00040 (Patent 7,326,708 B2)
`
`Accordingly, the parties will be given an opportunity to address
`briefly, and in writing, the above issues. We authorize a Reply from
`Petitioner and a Sur-Reply from Patent Owner. To be clear, the parties’
`respective papers will be limited to addressing the antedation issue, and the
`issues of discretionary denial under § 325(d) and § 314(a). No new evidence
`may be submitted with the authorized Reply and Sur-Reply.
`It is
`ORDERED that Petitioner’s request to file a Reply to the Patent
`Owner’s Preliminary Response is granted as provided above;
`FURTHER ORDERED that Petitioner is authorized to file, on or
`before March 13, 2020, a Reply to Patent Owner’s Preliminary Response,
`and that Reply shall be limited to eight (8) pages; and
`FURTHER ORDERED that Patent Owner is authorized to file, on or
`before March 20, 2020, a Sur-Reply to Petitioner’s Reply, and any such Sur-
`Reply shall be limited to eight (8) pages.
`
`
`
`
`
`
`
`
`3
`
`
`
`IPR2020-00040 (Patent 7,326,708 B2)
`
`
`
`
`For Petitioner:
`Jitendra Malik
`Alissa M. Pacchioli
`Christopher W. West
`Heike S. Radeke
`KATTEN MUCHIN ROSEMAN LLP
`jitty.malik@kattenlaw.com
`alissa.pacchioli@kattenlaw.com
`christopher.west@katten.com
`heike.radeke@katten.com
`
`For Patent Owner:
`Stanley E. Fisher
`Jessamyn S. Berniker
`Shaun P. Mahaffy
`Anthony H. Sheh
`Bruce R. Genderson
`WILLIAMS & CONNOLLY LLP
`sfisher@wc.com
`jberniker@wc.com
`smahaffy@wc.com
`asheh@wc.com
`bgenderson@wc.com
`
`4
`
`
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