`Tel: 571-272-7822
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`Paper 17__
`Date: April 9, 2020
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`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
`Supplemental Briefing on Discretionary Denial
`35 U.S.C. §314(a); 37 C.F.R. § 42.5
`
`
`
`
`
`
`
`
`
`
`
`IPR2020-00040 (Patent 7,326,708 B2)
`
`The Board, sua sponte, requests supplemental briefing from the
`parties on the subject matter below.
`In Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar.
`20, 2020) (“Fintiv”), the Board discussed potential applications of NHK
`Spring Co., Ltd. v. Intri-Plex Techs., Inc., IPR2018-00752, Paper 8 (PTAB
`Sept. 12, 2018) (precedential) (“NHK”), as well as a number of other cases
`dealing with discretionary denial under § 314(a). Fintiv identifies a non-
`exclusive list of factors parties may consider addressing, particularly where
`there is a related, parallel district court action and whether such action
`provides any basis for discretionary denial under NHK. Fintiv at 5–16.
`Those factors include:
`1. whether the court granted a stay or evidence exists that one
`may be granted if a proceeding is instituted;
`2. proximity of the court’s trial date to the Board’s projected
`statutory deadline for a final written decision;
`3. investment in the parallel proceeding by the court and the
`parties;
`4. overlap between issues raised in the petition and in the
`parallel proceeding;
`5. whether the petitioner and the defendant in the parallel
`proceeding are the same party; and
`6. other circumstances that impact the Board’s exercise of
`discretion, including the merits.
`Id. at 5–6. We recognize that the parties have addressed, at least indirectly,
`some of these factors already in their existing briefing. We, nevertheless,
`invite the parties to address directly in supplemental briefing the Fintiv
`factors listed above.
`
`2
`
`
`
`IPR2020-00040 (Patent 7,326,708 B2)
`
`Accordingly, it is:
`ORDERED that Petitioner and Patent Owner are each authorized to
`submit a supplemental brief of up to three (3) pages addressing the factors
`from Fintiv set forth above;
`FURTHER ORDERED that each party’s supplemental brief, if filed,
`shall be due on April 14, 2020; and
`FURTHER ORDERED that the filing of limited additional evidence
`(only that which is absolutely necessary) to address the Fintiv factors is
`authorized; no other new evidence is permitted.
`
`
`
`
`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
`WILLIAMS & CONNOLLY LLP
`sfisher@wc.com
`jberniker@wc.com
`smahaffy@wc.com
`asheh@wc.com
`
`
`4
`
`
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