`Tel: 571-272-7822
`
`
`
`
`
`Paper: 61
`Date: November 9, 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)1
`_______________
`
`Before SHERIDAN K. SNEDDEN, ROBERT A. POLLLOCK, and
`TIMOTHY G. MAJORS, Administrative Patent Judges.
`
`MAJORS, Administrative Patent Judge.
`
`
`
`
`ORDER
`Conduct of the Proceeding
`Authorizing Motion to File Request for Certificate of Correction
`37 C.F.R. §§ 1.323, 42.5, 42.20
`
`
`
`
`
`
`1 Petitioners in IPR2020-01045, IPR2020-01060, and IPR2020-01072 were
`joined as parties to this proceeding. See Papers 44–46.
`
`
`
`IPR2020-00040
`Patent 7,326,708 B2
`
`On November 6, 2020, the Board held a conference call with the
`parties to discuss Patent Owner’s request for authorization to file a motion
`seeking leave to file a certificate of correction. A court reporter was present
`for the call; the parties are instructed to file a transcript when available.
`Patent Owner’s request for leave to file a certificate of correction
`relates to claims 5–7 of U.S. Patent 7,326,708 B2 (“the ’708 patent”).
`Claims 5–7 are not challenged in this proceeding. As discussed during the
`conference call, Patent Owner contends that claims 5–7 include an evident
`mistake by the patent applicant that is correctable under 35 U.S.C. § 255.
`As such, Patent Owner requests authorization to file a motion before the
`Board, requesting that the Board cede jurisdiction over the ’708 patent
`specific to claims 5–7 so that Patent Owner may petition the Director for a
`certificate of correction on those claims. Petitioner objects, arguing the
`alleged mistake is not correctable and points to colloquy and an oral order
`from claim construction proceedings in a related district court case, in which
`it was alleged the court determined claims 5–7 were indefinite and could not
`be corrected by the court.
`Upon hearing preliminary argument from the parties at the conference
`call, we authorize Patent Owner’s request for leave to file its motion.
`Whether the relief Patent Owner seeks from the Board is justified will be
`decided after receiving the motion and authorized briefing (detailed below).
`See generally Honeywell Int’l Inc. v. Arkema Inc., 939 F.3d 1345, 1349–50
`(Fed. Cir. 2019) (explaining the steps and showing required by patent owner
`seeking a certificate of correction under 35 U.S.C. § 255 for a patent
`undergoing post-grant proceedings before the Board).
`
`2
`
`
`
`IPR2020-00040
`Patent 7,326,708 B2
`
`Accordingly, it is:
`ORDERED that Patent Owner is authorized to file a Motion to File
`Request for Certificate of Correction of Claims 5–7, which motion will be
`no more than ten (10) pages and will be filed no later than November 17,
`2020; Patent Owner will also file the relevant transcript from related district
`court proceedings, discussed above, as an exhibit to its motion;
`FURTHER ORDERED that Petitioner may file an Opposition to
`Patent Owner’s authorized motion, which Opposition will be no more than
`ten (10) pages and will be filed no later than December 4, 2020; and
`FURTHER ORDERED that Patent Owner may file a Reply in support
`of Patent Owner’s authorized motion, which Reply will be no more than
`three (3) pages and will be filed no later than December 11, 2020.
`
`
`
`
`
`
`
`
`3
`
`
`
`IPR2020-00040
`Patent 7,326,708 B2
`
`
`
`
`FOR PETITIONER:
`Jovial Wong
`WINSTON & STRAWN LLP
`jwong@winston.com
`
`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
`
`
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
