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`IPR2020-00040
` Petitioner’s Notice of Appeal
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`Mylan Pharmaceuticals Inc.
`Petitioner,
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`v .
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`Merck Sharp & Dohme Corp.
`Patent Owner.
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`Case IPR2020-00040
`U.S. Patent No. 7,326,708 B2
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`PETITIONER’S NOTICE OF APPEAL
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`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`IPR2020-00040
` Petitioner’s Notice of Appeal
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`Pursuant to 28 U.S.C. § 1295(a)(4)(A), 5 U.S.C. §§ 701-706, 35 U.S.C.
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`§§ 319, 141, 142, and in accordance with 37 C.F.R. §§ 90.2, 90.3, and Federal
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`Circuit Rule 15(a)(1), Petitioner Mylan Pharmaceuticals Inc. hereby provides notice
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`that it appeals to the United States Court of Appeals for the Federal Circuit from the
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`Final Written Decision of the Patent Trial and Appeal Board in Case No. IPR2020-
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`00040, entered on May 7, 2021 (Paper No. 91), and from all underlying orders,
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`decisions, rulings, and opinions related thereto and included therein. This appeal is
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`timely under 35 U.S.C. § 142 and Rule 15(a)(1) of the Federal Rules of Appellate
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`Procedure.
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`In accordance with 37 C.F.R. § 90.2(a)(3)(ii), the expected issues on appeal
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`include, but are not limited to the following:
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`1.
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`The Board’s determination that Petitioner failed to show that claims 1-
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`3, 17, 19, and 21-23 of U.S. Patent No. 7,326,708 B2 (“the ’708
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`Patent”) are unpatentable as anticipated over the prior art.
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`2.
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`The Board’s determination that Petitioner failed to show that claims 1-
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`4, 17, 19, and 21-23 of the ’708 Patent are unpatentable as obvious over
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`the prior art.
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`3.
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`The Board’s determination that the Patent Owner had reduced to
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`practice the subject matter of claims 1, 2, 17, 19, and 21–23 of the ’708
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`Patent before the applicable priority and/or publication date of WO
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`IPR2020-00040
` Petitioner’s Notice of Appeal
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`03/004498 A1, and whether WO 03/004498 A1 is available prior art to
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`claims 1, 2, 17, 19, and 21–23 of the ’708 Patent.
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`4.
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`All other issues decided adversely to Petitioner in any orders, decisions,
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`rulings, and opinions underlying or supporting the Final Written
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`Decision.
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`Pursuant to 35 U.S.C. § 142 and 37 C.F.R. § 90.2(a), a copy of this Notice is
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`being filed with the Director of the United States Patent and Trademark Office and
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`with the Patent Trial and Appeal Board. In addition, a copy of this Notice and the
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`required docketing fees are being filed with the Clerk’s Office for the United States
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`Court of Appeals for the Federal Circuit via CM/ECF.
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`Date: July 8, 2021
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`Respectfully submitted,
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`Katten Muchin Rosenman LLP
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`/ Jitendra Malik /
`Jitendra Malik, Ph.D. (Reg. No. 55823)
`Lead Counsel for Petitioner
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`IPR2020-00040
` Petitioner’s Notice of Appeal
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`CERTIFICATION OF SERVICE ON PATENT OWNER
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`Pursuant to 37 C.F.R. §§ 42.6, the undersigned certifies that on July 8, 2021,
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`a complete copy of the foregoing Notice of Appeal was served electronically on
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`counsel of record for the Patent owner at the following electronic-mail addresses:
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`sfisher@wc.com
`jberniker@wc.com
`smahaffy@wc.com
`asheh@wc.com
`bgenderson@wc.com
`ebaumgarten@wc.com
`jluo@wc.com
`jkomis@wc.com
`azolan@wc.com
`suribe@wc.com
`vomoroghomwan@wc.com
`jwong@winston.com
`cklein@winston.com
`cfundakowski@winston.com
`jmcnair@winston.com
`jpesick@winston.com
`rfaegenburg@lernerdavid.com
`tvanbuskirk@lernerdavid.com
`mteschner@lernerdavid.com
`agaza@ycst.com
`swilson@ycst.com
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`IPR2020-00040
` Petitioner’s Notice of Appeal
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`Respectfully submitted,
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`Katten Muchin Rosenman LLP
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`By: / Jitendra Malik /
`Jitendra Malik, Ph.D.
`Reg. No. 55,823
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`IPR2020-00040
` Petitioner’s Notice of Appeal
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`In accordance with 37 C.F.R. §§ 90.2(a)(1) and 104.2(b), I hereby certify that,
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`in addition to being filed electronically through the Board’s E2E System, the original
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`version of the foregoing Notice of Appeal was filed by hand on July 8, 2021, with
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`the Director of the United States Patent and Trademark Office, at the following
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`address:
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`Director of the United States Patent and Trademark Office
`c/o Office of the General Counsel
`Madison Building East, Room 10B20
`600 Dulany Street
`Alexandria, VA 22314
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`In accordance with 37 C.F.R. § 90.2(a)(2), I hereby certify that on July 8,
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`2021, a true and correct copy of the foregoing Notice of Appeal was filed
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`electronically with the Clerk’s Office of the United States Court of Appeals for the
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`Federal Circuit.
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`Date: July 8, 2021
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`Respectfully submitted,
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`Katten Muchin Rosenman LLP
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`/ Jitendra Malik /
`Jitendra Malik, Ph.D. (Reg. No. 55823)
`Lead Counsel for Petitioner
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