From: Trials
`Sent: Wednesday, 9 November 2022 10.37.39
`To: Mills, Jad
`Cc: Trials Hasford, Justin; Diner, Bryan; Goldberg, Joshua; O'Connell, Caitlin; Torczon, Richard; Stafford, Nicole; Gregory,
`Dennis; Kim, Kyu Yun;
`Subject: RE: Mylan Pharmaceuticals Inc. v. Bausch Health Ireland Ltd., IPR Nos. 2022-01102, -01103, -01104, -01105
`Response requested: Yes
`Importance: High
`Sensitivity: Normal
`
`EXT - trials@uspto.gov
`
`Counsel:
`
`Having considered the parties’ positions in their joint email, the panel has determined that there is good cause for a reply
`brief on issue (1) (Patent Owner’s §325(d) arguments), but not issue (2) (legal standard for obviousness/lead compound).
`Therefore, in each of the above-referenced proceedings, Petitioner is authorized to file a reply brief addressing issue (1) to
`which Patent Owner is authorized to file a sur-reply brief. Petitioner’s reply briefs are due by November 15, 2022 and Patent
`Owner’s sur-reply briefs are due by November 22, 2022. Each paper is limited to no more than 6 pages and no new exhibits
`are authorized.
`
`Regards,
`
`Esther Goldschlager
`Supervisory Paralegal Specialist
`Patent Trial and Appeal Board
`
`From: Mills, Jad <jmills@wsgr.com>
`Sent: Friday, November 4, 2022 12:10 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: Hasford, Justin <Justin.Hasford@finnegan.com>; Diner, Bryan <bryan.diner@finnegan.com>; Goldberg, Joshua
`<Joshua.Goldberg@finnegan.com>; O'Connell, Caitlin <Caitlin.O'Connell@finnegan.com>; Torczon, Richard (External)
`<rtorczon@wsgr.com>; Stafford, Nicole <nstafford@wsgr.com>; Gregory, Dennis <dgregory@wsgr.com>; Kim, Kyu Yun
`<KyuYun.Kim@finnegan.com>
`Subject: RE: Mylan Pharmaceuticals Inc. v. Bausch Health Ireland Ltd., IPR Nos. 2022-01102, -01103, -01104, -01105
`
`
`CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE SOURCE before responding, clicking on links, or
`opening attachments.
`
`
`Honorable Board,
`
`Counsel for Petitioner Mylan Pharmaceuticals Inc. and counsel for Patent Owner in the above-referenced proceedings submit
`this joint e-mail providing both parties’ positions pursuant to the Board’s Oct. 31, 2022 instructions. Counsel for Petitioner
`and Patent Owner met and conferred on Nov. 2, 2022.
`
`Petitioner’s Position:
`Petitioner has requested pre-institution reply briefing of 10 pages in each of the above-referenced proceedings to address
`(1) Patent Owner’s §325(d) arguments; and (2) Patent Owner’s heightened legal standard for obviousness, including its “lead
`composition” argument for formulation claims. The replies will address mischaracterizations of fact and law in the
`
`MYLAN EXHIBIT - 1039
`Mylan Pharmaceuticals, Inc. v. Bausch Health Ireland, Ltd. - IPR2022-01104
`
`Pg. 01
`
`

`

`preliminary responses that were not anticipated. Petitioner believes that 10 pages of briefing is appropriate because of the
`fact-specific nature of Patent Owner’s §325(d) arguments and fact-specific application of Patent Owner’s erroneous legal
`standard for obviousness in the preliminary response.
`
`Petitioner is amenable to Patent Owner receiving authorization to file a sur-reply brief in each case of the same length as the
`authorized reply. Petitioner proposes filing its replies within 5 business days of receiving Board authorization, with Patent
`Owner’s sur-replies being due within 10 business days of Petitioner’s filings.
`
`Counsel for Petitioner is available for a conference call with the Board after 3:00pm Eastern on Monday, November 6, before
`1:00pm Eastern on Wednesday, November 9, and at the Board’s convenience on Thursday, November 10 or Friday, November
`11.
`
`Patent Owner’s Position:
`During the meet and confer, Petitioner indicated that it seeks 6 pages to address Patent Owner’s §325(d) arguments and 4
`pages to address what Petitioner alleges is a “heightened legal standard for obviousness.” Patent Owner opposes any reply
`briefing by Petitioner with respect to Petitioner’s alleged “heightened legal standard for obviousness.” Contrary to
`Petitioner’s argument, Petitioner simply has manufactured a disagreement with Patent Owner as to the application of
`Federal Circuit law to the facts here. Patent Owner did not apply any “heightened legal standard for obviousness” in its
`Patent Owner Preliminary response, Patent Owner did not mischaracterize anything, and tellingly Petitioner could not
`identify a single case during the meet and confer indicating that a pre-institution reply would be warranted based on
`Petitioner’s mere disagreement with the application of Federal Circuit law to the facts here.
`
`Turning to §325(d), Patent Owner does not oppose additional briefing, but 6 pages is excessive. In a related case, IPR2022-
`00722, involving the same parties, the Board authorized Petitioner to submit pre-institution reply briefing totaling 5 pages to
`address both (1) §325(d) arguments and (2) Real-Party in Interest issues. Here, for the 325 (d) arguments alone, 2-3 pages
`should be sufficient.
`
`Counsel for Patent Owner is available at the Board’s convenience on Thursday, November 10 or Friday, November 11.
`
`Respectfully submitted,
`
`Jad A. Mills
`Counsel for Petitioner
`
`
`From: Trials <Trials@USPTO.GOV>
`Sent: Monday, October 31, 2022 12:28 PM
`To: Kim, Kyu Yun <KyuYun.Kim@finnegan.com>; Trials <Trials@USPTO.GOV>
`Cc: Hasford, Justin <Justin.Hasford@finnegan.com>; Diner, Bryan <bryan.diner@finnegan.com>; Goldberg, Joshua
`<Joshua.Goldberg@finnegan.com>; O'Connell, Caitlin <Caitlin.O'Connell@finnegan.com>; Torczon, Richard
`<rtorczon@wsgr.com>; Stafford, Nicole <nstafford@wsgr.com>; Gregory, Dennis <dgregory@wsgr.com>; Mills, Jad
`<jmills@wsgr.com>
`Subject: RE: Mylan Pharmaceuticals Inc. v. Bausch Health Ireland Ltd., IPR Nos. 2022-01102, -01103, -01104, -01105
`
`EXT - trials@uspto.gov
`
`
`Counsel:
`
`As the Board recently advised, we expect the parties to meet and confer before approaching the Board with requests. Please
`meet and confer by November 2nd regarding this request. When you confer, the parties should consider that the panel is
`generally amenable to requests for reply briefing provided they are limited in scope, do not seek an excessive number of
`additional pages relative to the issues to be briefed, and the briefing schedule is kept short to allow time for the panel’s
`
`Pg. 02
`
`

`

`decision. Once you have conferred, please respond with a joint email that provides both parties’ positions after having
`engaged in a good faith attempt to resolve their differences regarding this request.
`
`Regards,
`Esther Goldschlager
`Supervisory Paralegal Specialist
`Patent Trial and Appeal Board
`(571) 272-7822
`
`From: Kim, Kyu Yun <KyuYun.Kim@finnegan.com>
`Sent: Friday, October 28, 2022 6:44 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: Hasford, Justin <Justin.Hasford@finnegan.com>; Diner, Bryan <bryan.diner@finnegan.com>; Goldberg, Joshua
`<Joshua.Goldberg@finnegan.com>; O'Connell, Caitlin <Caitlin.O'Connell@finnegan.com>; Torczon, Richard (External)
`<rtorczon@wsgr.com>; EXT- nstafford@wsgr.com <nstafford@wsgr.com>; Gregory, Dennis <dgregory@wsgr.com>; Mills, Jad
`<jmills@wsgr.com>
`Subject: RE: Mylan Pharmaceuticals Inc. v. Bausch Health Ireland Ltd., IPR Nos. 2022-01102, -01103, -01104, -01105
`
`
`CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE SOURCE before responding, clicking on links, or
`opening attachments.
`
`
`Dear Board:
`
`Patent Owner filed is preliminary responses on October 7. Petitioner waited until October 26, 19 days later, to contact Patent
`Owner about its planned request for pre-institution replies. On the same day, in less than two hours and without
`questioning Petitioner’s delay, Patent Owner responded to Petitioner that Patent Owner was available to meet and confer
`on November 2. Patent Owner is still available for a meet and confer at that time, and believes the parties should proceed
`with this meet and confer to potentially reduce the number of issues for the Board. In the absence of such a meet and
`confer, Patent Owner must oppose all requested relief.
`
`Respectfully submitted,
`
`Kyu Yun
`
`From: Mills, Jad <jmills@wsgr.com>
`Sent: Friday, October 28, 2022 3:58 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: Hasford, Justin <Justin.Hasford@finnegan.com>; Diner, Bryan <bryan.diner@finnegan.com>; Goldberg, Joshua
`<Joshua.Goldberg@finnegan.com>; O'Connell, Caitlin <Caitlin.O'Connell@finnegan.com>; Kim, Kyu Yun
`<KyuYun.Kim@finnegan.com>; Torczon, Richard <rtorczon@wsgr.com>; EXT- nstafford@wsgr.com <nstafford@wsgr.com>;
`Gregory, Dennis <dgregory@wsgr.com>
`Subject: Mylan Pharmaceuticals Inc. v. Bausch Health Ireland Ltd., IPR Nos. 2022-01102, -01103, -01104, -01105
`
`EXTERNAL Email:
`
`Honorable Board:
`
` I
`
` represent Petitioner Mylan Pharmaceuticals Inc. in the above-referenced proceedings. All five of Patent Owner’s counsel of
`record are copied on this e-mail.
`
`Petitioner respectfully requests pre-institution reply briefing of 10 pages in each of the above-referenced proceedings to
`address (1) Patent Owner’s §325(d) arguments; and (2) Patent Owner’s heightened legal standard for obviousness, including
`its “lead composition” argument for formulation claims. Petitioner is amenable to Patent Owner receiving authorization to
`
`Pg. 03
`
`

`

`file a sur-reply brief in each case of the same length as the authorized reply.
`
`Petitioner approached Patent Owner to meet and confer regarding this request, but counsel for Patent Owner informed
`Petitioner that they would not begin to discuss the request until one full week later. Despite repeated follow-ups by
`Petitioner, Patent Owner provided no response and failed to explain its delay. As the attorneys for Patent Owner have, in the
`interim, refused any response to the undersigned, and to avoid any further unexplained delay from Patent Owner, Petitioner
`seeks relief from the Board.
`
`Counsel for Petitioner is available for a conference call next week at a time convenient for the Board.
`
`Respectfully submitted,
`
`
`WILSON
`SONSINI
`
`
`
`
`
`Jad A. Mills
`Wilson Sonsini Goodrich & Rosati
`701 5th Ave. Suite 5100
`Seattle, WA 98104
`Direct: 206.883.2554
`Fax: 206.883.2699
`
`This email and any
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`attachments thereto) by others is strictly prohibited. If you are not the intended recipient, please contact the sender
`immediately and permanently delete the original and any copies of this email and any attachments thereto.
`
`This e-mail message is intended only for individual(s) to whom it is addressed and may contain information that is privileged, confidential, proprietary, or otherwise
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`This email and any attachments thereto may contain private, confidential, and privileged material for the sole use of the
`intended recipient. Any review, copying, or distribution of this email (or any attachments thereto) by others is strictly
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`
`Pg. 04
`
`