`Case 1:17-cv-00770-JDW Document 439-19 Filed 07/31/24 Page 1 of 5 PagelD #: 40382
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`EXHIBIT 19
`EXHIBIT 19
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`
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`Case 1:17-cv-00770-JDW Document 439-19 Filed 07/31/24 Page 2 of 5 PageID #: 40383
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`Trial@uspto.gov
`571-272-7822
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` Paper No. 10
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` Entered: April 3, 2013
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GNOSIS S.p.A., GNOSIS BIORESEARCH S.A. and GNOSIS U.S.A., INC.
`Petitioners
`
`v.
`
`MERCK & CIE
`Patent Owner,
`____________
`
`Case IPR2013-00117
`Patent 6,011,040
`____________
`
`Before MICHAEL P. TIERNEY, JACQUELINE WRIGHT BONILLA, and
`SCOTT E. KAMHOLZ, Administrative Patent Judges.
`
`BONILLA, Administrative Patent Judge.
`
`ORDER
`(To Stay Concurrent Reexamination)
`
`A petition for inter partes review of Patent 6,011,040 (“the ’040 patent”)
`was filed on January 23, 2013. The petition challenges claims 1-3, 5, 6, 8, 9, 11-15
`and 20-22 of the ‘040 patent. Previously, a request for ex parte reexamination
`(90/011,935) directed to the ‘040 patent was filed by a third party on October 4,
`2011. Claims 1-22 of the ‘040 patent, and newly added dependent claims 23-63,
`are subject to the reexamination, which is currently pending.
`
`
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`Case 1:17-cv-00770-JDW Document 439-19 Filed 07/31/24 Page 3 of 5 PageID #: 40384
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`Case IPR2013-00117
`Patent 6,011,040
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`Reexamination of all claims challenged in this proceeding has been ordered
`in 90/011,935. Thus, there is an overlap between the claims in the reexamination
`and the claims in this proceeding, should a trial be instituted. Moreover, there is
`overlap in the prior art in that two references, Wood ‘472 and Ubbink et al., are
`common to both proceedings.
`The Board will not stay a reexamination in the absence of good cause.
`Conducting the above-identified reexamination concurrently with the instant
`proceeding, however, would duplicate efforts within the Office and could
`potentially result in inconsistencies among the proceedings. For instance,
`amendment of the claims in the reexamination proceeding could change the scope
`of the claims challenged in this proceeding while the Board is conducting its
`review.
`The Board is required to determine whether to institute an inter parties
`review within three months after receiving a preliminary response from the Patent
`Owner, or the last date on which such a response is due (i.e., April 23, 2013). See
`35 U.S.C. § 314(b). The final determination of any review instituted will normally
`be issued no later than 1 year from institution. See 35 U.S.C. § 316(a)(11). Any
`Board decision on whether to institute a review or a final written decision with
`respect to the patentability of the challenged claims will likely simplify the issues
`in the reexamination.
`Based upon the foregoing considerations and the record presented in the
`instant proceeding and in the reexamination, the Board exercises its discretion and
`hereby orders a stay in reexamination 90/011,935.
`
`
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`
`2
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`Case 1:17-cv-00770-JDW Document 439-19 Filed 07/31/24 Page 4 of 5 PageID #: 40385
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`Case IPR2013-00117
`Patent 6,011,040
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`In consideration of the foregoing, it is, therefore,
`ORDERED that all proceedings in reexamination 90/011,935 are stayed
`until completion of this proceeding.
`
`
`PETITIONERS: (via electronic transmission)
`
`Jonathan J. Krit
`AMIN TALATI LLC
`55 West Monroe Street, Suite 3400
`Chicago, IL 60603
`jonathan@amintalati.com
`patent@amintalati.com
`
`Janine A. Moderson
`AMIN TALATI LLC
`55 West Monroe Street, Suite 3400
`Chicago, IL 60603
`jen@amintalati.com
`
`
`PATENT OWNER: (via electronic transmission)
`
`Anthony J. Zelano
`MILLEN WHITE ZELANO & BRANIGAN, P.C.
`Arlington Courthouse Plaza I
`2200 Clarendon Boulevard, Suite 1400
`Arlington, VA 22201
`Zelano@mwzb.com
`
`Brion P. Heaney
`MILLEN WHITE ZELANO & BRANIGAN, P.C.
`Arlington Courthouse Plaza I
`2200 Clarendon Boulevard, Suite 1400
`Arlington, VA 22201
`Heaney@mwzb.com
`
`
`
`3
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`Case 1:17-cv-00770-JDW Document 439-19 Filed 07/31/24 Page 5 of 5 PageID #: 40386
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`Case IPR2013-00117
`Patent 6,011,040
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`Jitendra Malik
`ALSTON & BIRD, LLP
`Bank of America Plaza
`101 South Tryon Street, Suite 4000
`Charlotte, NC 28280-4000
`jitty.malik@alston.com
`
`Thomas Parker
`ALSTON & BIRD, LLP
`90 Park Avenue, 12th Floor
`New York, NY 10016-1387
`thomas.parker@alston.com
`
`
`
`
`4
`
`
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