`571-272-7822 Entered: August 18, 2023
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`MYLAN PHARMACEUTICALS INC., MSN LABORATORIES
`PRIVATE LTD. and MSN PHARMACEUTICALS INC.,
`Petitioners,
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`v.
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`BAUSCH HEALTH IRELAND LIMITED,
`Patent Owner.
`____________
`
`Case No. IPR2022-007221
`Patent No. 7,041,786 B2
`____________
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`Before: TINA E. HULSE, CYNTHIA M. HARDMAN, and
`MICHAEL A. VALEK, Administrative Patent Judges.
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`VALEK, Administrative Patent Judge.
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`Conduct of the Proceeding
`37 C.F.R. § 42.5
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`1 IPR2023-00016 has been joined with this proceeding.
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`IPR2022-00722
`Patent No. 7,041,786 B2
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`Patent Owner seeks authorization to submit an expert report served by
`Petitioner in a related district court proceeding (“the Zhou report”) as
`supplemental information under 37 C.F.R. § 42.123. Ex. 3002 (Email from
`J. Hasford dated Aug. 9, 2023). Given the timing of this request, Patent
`Owner “must show why the supplemental information reasonably could not
`have been obtained earlier, and that consideration of the supplemental
`information would be in the interests-of-justice.” 37 C.F.R. § 42.123(b).
`On August 17, 2023, the Board held a conference call with the parties
`to discuss Patent Owner’s request.2 After hearing from the parties, we
`determined that it would not be in the interests-of-justice to allow
`submission of the Zhou report at this stage of the proceeding. In particular,
`we noted that much of the information Patent Owner pointed to in the Zhao
`report is already in the record. Thus, any need for that information is
`substantially outweighed by the prejudice and burden of allowing Patent
`Owner to submit a several-hundred-page expert report, along with additional
`briefing from the parties regarding that report, less than a month before the
`statutory deadline for our final written decision.
`We are also unconvinced that the information could not have been
`obtained earlier. During the call, Petitioner explained that nearly identical
`information was served on Patent Owner in Petitioner’s invalidity
`contentions many months ago, but Patent Owner did not raise this issue with
`the Board until August 9, 2023. This was several weeks after the Zhou report
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`2 We understand Petitioner arranged for a court reporter to generate a
`transcript of this call. Petitioner shall file a copy of the transcript as an
`exhibit. The transcript will provide additional detail regarding the matters
`discussed herein.
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`2
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`IPR2022-00722
`Patent No. 7,041,786 B2
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`was served on Patent Owner. Patent Owner has not shown that this delay
`was reasonable, particularly given the late stage of this proceeding.
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`In consideration of the foregoing, it is hereby:
`ORDERED that Patent Owner’s request to file supplemental
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`information under 37 C.F.R. § 42.123 is denied.
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`3
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`IPR2022-00722
`Patent No. 7,041,786 B2
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`PETITIONER:
`
`Jad Mills
`Richard Torczon
`Nicole Stafford
`Dennis Gregory
`WILSON SONSINI GOODRICH & ROSATI PC
`jmills@wsgr.com
`rtorczon@wsgr.com
`nstafford@wsgr.com
`dgregory@wsgr.com
`
`Andrew Larsen
`Melissa Hayworth
`Christopher Sorenson
`MERCHANT & GOULD P.C.
`alarsen@merchantgould.com
`mhayworth@merchantgould.com
`csorenson@merchantgould.com
`
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`PATENT OWNER:
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`Justin Hasford
`Bryan Diner
`Joshua Goldberg
`Caitlin O’Connell
`Kyu Yun Kim
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, L.L.P.
`justin.hasford@finnegan.com
`bryan.diner@finnegan.com
`joshua.goldberg@finnegan.com
`caitlin.oconnell@finnegan.com
`kyuyun.kim@finnegan.com
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`4
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