Trials
`Trials; Kushan, Jeffrey P.
`Eldora L. Ellison; Trey Powers; Jennifer Chagnon; Tyler Liu; PTAB Account; Peterson, Leif; Stewart, Mark
`RE: PGR2025-00006: Request for authorization to correct petition and exhibit 1004
`Thursday, April 3, 2025 12:10:16 PM
`image001.png
`
`From:
`To:
`Cc:
`Subject:
`Date:
`Attachments:
`
`Counsel,
`
`Petitioner is authorized to file the motion. Petitioner shall attach clean copies of
`the corrected documents, together with redlines showing the corrections to the
`petition and the corrected signature page of Ex. 1004, as appendices to the
`motion. To the extent Petitioner intends to file any other materials in support of
`the motion, those materials shall also be attached to the motion as appendices.
`
`Petitioner’s motion is due no later than two weeks from the date of this email.
`
`Patent Owner is authorized to file an opposition, if it so chooses, which shall be
`filed no later than two weeks from the date Petitioner files its motion. Patent
`Owner is not authorized to file any additional evidence with the opposition.
`
`No further briefing is authorized at this time.
`
`Regards,
`
`Andrew Kellogg,
`Deputy Chief Clerk, Trials
`Patent Trial and Appeal Board
`USPTO
`andrew.kellogg@uspto.gov
`(571) 272-5366
`
`From: Trials <Trials@USPTO.GOV>
`Sent: Thursday, January 16, 2025 8:27 AM
`To: Kushan, Jeffrey P. <jkushan@sidley.com>; Trials <Trials@USPTO.GOV>
`Cc: Eldora L. Ellison <EELLISON@sternekessler.com>; Trey Powers <TPOWERS@sternekessler.com>;
`Jennifer Chagnon <JChagnon@sternekessler.com>; Tyler Liu <TLIU@sternekessler.com>; PTAB
`Account <PTAB@sternekessler.com>; Peterson, Leif <leif.peterson@Sidley.com>; Stewart, Mark
`<mark.stewart@merck.com>
`Subject: RE: PGR2025-00006: Request for authorization to correct petition and exhibit 1004
`
`Good morning counsel,
`
`This case is not paneled. Your email will be shared with the panel once assigned.
`
`Regards,
`
`Ex. 3001
`PGR2025-00006
`
`

`

`
`Esther Goldschlager
`Supervisory Paralegal Specialist
`Patent Trial & Appeal Board
`U.S. Patent & Trademark Office
`
`From: Kushan, Jeffrey P. <jkushan@sidley.com>
`Sent: Wednesday, January 15, 2025 5:08 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: Eldora L. Ellison <EELLISON@sternekessler.com>; Trey Powers <TPOWERS@sternekessler.com>;
`Jennifer Chagnon <JChagnon@sternekessler.com>; Tyler Liu <TLIU@sternekessler.com>; PTAB
`Account <PTAB@sternekessler.com>; Peterson, Leif <leif.peterson@Sidley.com>; Stewart, Mark
`<mark.stewart@merck.com>
`Subject: PGR2025-00006: Request for authorization to correct petition and exhibit 1004
`
`CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE SOURCE before
`responding, clicking on links, or opening attachments.
`
`Your Honors:
`
`Pursuant to 37 C.F.R. § 42.204(c), Petitioner Merck Sharp & Dohme LLC respectfully requests
`authorization to file a motion to correct clerical and/or typographical mistakes in the petition and in
`Exhibit 1004 in PGR2025-00006 without changing the filing date of the petition.
`
`Petitioner first raised these issues with Patent Owner in an email on December 12, 2024, two days
`after the petition was filed. Patent Owner has indicated it does not oppose Petitioner’s request.
`
`The petition contains typographical errors. Specifically, the petition erroneously recites “12” instead
`of “13” as the last claim in a series of listed claims on pages 1, 3, 26, 69, and 85. These are obvious
`typographical errors. The petition correctly identifies the grounds as challenging claims 1-13 for §
`112, and 1-4 and 7-13 for § 103, and substantively addresses each of claims 1 to 13. Likewise, the
`PTACTS bibliographic record entered when the petition was filed identifies these series of claims for
`each of the grounds.
`
`Exhibit 1004 contains a clerical mistake. Specifically, the signature that the expert (Dr. Park) affixed
`to page 100 of the file containing his declaration was inadvertently removed by our law firm’s
`document cleaning software.
`
`If authorized, Petitioner would file a motion that would describe the errors and why correction is
`warranted under Rule 42.204(c). Petitioner is also prepared to provide (if the Board authorizes) a
`redline showing the corrections to the petition and the corrected signature page of EX1004, which
`Petitioner has previously shared with Patent Owner’s counsel.
`
`If the Board wishes to conduct a conference call concerning this request, Petitioner will coordinate
`with Patent Owner’s counsel to provide dates and times for a call.
`
`

`

`
`Sincerely,
`
`Jeff Kushan
`
`JEFFREY P. KUSHAN
`
`SIDLEY AUSTIN LLP
`1501 K Street, N.W.
`Washington, DC 20005
`+1 202 736 8914
`jkushan@sidley.com
`www.sidley.com
`
`
`****************************************************************************************************​​​​
`This e‑mail is sent by a law firm and may contain information that is privileged or confidential.
`If you are not the intended recipient, please delete the e‑mail and any attachments and notify us
`immediately.
`****************************************************************************************************
`
`
`