Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`Paper: 34
`Entered: November 8, 2018
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`PFIZER, INC.,
`Petitioner,
`
`v.
`
`BIOGEN, INC.,
`Patent Owner.
`____________
`
`Case IPR2018-00186
`Patent 9,296,821 B2
`____________
`
`
`Before ERICA A. FRANKLIN, SHERIDAN K. SNEDDEN, and
`JACQUELINE T. HARLOW, Administrative Patent Judges.
`
`FRANKLIN, Administrative Patent Judge.
`
`
`
`JUDGMENT
`Termination of the Proceeding
`35 U.S.C § 317
`
`
`
`
`
`Tel: 571-272-7822
`
`
`
`Paper: 34
`Entered: November 8, 2018
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`PFIZER, INC.,
`Petitioner,
`
`v.
`
`BIOGEN, INC.,
`Patent Owner.
`____________
`
`Case IPR2018-00186
`Patent 9,296,821 B2
`____________
`
`
`Before ERICA A. FRANKLIN, SHERIDAN K. SNEDDEN, and
`JACQUELINE T. HARLOW, Administrative Patent Judges.
`
`FRANKLIN, Administrative Patent Judge.
`
`
`
`JUDGMENT
`Termination of the Proceeding
`35 U.S.C § 317
`
`
`
`
`
`
`IPR2018-00186
`Patent 9,296,821 B2
`
`
`On October 24, 2018, the parties contacted the Board to request
`authorization to file a joint motion to terminate this proceeding. Ex. 3001.
`On October 25, 2018, we authorized the joint motion and instructed the
`parties that any agreement between the parties made in connection with the
`termination request must be in writing and a true copy must be filed with
`Board. Id. (citing 37 C.F.R. § 42.74(b)). On October 31, 2018, the parties
`filed a joint motion to terminate the proceeding pursuant to 35 U.S.C § 317.
`Paper 33. In the joint motion, the parties explain that, through their
`respective counsel, they “agreed to seek termination of this proceeding
`pursuant to 35 U.S.C. § 317.” Id. at 1.
`Under 35 U.S.C. § 317(a), “[a]n inter partes review instituted under
`this chapter shall be terminated with respect to any petitioner upon the joint
`request of the petitioner and patent owner, unless the Office has decided the
`merits of the proceeding before the request for termination is filed.” See
`also 37 C.F.R. § 42.74(a) (“parties may agree to settle any issue in a
`proceeding”). The Decision on Institution was entered on June 14, 2018.
`Paper 15. Patent Owner filed its Patent Owner’s Response to the Petition on
`October 8, 2018. Paper 32. Petitioner has not filed its Petitioner’s Reply to
`Patent Owner’s Response. The stipulated due date for that filing is January
`15, 2019. Paper 27. The parties assert that terminating the proceeding is
`appropriate based upon the timing of their request, as they have filed their
`joint motion before the Board has decided the merits of proceeding. Paper
`33, 3. We agree and, thus, find that the parties have satisfied section §
`317(a).
`
`
`
`2
`
`
`
`IPR2018-00186
`Patent 9,296,821 B2
`
`
`Under 35 U.S.C. § 317(b),
`[a]ny agreement or understanding between the patent owner and
`a petitioner, including any collateral agreements referred to in
`such agreement or understanding, made in connection with, or in
`contemplation of, the termination of an inter partes review under
`this section shall be in writing and a true copy of such agreement
`or understanding shall be filed in the Office before the
`termination of the inter partes review as between the parties.
`See also 37 C.F.R. § 42.74(b). The parties have set forth their agreement to
`seek a termination of this proceeding in writing, wherein such writing is
`their email to the Board seeking authorization to file an agreed upon joint
`motion to terminate the proceeding, along with their subsequently filed joint
`motion to terminate. See Ex. 3001 (counsel certification that the agreement
`to terminate the proceeding was made in writing and such writing is limited
`to counsel’s joint email to the Board and joint motion to terminate). Further,
`the parties confirm in their joint motion that “no written agreement exists to
`be filed with the Board” and that “there are no other written or oral
`agreements or understandings between the parties made in connection with,
`or in contemplation of, the termination of this proceeding.” Paper 33, 2; see
`also Ex. 3001 (counsel certification that there are (i) no other written
`agreements or understandings between Patent Owner and Petitioner, made in
`connection with, or in contemplation of, the termination, and (ii) no
`unwritten agreements or understandings between Patent Owner and
`Petitioner, made in connection with, or in contemplation of, the termination).
`Thus, we find that the parties have satisfied section 317(b).
`
`
`
`3
`
`
`
`IPR2018-00186
`Patent 9,296,821 B2
`
`
`Also, as noted by the parties in their joint motion, Paper 33, 1, the
`same claims of the ’821 patent challenged in this proceeding were
`challenged in IPR2017-01095. See IPR2017-01095, Paper 12 (Decision on
`Institution). The Final Written Decision entered in IPR2017-01095, on
`October 4, 2018, concluded that each of those claims is unpatentable over
`the combined prior art cited in that proceeding. Id. at Paper 60.
`Based on the foregoing, pursuant to 35 U.S.C. § 317, we determine
`that it is appropriate to terminate this proceeding without rendering a Final
`Written Decision.
`
`Accordingly, it is
`ORDERED that the joint motion to terminate the proceeding is
`GRANTED; and
`FURTHER ORDERED that the proceeding is TERMINATED.
`
`
`
`
`
`4
`
`
`
`IPR2018-00186
`Patent 9,296,821 B2
`
`PETITIONER:
`John Scheibeler
`Dimitrios T. Drivas
`Amit H. Thakore
`Leon Miniovich
`WHITE & CASE LLP
`jscheibeler@whitecase.com
`ddrivas@whitecase.com
`athakore@whitecase.com
`lminiovich@whitecase.com
`
`Jovial Wong
`Charles B. Klein
`Eimeric Reig-Plessis
`WINSTON & STRAWN LLP
`rituximabIPR@winston.com
`jwong@winston.com
`ereigplessis@winston.com
`
`
`PATENT OWNER:
`J. Steven Baughman
`Megan Raymond
`PAUL, WEISS, RIFKIND, WHARTON & GARRISON LLP
`GRP-Biogen-821IPR@paulweiss.com
`sbaughman@paulweiss.com
`mraymond@paulweiss.com
`
`
`
`
`5
`
`
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