Trials@uspto.gov
`571-272-7822
`
`Paper 27
`Date: June 10, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ETHICON, INC.,
`Petitioner,
`v.
`BOARD OF REGENTS, THE UNIVERSITY OF TEXAS SYSTEM,
`Patent Owner.
`
`IPR2019-00406
`Patent 6,596,296 B1
`
`
`
`
`
`
`
`
`
`Before SUSAN L. C. MITCHELL, AVELYN M. ROSS,
`KRISTI L. R. SAWERT, Administrative Patent Judges.
`ROSS, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314, 37 C.F.R. § 42.4
`
`
`
`
`
`
`
`
`571-272-7822
`
`Paper 27
`Date: June 10, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`ETHICON, INC.,
`Petitioner,
`v.
`BOARD OF REGENTS, THE UNIVERSITY OF TEXAS SYSTEM,
`Patent Owner.
`
`IPR2019-00406
`Patent 6,596,296 B1
`
`
`
`
`
`
`
`
`
`Before SUSAN L. C. MITCHELL, AVELYN M. ROSS,
`KRISTI L. R. SAWERT, Administrative Patent Judges.
`ROSS, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314, 37 C.F.R. § 42.4
`
`
`
`
`
`
`
`
`
`IPR2019-00406
`Patent 6,596,296 B1
`
`INTRODUCTION
`I.
`Ethicon, Inc. (“Petitioner”) filed a Petition (Paper 2, “Pet.”) requesting
`inter partes review of claims 1, 4, 11, 16, 17, 20, and 26 of U.S. Patent No.
`6,596,296 B1 (Ex. 1001, “the ’296 patent”). The Board of Regents,
`The University of Texas System (“Patent Owner”) filed a Preliminary
`Response to the Petition (Paper 26, “Prelim. Resp.”).
`We have authority to determine whether to institute an inter partes
`review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). The standard for instituting
`an inter partes review is set forth in 35 U.S.C. § 314(a), which provides that
`an inter partes review may not be instituted “unless the Director
`determines . . . there is a reasonable likelihood that the petitioner would
`prevail with respect to at least [one] of the claims challenged in the petition.”
`For the reasons set forth below, upon considering the Petition and
`evidence of record, we determine that it is appropriate to exercise discretion
`under § 314(a). Accordingly, we deny the Petition, and do not institute an
`inter partes review.
`A. Related Proceedings
`Petitioner identifies the pending district court litigation styled Board
`of Regents, The University of Texas System et al. v. Ethicon, Inc. et al., 1:17-
`cv-01084 (W.D. Tex.) (“the Western District of Texas litigation” in the
`“Western District of Texas”). Pet. 2, see also Patent Owner’s Mandatory
`Notices, Paper 7, 1. Petitioner also identifies its co-pending petition, seeking
`to institute inter partes review of U.S. Patent No. 7,033,603 (“the ’603
`patent”) as a related proceeding, and states that the ’603 patent is a
`continuation-in-part of the ’296 patent. Pet. 2–3; IPR2019-00407, Paper 2;
`see also Patent Owner’s Mandatory Notices, Paper 7, 1.
`
`2
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`IPR2019-00406
`Patent 6,596,296 B1
`The ’296 patent is asserted against other defendants in the following
`pending litigations:
`Board of Regents, The University of Texas System et al. v. Boston
`Scientific Corporation, 1:18-cv-00392 (D. Del.);
`Board of Regents, The University of Texas System et al. v.
`Medtronic, Inc. et al., No. 1:17-cv-00942 (W.D. Tex.)
`(dismissed without prejudice on July 19, 2018).
`Pet. 3–4; see also Patent Owner’s Mandatory Notices, Paper 7, 1. The ’296
`patent is also the subject of a separate petition for inter partes review styled
`Medtronic, Inc. et al. v. Board of Regents, the University of Texas System et
`al., IPR2019-00037, Paper 2 (PTAB Oct. 9, 2018).
`B. The ’296 Patent
`The ’296 patent, titled “Drug Releasing Biodegradable Fiber
`Implant,” issued on July 22, 2003. 1 Ex. 1001, codes (45), (54). The ’296
`patent is directed to tissue engineering compositions and, in particular to,
`“biodegradable polymer fibers capable of the controlled delivery of
`therapeutic agents.” Id. at 2:41–45.
`According to the ’296 patent, “there are several primary avenues
`investigators are using to engineer tissues” that include creating a scaffold in
`the form of a three-dimensional polymer network. Id. at 1:20–26. “[T]he
`scaffold may be biodegradable, meaning that over time it will break down
`both chemically and mechanically.” Id. at 1:49–51. “[A] polymer
`scaffolding provides not only the mechanical support, but also the three-
`dimensional shape that is desired for the new tissue.” Id. at 2:15–18. The
`
`
`1 The ’296 patent claims priority to U.S. provisional application No.
`60/147,827, which was filed on August 6, 1999. Ex. 1001, code (60). The
`specific priority date of the challenged claims currently is not at issue in this
`proceeding, and we need not make any determination in this regard.
`
`3
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`IPR2019-00406
`Patent 6,596,296 B1
`’296 patent purports that “[m]ost current methodologies provide no specific
`means of actively assisting the incorporation of blood vessels into and
`throughout the polymer matrix.” Id. at 2:21–23. In contrast, “[t]he present
`invention provides compositions and methods that promote the directed
`migration of appropriate cell types into the engineered extracellular matrix.”
`Id. at 2:27–30.
`The ’296 patent describes creating heterogeneous scaffolds by
`encapsulating therapeutic agents into individual fibers of a three-
`dimensional fiber matrix. Id. at 8:32–35. “The therapeutic agents are
`released from each individual fiber slowly, and in a controlled manner.” Id.
`at 8:36–37.
`The ’296 patent describes processes for fabricating polymer fibers
`containing therapeutic agents. Id. at 17:36–19:36 (Example 1). “First, a
`biodegradable polymer . . . [is] dissolved in some appropriate solvent (A) at
`concentrations ranging from 5 to 30 wt % . . . In this embodiment, solvent
`(A) has low miscibility with water, and is very miscible with the coagulation
`bath solvent (B).” Id. at 17:42–50. The biodegradable polymer may include
`“poly(L-lactic acid) (PLLA), poly(DL-lactic acid), polycaprolactone,
`poly(glycolic acid), polyanhydride, or copolymers or blends of these or other
`biodegradable polymers.” Id. at 17:43–46. “Once the polymer is dissolved,
`an aqueous solution containing both the biomolecules(s) of interest and a
`surfactant, is added to the polymer solution.” Id. at 17:52–54. “Using some
`form of mechanical energy such as sonication, vortexing, or shear forces
`generated by forcing the liquid through a small orifice, a water-in-oil type
`emulsion is formed between the aqueous and organic phases.” Id. at 18:1–4.
`The ’296 patent further describes extruding the formed emulsion into
`a coagulation bath containing solvent (B). Id. at 18:12–13. “Solvent (B)
`
`4
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`IPR2019-00406
`Patent 6,596,296 B1
`must be highly miscible with solvent (A), and must be a non-solvent for the
`polymer.” Id. at 18:14–16. The ’296 patent explains that:
`Because solvent (A) is highly miscible with coagulating bath
`solvent (B), it freely diffuses from the polymer solution stream,
`into the coagulating bath. The polymer, however, is not soluble
`in solvent (B), and therefore begins to precipitate upon itself,
`forming the outer sheath of a fiber and trapping virtually all of
`the dispersed aqueous phase of the emulsion within the forming
`fiber. In this way, the fiber is loaded with the drug or protein of
`interest.
`Id. at 18:22–30. “Preferred choices of solvent (A) include chloroform and
`methylene chloride.” Id. at 17:51–52. Examples of solvent (B) include
`isopropyl alcohol and hexane. Id. at 18:15–22.
`C. Illustrative Claims
`Petitioner challenges claims 1, 4, 11, 16, 17, 20, and 26 of the ’296
`patent. Independent claim 1 is the only independent claim challenged and is
`reproduced below.
`1. A composition comprising at least one biodegradable
`polymer fiber wherein said fiber is composed of a first phase and
`a second phase, the first and second phases being immiscible,
`and wherein the second phase comprises one or more therapeutic
`agents.
`Ex. 1001, 27:54–58.
`D. The Asserted Unpatentability Challenges
`Petitioner asserts that claims 1, 4, 11, 16, 17, 20, and 26 would have
`been unpatentable on the following grounds:
`Reference(s)/Basis
`Claim(s) Challenged
`35 U.S.C.
`1, 11, 16, 17, 26
`§§ 102 and 103 Song2
`4, 20
`§ 103
`Song
`
`2 Song, US 5,364,627, issued November 15, 1994 (Ex. 1005, “Song”).
`
`5
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`IPR2019-00406
`Patent 6,596,296 B1
`Claim(s) Challenged
`4
`20
`1, 4, 11, 16, 17, 20,
`26
`
`35 U.S.C.
`§ 103
`§ 103
`
`Reference(s)/Basis
`Song, Billmeyer, 3 Curatolo4
`Song, Sidman5
`
`§§ 102 and 103 Choi6
`
`
`Petitioner also relies on declaration testimony of David J. Mooney,
`Ph.D. (Ex. 1002, “the Mooney Declaration”).
`II. ANALYSIS
`A. Discretion Under 35 U.S.C. § 314(a)
`Patent Owner does not address the substance of Petitioner’s
`challenges. See generally Prelim. Resp. Rather, Patent Owner argues the
`Board should exercise its discretion and deny the Petition under 35 U.S.C.
`§ 314(a). Id. at 3. Patent Owner explains that the co-pending district court
`litigation between Patent Owner and Petitioner “has now progressed
`significantly and a trial is scheduled to begin in approximately three months,
`on June 22, 2020.” Id. at 4 (citing Ex. 2004, 2); but see Ex. 3004 (providing
`notice to the Board that the trial date has been suspended). Patent Owner
`contends that “[g]iven the advanced stage of the district court litigation, a
`trial here will not serve as a ‘timely, cost-effective alternative to litigation’
`(77 Fed. Reg. 48,680 (Aug. 14, 2012)), but rather as a duplicative
`proceeding that unnecessarily taxes the Board’s resources.” Id. at 5.
`
`
`3 Fred W. Billmeyer, Jr., Textbook of Polymer Science 513–532 (2nd ed.,
`John Wiley & Sons, Inc.) (1971) (Ex. 1008, “Billmeyer”).
`4 Curatolo, EP 0253554 A2, published January 20, 1988 (Ex. 1009,
`“Curatolo”).
`5 Sidman, US 4,351,337, issued September 28, 1982 (Ex. 1006, “Sidman”).
`6 Choi et al., US 4,093,709, issued June 6, 1978 (Ex. 1007, “Choi”).
`
`6
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`IPR2019-00406
`Patent 6,596,296 B1
`We have discretion to deny a petition for inter partes review under
`§ 314(a). See 35 U.S.C. § 314(a) (stating “[t]he Director may not authorize
`an inter partes review to be instituted unless . . . .”); Cuozzo Speed Techs.,
`LLC v. Lee, 136 S. Ct. 2131, 2140 (“[T]he agency’s decision to deny a
`petition is a matter committed to the Patent Office’s discretion.”); Harmonic
`Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“First of all,
`the PTO is permitted, but never compelled, to institute an IPR proceeding.”
`(citing 35 U.S.C. § 314(a))). “[E]vents in other proceedings related to the
`same patent, either at the Office, in district courts, or the ITC,” may favor
`“denying a petition even though some claims meet the threshold standards
`for institution under 35 U.S.C. §§ 314(a).” Consolidated Trial Practice
`Guide (“Practice Guide”)7 at 58 (citing NHK Spring Co., Ltd. v. Intri-Plex
`Techs., Inc., IPR2018-00752, Paper 8, 11–21 (PTAB Sept. 12, 2018)
`(precedential). In weighing whether to exercise discretion we balance, inter
`alia, the following factors:
`1.
`whether the court granted a stay or evidence exists that one
`may be granted if a proceeding is instituted;
`proximity of the court’s trial date to the Board’s projected
`statutory deadline for a final written decision;
`investment in the parallel proceeding by the court and the
`parties;
`overlap between issues raised in the petition and in the
`parallel proceeding;
`whether the petitioner and the defendant in the parallel
`proceeding are the same party; and
`other circumstances that impact the Board’s exercise of
`discretion, including the merits.
`
`2.
`
`3.
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`4.
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`5.
`
`6.
`
`
`7 Available at https://www.uspto.gov/TrialPracticeGuideConsolidated.
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`7
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`IPR2019-00406
`Patent 6,596,296 B1
`Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11, 6 (PTAB Mar. 20,
`2020) (precedential). We address the application of the Fintiv factors below.
`1. whether the court granted a stay or evidence exists that one may
`be granted if a proceeding is instituted
`The first Fintiv factor requires consideration of whether the district
`court has stayed or will stay the proceeding pending inter partes review. “A
`district court stay of the litigation pending resolution of the PTAB trial
`allays concerns about inefficiency and duplication efforts.” See Fintiv,
`IPR2020-00019, Paper 11, 6. Where a stay has been entered, we weigh this
`factor strongly against exercising discretion to deny instituting review. Id.
`Patent Owner argues that the Western District of Texas temporarily
`stayed merits discovery but that stay was lifted on February 28, 2019—more
`than a year ago. Prelim. Resp. 2. Further, Patent Owner asserts that “[a]t no
`point did Ethicon request a stay of the district court case pending resolution
`of this IPR proceeding.” Id. at 3, 12 (“Ethicon never asked the district court
`to stay its proceeding.”).
`We find that this factor does not weigh for or against discretionary
`denial in this case. Although the Western District of Texas did institute a
`stay for a discrete period of time, that stay was lifted more than a year ago
`and the case was allowed to proceed to near completion. 8 Prelim. Resp. 2.
`Further, there is no evidence to suggest that the Western District of Texas
`would entertain granting a stay at this late stage even if inter partes review
`were instituted. And, as Patent Owner notes, Petitioner did not seek a stay
`
`
`8 We understand that trial was previously set to begin on June 22, 2020 and
`that recently the Western District of Texas indefinitely continued the current
`trial date because of the current pandemic. Ex. 3004, 2.
`
`8
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`IPR2019-00406
`Patent 6,596,296 B1
`from the Western District of Texas pending resolution of this proceeding.
`Id. at 3.
`2. proximity of the court’s trial date to the Board’s projected
`statutory deadline for a final written decision
`Under the second Fintiv factor, “[i]f the [district] court’s trial date is
`earlier than the projected statutory deadline, the Board generally has
`weighed this fact in favor of exercising authority to deny institution.” See
`Fintiv, IPR2020-00019, Paper 11, 9.
`Patent Owner contends that because trial before the Western District
`of Texas is presently set for June 22, 2020, “[i]f the Board elects to institute
`a trial in this matter, that trial is unlikely to conclude before June 2021—
`nearly a full year after the district court will have resolved the parties’
`dispute.” Prelim. Resp. 4–5.
`Until recently, trial was set to begin on June 22, 2020. This trial date
`“has been adjourned [and] [t]he trial date has not yet been reset.” Ex. 3004,
`2; see Ex. 3005 (continuing the trial date); see also Supplemental Order
`Regarding Court Operations Under the Exigent Circumstances Created by
`the COVID-19 PANDEMIC, May 8, 2020 (W.D. Tex.) (continuing all trials
`“scheduled to begin on any date from [May 8, 2020] through June 30,
`2020”). Though the Western District of Texas has continued the trial date
`indefinitely, the Court explained that
`[t]his should be the number one case on all of your minds because
`it has been set for June 22nd for a long time. The mere fact that
`we have this pandemic and we may have to put it off only affects
`the trial date. It does not affect anything else in this case. . . . I
`expect you to quit working on anything else you might have and
`treat this case as if it were going to trial on June 22nd, because
`that’s where it has been set.
`
`9
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`IPR2019-00406
`Patent 6,596,296 B1
`Ex. 3005, 9:23–10:6. The Court further explained that should the parties
`waive a jury demand, a trial “will happen sooner if it is scheduled as a bench
`trial than it will as a jury trial.” Id. at 14:20–24. According to the Court, the
`parties should expect trial to occur within a year. See id. at 17:21–23
`(“What I’m telling you is that you will get reached in sooner than a year, in
`all likelihood.”). Both parties withdrew their request for a jury demand. See
`Ex. 3006. Were we to institute inter partes review, a final written decision
`in this proceeding would issue in June 2021—leaving a year before
`resolution of this proceeding. Given the Western District of Texas’
`emphasis that the parallel litigation should proceed as if still set for June 22,
`2020, and its expectation of holding a bench trial within a year, this factor
`weighs strongly in favor of discretionary denial in this case.
`3. investment in the parallel proceeding by the court and the parties
`The third Fintiv factor considers “the amount and type of work
`already completed in the parallel litigation by the [district] court and the
`parties at the time of the institution decision. Specifically, if at the time of
`the institution decision, the district court has issued substantive orders
`related to the patent at issue in the petition, this fact favors denial.” See
`Fintiv, IPR2020-00019, Paper 11, 9–10. Thus, the more advanced the
`parallel proceeding, the less likely we are to institute an inter partes review.
`Id. at 10.
`Patent Owner argues that “[g]iven the advanced stage of the district
`court litigation, a trial here will not serve as a ‘timely, cost-effective
`alternative to litigation,’ but rather as a duplicative proceeding that
`unnecessarily taxes the Board’s resources.” Prelim. Resp. 5; see also id. at 2
`(“[T]he district [court] case has moved forward significantly.”); 4 (“The
`litigation has now progressed significantly.”). By way of example, Patent
`
`10
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`IPR2019-00406
`Patent 6,596,296 B1
`Owner contends that “the parties ha[ve] already completed claim
`construction discovery and the district court ha[s] issued its Markman order,
`(id. at 2)” and “both fact and expert discovery, and all dispositive motions
`have been filed (id.).” Therefore, Patent Owner reasons that a discretionary
`denial is appropriate. Id. at 5.
`Here, the both the Western District of Texas and parties have engaged
`in considerable effort to advance the stage of the parallel litigation. All fact
`and expert discovery is complete (Prelim. Resp. 2), the parties fully briefed
`and the Western District of Texas issued a claim construction order (id.;
`Ex. 1018 (Markman Order), and dispositive motions have been filed (Prelim.
`Resp. 2; Ex. 2006 (Motion for Summary Judgment of Invalidity). We
`further observe that both motions to exclude and motions in limine have
`been fully briefed. See Board of Regents, The University of Texas System et
`al. v. Ethicon, Inc. et al., 1:17-cv-01084 (LY), (W.D. Tex. May 8, 2020),
`Dkt. Nos. 119, 120 (motions to exclude), 156, 161 (motions in limine).
`Also, the parties are to file proposed findings of fact and conclusions of law
`no later than July 20, 2020. Ex. 3006 (Order Granting Motion to Continue).
`Therefore, because of the advanced stage of the Western District of Texas
`litigation—particularly at a time prior to institution of inter partes review—
`this factor weighs heavily in favor of exercising discretion to deny institution
`under § 314 (a).
`4. overlap between issues raised in the petition and in the parallel
`proceeding
`The fourth Fintiv factor requires consideration of “inefficiency and
`the possibility of conflicting decisions.” See Fintiv, IPR2020-00019, Paper
`11, 12. Therefore, “if the petition includes the same or substantially the
`same claims, grounds, arguments, and evidence, as presented in the parallel
`
`11
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`IPR2019-00406
`Patent 6,596,296 B1
`proceeding, this fact has favored denial.” Id. The Fintiv panel
`acknowledged that “the degree of overlap is highly fact dependent” and
`encouraged the parties “to indicate whether all or some of the claims
`challenged in the petition are also at issue in the district court.” Id. at 13.
`Patent Owner argues that there is also significant overlap in the issues
`before the Board and that before the Western District of Texas. Prelim.
`Resp. 5–9. In particular, asserts “[t]he invalidity issues that the district court
`will consider and decide overlap completely with the invalidity issues that
`the Board is being asked to consider.” Id. at 6. According to Patent Owner,
`“Ethicon even offers the same expert—Prof. David J. Mooney—to address
`invalidity in both proceedings.” Id. at 8.
`We determine that this factor weighs heavily in favor of exercising
`discretion under § 314(a). The claims challenged here are completely
`subsumed by those Petitioner seeks to invalidate in the Western District of
`Texas. Compare Pet. 8 (identifying claims 1, 4, 11, 16–17, 20, and 26 as
`challenged claims) with Ex. 2006, 12–28 (requesting summary judgment of
`invalidity for claims 1, 2, 4, 11, 16–17, 20, and 26). Furthermore, Ethicon
`relies on the same prior art combinations and the same expert in both its
`Petition and the parallel district court litigation. Id. Though Petitioner in the
`parallel litigation did not rely on the Curatolo reference (presented as an
`alternative reference to Billmeyer in the Petition (see Pet. 8)) in its summary
`judgment motion, Petitioner does include Curatolo in the invalidity
`contentions accompanying its Answer to the Amended Complaint. See Ex.
`2007, Exhibit A. Accordingly, the posture and scope of the Western District
`of Texas litigation weighs strongly in favor of exercising discretion to deny
`institution under § 314 (a).
`
`12
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`IPR2019-00406
`Patent 6,596,296 B1
`5. whether the petitioner and the defendant in the parallel
`proceeding are the same party
`According to the fifth Fintiv factor, “[i]f a petitioner is unrelated to a
`defendant in an earlier [district] court proceeding, the Board has weighed
`this fact against exercising discretion to deny institution.” See Fintiv,
`IPR2020-00019, Paper 11, 13–14. “Even when a petitioner is unrelated to a
`defendant, however, if the issues are the same as, or substantially similar to,
`those already or about to be litigated, or other circumstances weigh against
`redoing the work of another tribunal, the Board may, nevertheless, exercise
`the authority to deny institution.” Id. at 14.
`Patent Owner asserts that both “Ethicon and [The University of
`Texas] are parties to the underlying district court litigation.” Prelim. Resp. 5.
`Petitioner and Patent Owner are the defendant and plaintiff, respectively, in
`the Western District of Texas litigation. Id.; see Exs. 2001, 2003, 2007.
`Therefore, we find that this factor weighs in favor of exercising discretion to
`deny instituting inter partes review.
`6. other circumstances that impact the Board’s exercise of
`discretion, including the merits
`Lastly, “all relevant circumstances,” including the merits, are
`considered in assessing whether to exercise discretion to deny institution of
`inter partes review. Fintiv, IPR2020-00019, Paper 11, 14.
`Patent Owner asserts that Ethicon’s “lack of diligence” and “strategic
`choices” favor denial of inter partes review. Prelim. Resp. 11–13. In
`particular, Patent Owner explains that “Ethicon waited until four days
`before the one-year bar in 35 U.S.C. § 315(b) to file its Petition” and that it
`filed its Petition at a time when it “knew (or should have known) that the
`Board had suspended IPR proceedings involving State universities pending
`
`13
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`IPR2019-00406
`Patent 6,596,296 B1
`resolution of the UMN Appeal.” Id. at 11. Patent Owner explains that even
`if the Board had not stayed this proceeding, “a final written decision in this
`proceeding would be due (coincidentally) on the same day that the district
`court trial would commence. Thus, the Board would still be considering the
`same issues that the district court was actively considering in parallel.” Id.
`at 12.
`Without more, we do not view mere delay, until shortly before the
`statutory deadline to file a petition, as exhibiting lack of diligence or a
`strategic choice such that denial of inter partes review is appropriate. Thus,
`this factor does not weigh in favor of or against discretionary denial in this
`case.
`7. summary
`Therefore, after considering all of the evidence and arguments
`
`presented, we determine that the factors weigh in favor of exercising
`discretion to deny institution. In weighing the factors, we determine that the
`advanced stage of the Western District of Texas litigation and the likelihood
`the parallel litigation will be concluded prior to any final written decision in
`this case, the identity of the parties in this and the parallel litigation, the near
`identity of the unpatentability grounds advanced by Petitioner in both the
`parallel proceeding and this proceeding, and the significant investment by
`the Western District of Texas, as well as the parties, in the parallel litigation
`to be particularly persuasive. Accordingly, we exercise discretion to deny
`institution of inter partes review.
`B. Sovereign Immunity
`Patent Owner also argues, that “[The University of Texas] is an arm
`of the state of Texas, and as such is immune from this administrative
`adjudicatory proceeding under Supreme Court precedent.” Prelim. Resp. 13.
`
`14
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`IPR2019-00406
`Patent 6,596,296 B1
`Patent Owner “acknowledges that the Federal Circuit has ruled that states
`are not immune from IPR proceedings” and that “the Federal Circuit’s ruling
`is binding on this Board.” Id. (citing Regents of the Univ. of Minn. v. LSI
`Corp., 926 F.3d 1327 (Fed. Cir. 2019), cert. denied, 140 S.Ct. 908 (U.S. Jan.
`13, 2020)). Therefore, Patent Owner “will not expand on its sovereign
`immunity argument further here, but reserves its right to do so on appeal
`and/or in a cert. petition following any final written decision” and “[b]y
`defending itself on the merits of this proceeding, UT does not waive its right
`to be immune from this proceeding and from any decision this Board may
`render impacting UT’s ‘296 Patent.” Id. at 13–14.
`Because we exercise discretion to deny institution of inter partes
`review under 35 U.S.C. § 314 (a), we need not reach Patent Owner’s
`sovereign immunity argument.
`III. CONCLUSION
`For the foregoing reasons, we exercise discretion and deny the
`Petition. Accordingly, we do not institute inter partes review of the ’296
`patent.
`
`IV. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that, the Petition (Paper 2) is denied as to the challenged
`claims of the ’296 patent; and
`FURTHER ORDERED that no inter partes review is instituted.
`
`15
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`IPR2019-00406
`Patent 6,596,296 B1
`FOR PETITIONER:
`Jeffrey S. Ginsberg
`Andrew D. Cohen
`PATTERSON BELKNAP WEBB & TYLER LLP
`jginsberg@pbwt.com
`acohen@pbwt.com
`
`FOR PATENT OWNER:
`Gerald B. Hrycyszyn
`Richard F. Giunta
`WOLF, GREENFIELD & SACKS, P.C.
`ghrycyszyn-ptab@wolfgreenfield.com
`rgiunta-ptab@wolfgreenfield.com
`
`16
`
`
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