`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`__________________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`___________________
`
`REGENERON PHARMACEUTICALS, INC.,
`Petitioner,
`
`v.
`
`NOVARTIS VACCINES AND DIAGNOSTICS, INC.,
`GRIFOLS WORLDWIDE OPERATIONS LIMITED,
`Patent Owner.
`____________________
`
`Case No. IPR2019-01086
`Patent 5,688,688
`
`__________________________________________________________
`
`JOINT MOTION TO TERMINATE UNDER
`35 U.S.C. § 317(a) AND 37 C.F.R. § 42.72
`
`
`
`
`
`
`
`
`
`Pursuant to 35 U.S.C. § 317(a) and 37 C.F.R. § 42.72, and by authorization
`
`of the Board, Petitioner Regeneron Pharmaceuticals, Inc. ("Petitioner" or
`
`"Regeneron") and Patent Owners Novartis Vaccines and Diagnostics, Inc. and
`
`Grifols Worldwide Operations Limited ("Patent Owners" or collectively,
`
`"Novartis") jointly request termination of IPR2019-01086 concerning U.S. Patent
`
`No. 5,688,688 (the "‘688 Patent").
`
`I.
`
`BACKGROUND AND STATEMENT OF FACTS
`
`1.
`
` On May 14, 2019, Petitioner filed a petition for inter partes review of
`
`claims 1-2, 4-6, 8-9, 13-14 and 17 of the ‘688 Patent ("Challenged Claims"). Paper
`
`No. 1.
`
`2.
`
`On April 1, 2019, the U.S. District Court for the Southern District of
`
`New York ("District Court") in Novartis Vaccines and Diagnostics, Inc., et al. v.
`
`Regeneron Pharmaceuticals, Inc., No. 18-cv-02434-DLC, entered judgment of
`
`noninfringement of claims 1-2, 4-6, 8-9, and 13-14 of the ‘688 Patent. See Ex.
`
`1048 at 1.
`
`3.
`
`On August 23, 2019, Patent Owners filed their Preliminary Response.
`
`Paper No. 14.
`
`4.
`
`On September 5, 2019, the District Court entered judgment of
`
`noninfringement of all claims of the ‘688 Patent, including Claim 17, in
`
`Regeneron’s favor. See Ex. 1048 at 2. The Court also dismissed Novartis’ claims
`
`
`
`
`
`
`
`with prejudice, and dismissed Regeneron’s counterclaims without prejudice. Id.
`
`The Court ordered, pursuant to stipulation, that: "Within one (1) week of entry of
`
`this Judgment of Noninfringement and Order of Dismissal, Regeneron shall
`
`request to terminate its Petition for Inter Partes Review of U.S. Patent No.
`
`5,688,688 in Case No. IPR2019-01086 before the U.S. Patent Trial and Appeal
`
`Board (the ‘Board’). The parties shall cooperate as necessary to make any
`
`necessary filings with the Board in connection therewith." Id. at 3. On September
`
`10, 2019, the parties jointly requested authorization from the Board to file the
`
`present motion, which the Board granted on September 24, 2019. Ex. 3001.
`
`II. ARGUMENT
`
`
`
`An instituted inter partes review "shall be terminated . . . upon the joint
`
`request of the petitioner and the patent owner," where the request is brought before
`
`the Board has decided the merits of the proceeding. 35 U.S.C. § 317(a). This joint
`
`motion to terminate is appropriate for filing in this proceeding as there has been no
`
`institution decision or any decision on the merits.
`
`
`
`
`
`The Board should terminate this IPR proceeding in view of the District
`
`Court’s September 5, 2019 Judgment of Noninfringement and Order of Dismissal
`
`where the parties stipulated that this proceeding be terminated. Ex. 1048 at 3.
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`This joint motion to terminate is appropriate in this proceeding and will conserve
`
`2
`
`
`
`
`
`Board resources as the proceeding is in its early stages and there has not been any
`
`decision on the merits.
`
`
`
`The parties submit the September 5, 2019 Judgment of Noninfringement and
`
`Order of Dismissal that sets forth the stipulation to dismiss this proceeding. See
`
`Ex. 1048. There is no settlement agreement to submit, and other than the District
`
`Court litigation mentioned above, there are no other pending cases or proceedings
`
`involving the ‘688 Patent that would be affected by the termination of this
`
`proceeding.
`
`III. CONCLUSION
`
`
`
`For the foregoing reasons, Petitioner and Patent Owners respectfully request
`
`termination of this proceeding.
`
`Dated: September 26, 2019
`
`
`
`Respectfully submitted,
`
`
`
`/Irena Royzman/
`
`Irena Royzman (Reg. No. 73,354)
`Kramer Levin Naftalis & Frankel LLP
`1177 Avenue of the Americas
`New York, NY 10036
`Tel: 212.715.9152 Fax: 212.715.8152
`
`Hannah Lee (Reg. No. 64,001)
`Kramer Levin Naftalis & Frankel LLP
`990 Marsh Road
`Menlo Park, CA 94025
`Tel: 650.752.1700 Fax: 650.752.1800
`
`Attorneys for Petitioner
`
`
`
`3
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`/Elizabeth Holland/
`Elizabeth Holland
`Reg. No. 47,657
`GOODWIN PROCTER LLP
`901 New York Avenue, NW
`Washington, DC 20001
`Tel: 202-346-4000
`Fax: 202-346-4444
`EHolland@goodwinlaw.com
`
`Attorneys for Patent Owner
`
`
`
`
`
`
`
`4
`
`
`
`
`
`CERTIFICATE OF SERVICE
`The undersigned certifies, in accordance with 37 C.F.R. § 42.6(e), that
`
`service was made on the Patent Owner as detailed below.
`
`Date of service September 26, 2019
`
`Manner of service Electronic Mail
`(dmazzochi@rmmslegal.com; paul@rmmslegal.com;
`
`wrakoczy@rmmslegal.com; hsalmen@rmmslegal.com;
`nmclaughlin@rmmslegal.com;
`manderson@rmmslegal.com;
`eholland@goodwinlaw.com;
`lcipriano@goodwinlaw.com).
`
`
`Documents served JOINT MOTION TO TERMINATE UNDER 35 U.S.C. §
`317(a) AND 37 C.F.R. § 42.72
`
`Persons Served Deanne Mazzochi
`
`Paul Molino
`
`Neil McLaughlin
`
`Matthew Anderson
`
`William Rakoczy
`
`Heinz Salmen
`Elizabeth Holland
`Linnea Cipriano
`
`
`
`
`
`/Irena Royzman/
`Irena Royzman
`Registration No. 73,354
`
`Counsel for Petitioner
`
`5
`
`
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