`Tel: 571-272-7822
`
`
`
`
`Paper 16
`Entered: October 1, 2019
`
`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
`_______________
`
`
`Before SHERIDAN K. SNEDDEN, CHRISTOPHER L. CRUMBLY, and
`ROBERT A. POLLOCK, Administrative Patent Judges.
`
`POLLOCK, Administrative Patent Judge.
`
`
`
`
`DECISION
`Dismissal Prior to Institution of Trial
`35 U.S.C. § 314
`
`
`
`
`
`
`
`
`
`
`
`IPR2019-01086
`Patent 5,688,688 B2
`
`
`On September 26, 2019, and pursuant to our authorization, Petitioner
`
`Regeneron Pharmaceuticals, Inc. filed a “Joint Motion to Terminate under
`
`35 U.S.C § 317(a) and 37 C.F.R. § 42.72” signed by counsel for both
`
`parties. Paper 15. The Motion requests that we “terminate this IPR
`
`proceeding in view of the District Court’s September 5, 2019 Judgment of
`
`Noninfringement and Order of Dismissal.” Id. at 2 (citing Ex. 1048, 3). The
`
`parties explain that in the copending litigation, Novartis Vaccines and
`
`Diagnostics, Inc., et al. v. Regeneron Pharmaceuticals, Inc., No. 18-cv-
`
`02434-DLC, the U.S. District Court for the Southern District of New York
`
`entered judgment of non-infringement for all claims of the ’688 Patent and
`
`dismissed the parties’ claims and counterclaims. Id. at 1–2 (citing Ex. 1048,
`
`1–2). In the Judgment of Noninfringement and Order of Dismissal, the
`
`District Court further stated that “Regeneron shall request to terminate” the
`
`instant Petition, and “[t]he parties shall cooperate as necessary to make any
`
`necessary filings with the Board in connection therewith.” Ex. 1048, 3.
`
`According to the parties, termination of this IPR proceeding is
`
`appropriate as it “will conserve Board resources.” Paper 15, 2–3. In
`
`addition, “[t]here 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.” Id. at 3.
`
`This proceeding is in its initial stages and the Board has not yet
`
`decided the merits of the Petition. Because no inter partes review has been
`
`instituted, the termination Order sought in the Motion is not the most
`
`appropriate remedy. We instead construe Paper 15 as a joint request to
`
`dismiss the petition, which we find appropriate under the circumstances
`
`2
`
`
`
`IPR2019-01086
`Patent 5,688,688 B2
`
`before us. See 35 U.S.C. § 314; 37 C.F.R.
`
`§§ 42.5(a), 42.71(a).
`
`Accordingly, based on the foregoing, it is
`
`ORDERED that the Petition is dismissed;
`
`FURTHER ORDERED that no trial is instituted, and
`
`FURTHER ORDERED that this paper does not constitute a final
`
`written decision pursuant to 35 U.S.C. § 318(a).
`
`
`
`For PETITIONER:
`
`Irena Royzman
`Hannah Lee
`Kramer Levin Naftalis & Frankel LLP
`iroyzman@kramerlevin.com
`hlee@kramerlevin.com
`
`
`
`
`For PATENT OWNER:
`
`Deanne Mazzochi
`Paul Molino
`Matthew Anderson
`dmazzochi@rmmslegal.com
`paul@rmmslegal.com
`manderson@rmmslegal.com
`
`
`3
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
