IPR2020-01317
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`———————
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`———————
`
`
`
`Regeneron Pharmaceuticals, Inc.,
`Petitioner,
`
`v.
`
`Novartis Pharma AG,
`Novartis Technology LLC,
`Novartis Pharmaceuticals Corporation,
`Patent Owner
`
`———————
`
`Case IPR2020-01317
`U.S. Patent No. 9,220,631
`———————
`PETITIONER’S UNOPPOSED MOTION TO WITHDRAW ITS
`REQUEST FOR REHEARING OF THE BOARD’S DECISION
`DENYING INTER PARTES REVIEW
`
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`———————
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`———————
`
`
`
`Regeneron Pharmaceuticals, Inc.,
`Petitioner,
`
`v.
`
`Novartis Pharma AG,
`Novartis Technology LLC,
`Novartis Pharmaceuticals Corporation,
`Patent Owner
`
`———————
`
`Case IPR2020-01317
`U.S. Patent No. 9,220,631
`———————
`PETITIONER’S UNOPPOSED MOTION TO WITHDRAW ITS
`REQUEST FOR REHEARING OF THE BOARD’S DECISION
`DENYING INTER PARTES REVIEW
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2020-01317
`
`STATEMENT OF PRECISE RELIEF REQUESTED
`
`Pursuant to the authorization by the Board granted on April 26, 2021,
`
`Petitioner Regeneron Pharmaceuticals, Inc. (“Regeneron”) respectfully moves for
`
`withdrawal of its pending Request for Rehearing of the Board’s decision denying
`
`institution of inter partes review in this proceeding (IPR2020-01317). Counsel for
`
`Regeneron conferred with counsel for Patent Owner1 prior to filing this motion,
`
`and Patent Owner does not oppose this motion to withdraw.
`
`REASONS FOR RELIEF REQUESTED
`
`On January 15, 2021, the Board issued its Decision Denying Institution of
`
`Inter Partes Review 35 U.S.C. § 314, 37 C.F.R. § 42.4 (Paper 15) (“Institution
`
`Decision”). The Board denied institution under § 314(a) because of the pendency
`
`of a parallel International Trade Commission investigation (“the ITC
`
`Investigation”) involving U.S. Patent No. 9,220,631 (“the 631 patent”). The Board
`
`held that the “outcome of the ITC Investigation will be known months before we
`
`could reach a final determination.” Paper 15 at 23. On February 12, 2021,
`
`Regeneron filed its Request for Rehearing Pursuant to 37 C.F.R. § 42.71(d) (Paper
`
`16). On that same day, Petitioner requested that the Precedential Opinion Panel
`
`
`1
`Novartis Pharma AG, Novartis Technology LLC, and Novartis
`
`Pharmaceuticals Corporation (collectively, “Novartis”).
`
`
`
`
`
`
`
`
`IPR2020-01317
`
`(“POP”) consider Regeneron’s rehearing request. Exhibit 3003. On April 16, 2021,
`
`Regeneron requested withdrawal of its request for POP consideration. See Ex.
`
`3004. On April 22, 2021, the Board acknowledged that the POP request was
`
`withdrawn. See Paper 18, Notification of Withdrawal of Receipt of POP Request.
`
`On April 7, 2021, Patent Owner filed a motion to terminate the ITC
`
`Investigation and withdraw its complaint. The administrative law judge presiding
`
`over the ITC Investigation granted Patent Owner’s motion on April 8, 2021. Thus,
`
`the basis for the Board’s Institution Decision, and the primary ground on which
`
`Regeneron based its Request for Rehearing – the pendency of the parallel ITC
`
`Investigation – no longer applies. As such, Regeneron no longer seeks rehearing of
`
`the Board’s Institution Decision in this proceeding and submits that withdrawal is
`
`appropriate under the circumstances.2 See, e.g., Power Integrations, Inc. v.
`
`Semiconductor Components Indus., LLC, IPR2018-00399, Paper 12 (PTAB March
`
`20, 2019) (granting motion to withdraw request for rehearing and ordering that the
`
`“Decision Denying Institution remains in effect”); Hospitality Core Services LLC
`
`v. Nomadix, Inc., IPR2016-0052, IPR2016-00073, Paper 11 (PTAB June 21, 2016)
`
`
`2 With the withdrawal of the ITC complaint, Regeneron has filed a new
`
`petition for inter partes review of the 631 patent (IPR2021-00816).
`
`
`
`
`
`2
`
`
`
`IPR2020-01317
`
`(granting motion to withdraw request for rehearing and holding that the Board
`
`“will not issue any decision in response” to the request).
`
`CONCLUSION
`
`Based on the foregoing, Regeneron respectfully requests withdrawal of its
`
`Request for Rehearing of the Board’s Institution Decision.
`
`Dated: April 27, 2021
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`/Elizabeth S. Weiswasser s
`Elizabeth S. Weiswasser (Reg. No. 55,721)
`Anish R. Desai (Reg. No. 73,760)
`Natalie Kennedy (Reg. No. 68,511
`Andrew Gesior (Reg. No. 76,588)
`WEIL, GOTSHAL & MANGES LLP
`767 Fifth Avenue
`New York, NY 10153
`T: 212-310-8000
`F: 212-310-8007
`E: Regeneron.IPR.Service@weil.com
`
`Brian E. Ferguson (Reg. No. 36,801)
`Christopher Pepe (Reg. No. 73,851)
`WEIL, GOTSHAL & MANGES LLP
`2001 M Street NW, Suite 600
`Washington, DC 20036
`T: 202-682-7000
`F: 202-857-0940
`E: Regeneron.IPR.Service@weil.com
`
`
`3
`
`
`
`CERTIFICATE OF SERVICE
`
`
`
`The undersigned hereby certifies that on April 27, 2021, the foregoing
`
`PETITIONER’S UNOPPOSED MOTION TO WITHDRAW ITS REQUEST
`
`FOR REHEARING OF THE BOARD’S DECISION DENYING INTER
`
`PARTES REVIEW was served via electronic mail upon the following:
`
`Elizabeth J. Holland
`Linnea Cipriano
`GOODWIN PROCTER LLP
`The New York Times Building
`620 Eighth Avenue
`New York, NY 10018-1405
`eholland@goodwinlaw.com
`lcipriano@goodwinlaw.com
`
`William G. James
` GOODWIN PROCTER LLP
`1900 N Street, N.W.
`Washington, D.C. 20036
`wjames@goodwinlaw.com
`
`Joshua Weinger
`GOODWIN PROCTER LLP
`100 Northern Avenue
`Boston MA 02210-1980
`jweinger@goodwinlaw.com
`
`DG-NovartisPFS@goodwinlaw.com
`
`
`
`/Timothy J. Andersen/ 1
`Timothy J. Andersen
`IP Paralegal
`Weil, Gotshal & Manges LLP
`2001 M Street NW, Suite 600
`Washington, D.C. 20036
`timothy.andersen@weil.com
`
`
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