`Tel: 571-272-7822
`
`Paper 20
`Entered: May 3, 2021
`
`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.
`____________
`
`IPR2020-01317
`Patent 9,220,631 B2
`____________
`
`
`Before ERICA A. FRANKLIN, ROBERT L. KINDER, and
`KRISTI L. R. SAWERT, Administrative Patent Judges.
`
`KINDER, Administrative Patent Judge.
`
`
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. §§ 42.5, 42.20
`
`
`
`IPR2020-01317
`Patent 9,220,631 B2
`
`
`INTRODUCTION
`
`
`
`On April 27, 2021, Petitioner Regeneron Pharmaceuticals, Inc.
`
`(“Regeneron” or “Petitioner”) filed an “Unoppoed Motion to Withdraw Its
`
`Request for Rehearing of the Board’s Decision Denying Inter Partes
`
`Review.” Paper 19 (“Mot.”). Petitioner indicates that “Counsel for
`
`Regeneron conferred with counsel for Patent Owner prior to filing this
`
`motion, and Patent Owner does not oppose this motion to withdraw.”
`
`Mot. 1. For the reasons set forth below, we grant Petitioner’s request and
`
`allow the withdrawal of its Request for Rehearing (Paper 16).
`
`DISCUSSION
`
`
`
`On January 15, 2021, we issued a Decision Denying Institution of
`
`Inter Partes Review, relying in pertinent part on 35 U.S.C. § 314(a) and
`
`binding Board precendent. Paper 15 (“Institution Decision”). 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 (“POP”) consider Regeneron’s rehearing
`
`request. Ex. 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`Board acknowledged that the POP request was withdrawn.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”).
`
`
`
`Petitioner certifies that on April 7, 2021, Patent Owner filed a motion
`
`to terminate the parallel International Trade Commission investigation (“the
`
`ITC Investigation”) and withdraw its complaint. Mot. 2. On April 8, 2021,
`
`the administrative law judge presiding over the ITC Investigation granted
`
`Patent Owner’s motion. Id. Petitioner contends that the pendency of the
`
`ITC Investigation was “the primary ground on which Regeneron based its
`
`2
`
`
`
`IPR2020-01317
`Patent 9,220,631 B2
`
`Request for Rehearing,” and with the dismissal of the ITC Investigation,
`
`“Regeneron no longer seeks rehearing of the Board’s Institution Decision in
`
`this proceeding and submits that withdrawal is appropriate under the
`
`circumstances.” Id.
`
`
`
`Because Petitioner no longer seeks to maintain its Request for
`
`Rehearing (Paper 16), we will not issue any decision in response to the
`
`Request and we further grant Petitioner’s motion to withdraw the Request.
`
`Our Decision Denying Institution (Paper 15) remains in effect.
`
`
`
`
`
`
`
`In view of the foregoing, it is, therefore,
`
`ORDER
`
`ORDERED that Petitioner’s Request for Rehearing (Paper 16) is
`
`withdrawn; and,
`
`
`
`FURTHER ORDERED that the Decision Denying Institution (Paper
`
`15) remains in effect.
`
`
`
`3
`
`
`
`IPR2020-01317
`Patent 9,220,631 B2
`
`
`PETITIONER:
`
`Elizabeth Weiswasser
`Brian Ferguson
`Anish Desai
`Christopher Pepe
`WEIL GOTSHAL & MANGES, LLP
`elizabeth.weiswasser@weil.com
`anish.desai@weil.com
`brian.ferguson@gweil.com
`christopher.pepe@weil.com
`
`
`PATENT OWNER:
`
`Elizabeth J. Holland
`William G. James
`Linnea Cipriano
`Joshua Weinger
`GOODWIN PROCTER LLP
`eholland@goodwinlaw.com
`wjames@goodwinlaw.com
`lcipriano@goodwinlaw.com
`jweinger@goodwinlaw.com
`
`4
`
`
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