IPR2020-01318
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`———————
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`———————
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`
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`Regeneron Pharmaceuticals, Inc.,
`Petitioner,
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`v.
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`Novartis Pharma AG,
`Novartis Technology LLC,
`Novartis Pharmaceuticals Corporation,
`Patent Owner
`
`———————
`
`Case IPR2020-01318
`U.S. Patent No. 9,220,631
`———————
`PETITIONER’S UNOPPOSED MOTION TO TERMINATE THE
`PROCEEDING
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`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 IPR2020-01318
`U.S. Patent No. 9,220,631
`———————
`PETITIONER’S UNOPPOSED MOTION TO TERMINATE THE
`PROCEEDING
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`IPR2020-01318
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`On November 24, 2020, the Board authorized Petitioner Regeneron
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`Pharmaceuticals, Inc. (“Regeneron”) to file a motion to terminate this proceeding
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`(IPR2018-01318) in accordance with 37 C.F.R. §§ 42.71(a) and 42.72. Counsel for
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`Patent Owner Novartis Pharma AG, Novartis Technology LLC, and Novartis
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`Pharmaceuticals Corporation (collectively, “Novartis”) has indicated that Novartis
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`will not oppose this motion. See Ex. 1066 (E. Holland 2020-11-20 email).
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`As explained herein, granting the motion will preserve the resources of the
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`Board and the parties, and will promote efficiency as contemplated by 37 C.F.R. §
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`42.1(b). Regeneron therefore respectfully requests that the Board grant this motion
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`and terminate the proceeding. Regeneron’s co-pending IPR2020-01317, which
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`addresses the same patent as in this proceeding, remains pending and Regeneron
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`respectfully requests that the Board analyze that petition on the merits and institute
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`trial therein.
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`FACTUAL BACKGROUND
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`On July 16, 2020, Regeneron filed two petitions for inter partes review of
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`
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`U.S. Patent No. 9,220,631 (“the 631 patent”). The petitions were docketed as
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`IPR2020-01317 (“the 1317 IPR”) and IPR2020-01318 (this IPR). As required by
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`the Patent Trial and Appeal Board Consolidated Trial Practice Guide (Nov. 2019),
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`Regeneron also submitted a Notice providing, inter alia, its ranking of the petitions
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`IPR2020-01318
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`in the order in which it wished the Board to consider the merits. See Paper 2.
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`Regeneron ranked the 1317 IPR first, and this IPR second. Id.
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`
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`On October 22, 2020, Novartis filed its Patent Owner Preliminary Response
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`(“POPR”). Paper 10. In addition to making arguments directed to the merits,
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`Novartis asserted that pursuant to 35 U.S.C. §§ 314(a) and 325(d) the Board should
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`exercise its discretion and deny institution.
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`
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`On November 17, 2020, the Board granted Regeneron’s request to file a
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`reply to the POPR, limited to addressing the 35 U.S.C. §§ 314(a) and 325(d)
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`issues. Paper 14. The Board further authorized Novartis to file a sur-reply brief. Id.
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`
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`On November 20, 2020, Regeneron requested permission from the Board to
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`file the instant motion, and on November 24, 2020 the Board provided
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`authorization for Regeneron to do so. On November 25, 2020, Regeneron filed its
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`Reply Regarding 35 U.S.C. §§ 314(a), 325(d) in the 1317 IPR, but did not file a
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`substantive Reply in this proceeding in light of its anticipated motion to terminate.
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`LEGAL STANDARDS
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`37 C.F.R. § 42.5(a) addresses the conduct of IPR proceedings, stating that
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`the Board “may determine a proper course of conduct in a proceeding….” 37
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`C.F.R. § 42.71(a) provides that the Board “may take up petitions or motion for
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`decisions in any order, may grant, deny, or dismiss any petition or motion, and
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`may enter any appropriate order.” 37 C.F.R. § 42.72 authorizes the Board to
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`
`
`2
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`
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`IPR2020-01318
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`“terminate a trial without rendering a final written decision, where appropriate….”
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`The Board has previously relied on these regulations to grant motions to terminate
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`IPRs prior to an institution decision. See, e.g., Samsung Elec. Co., Ltd. v. Nvidia
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`Corp., IPR2015-01270, Paper 11 (PTAB Dec. 9, 2015) (dismissing petition prior
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`to institution pursuant to 37 C.F.R. §§ 42.5(a), 42.71(a)); see also Facebook, Inc. v.
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`EveryMD.com LLC, IPR2018-00050, Paper 19 (PTAB Oct. 9, 2018).
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`ARGUMENT
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`The regulations identified above “provide the Board with broad authority to
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`
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`dismiss a petition where appropriate….” Facebook, Paper 19 at 4. Regeneron
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`respectfully submits that dismissal of this petition and termination of the
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`proceedings is appropriate because the Board has yet to reach the merits of the
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`petition and has not yet issued an institution decision. There are a number of
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`arguments raised in the petition and in the POPR that will require the Board to
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`devote significant resources towards analyzing those issues and determining
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`whether instituting a trial is appropriate. Moreover, if this IPR is not terminated,
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`the Board’s analysis will be further complicated by the need to consider
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`Regeneron’s ranking of petitions (this one and co-pending 1317 IPR), Novartis’s
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`response thereto, and determine whether the facts warrant instituting two
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`proceedings.
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`
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`3
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`IPR2020-01318
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`
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`Granting Regeneron’s instant motion will alleviate the Board from that
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`work. The Board may instead focus its resources on analyzing the issues raised in
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`the 1317 IPR in determining whether to institute a trial in that proceeding.
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`Granting the motion will thus save the Board and the parties from devoting any
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`further resources and time to this proceeding. This will help achieve 37 C.F.R. §
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`42.1(b)’s goal of securing the “just, speedy, and inexpensive resolution of every
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`proceeding.” See Samsung, Paper 11 at 4 (granting pre-institution motion to
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`terminate: “we exercise our discretion and dismiss these petitions under 37 C.F.R.
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`§§ 42.5, 42.71(a), at this early juncture, to promote efficiency and minimize
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`unnecessary costs”).
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`
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`For these reasons, Regeneron respectfully requests that the Board grant its
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`unopposed motion to terminate this proceeding and dismiss the petition. For the
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`sake of clarity, this termination does not impact the pendency of the 1317 IPR,
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`which remains pending.
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`4
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`
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`Dated: December 2, 2020
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`IPR2020-01318
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`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
`T: 202-682-7000
`F: 202-857-0940
`E: Regeneron.IPR.Service@weil.com
`
`
`5
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`CERTIFICATE OF SERVICE
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`
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`The undersigned hereby certifies that on December 2, 2020, the foregoing
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`PETITIONER’S UNOPPOSED MOTION TO TERMINATE THE
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`PROCEEDING and EXHIBIT 1066 were served via electronic mail upon the
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`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/
`Timothy J. Andersen
`IP Paralegal
`Weil, Gotshal & Manges LLP
`2001 M Street NW, Suite 600
`Washington, D.C. 20036
`202-682-7000
`timothy.andersen@weil.com
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`
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