`571-272-7822
`
`
`
`
`
`
`Paper 17
`Date: December 7, 2020
`
`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.
`
`____________
`
`IPR2020-01318
`Patent 9,220,631 B1
`____________
`
`
`
`Before ERICA A. FRANKLIN, ROBERT L. KINDER, and
`KRISTI L. R. SAWERT, Administrative Patent Judges.
`
`
`KINDER, Administrative Patent Judge.
`
`
`
`
`
`
`
`DECISION
`Dismissing the Petition and Terminating the Proceeding
` Prior to Institution of Trial
`35 U.S.C. § 314
`
`
`
`
`
`IPR2020-01318
`Patent 9,220,631 B1
`
`
`With our authorization, Regeneron Pharmaceuticals, Inc.
`
`(“Petitioner”) filed an Unopposed Motion to Terminate this proceeding.
`
`Paper 16 (“Mot.” or “Motion”). Petitioner requests that the Petition be
`
`dismissed and the proceeding terminated because “granting the motion will
`
`preserve the resources of the Board and the parties, and will promote
`
`efficiency as contemplated by 37 C.F.R. § 42.1(b).” Mot. 1. In making its
`
`Motion, Petitioner asserts that dismissal of the Petition in this proceeding is
`
`appropriate because the proceeding is at an early stage, with no decision
`
`having yet been made whether to institute trial. Mot. 3–4. Petitioner also
`
`contends that dismissal will “save the Board and the parties from devoting
`
`any further resources and time to this proceeding,” and “will help achieve 37
`
`C.F.R. § 42.1(b)’s goal of securing the ‘just, speedy, and inexpensive
`
`resolution of every proceeding.’” Mot. 4.
`
`Petitioner notes that it filed two petitions for inter partes review of
`
`U.S. Patent No. 9,220,631 (“the ’631 patent”). Mot. 1. The petitions were
`
`docketed as IPR2020-01317 (“the ’1317 IPR”) and IPR2020-01318 (this
`
`IPR). Id. Petitioner contends that granting this Motion will alleviate the
`
`Board from work in this IPR and allow the Board to instead focus its
`
`resources on analyzing the issues raised in the ’1317 IPR in determining
`
`whether to institute a trial in that proceeding. Mot. 4. Dismissal of this
`
`proceeding will not impact the pendency of the ’1317 IPR, according to
`
`Petitioner. Id.
`
`Novartis Pharma AG, Novartis Technology LLC, and Novartis
`
`Pharmaceuticals Corporation (collectively, “Patent Owner”) has indicated
`
`that it will not oppose Petitioner’s Motion. Mot. 1 (citing Ex. 1066,
`
`correspondence between counsel).
`
`2
`
`
`
`IPR2020-01318
`Patent 9,220,631 B1
`
`
`Dismissal of the Petition and termination of the proceeding is
`
`appropriate under the present circumstances. See 37 C.F.R. § 42.72
`
`(providing authorization to “terminate a trial without rendering a final
`
`written decision, where appropriate”). Our “regulations expressly provide
`
`the Board with broad authority to dismiss a petition where appropriate.”
`
`Facebook, Inc. v. EveryMD.com, IPR2018-00050, Paper 19 at 4 (PTAB Oct.
`
`9, 2018); see 37 C.F.R. § 42.71(a) (“The Board . . . may grant, deny, or
`
`dismiss any petition or motion.”). We have yet to reach the merits of the
`
`Petition and we have not yet issued an institution decision. Thus, the
`
`proceeding is at an early stage and it is appropriate to dismiss the Petition
`
`and terminate the proceeding to promote efficiency and unnecessary costs.
`
`See, e.g., Samsung Elecs. Co. v. NVIDIA Corp., IPR2015-01270, Paper 11
`
`(PTAB Dec. 9, 2015) (granting opposed motion to dismiss before
`
`institution). Accordingly, we grant Petitioner’s Motion because of the “early
`
`juncture” of this proceeding, it is unopposed, and doing so will “promote
`
`efficiency and minimize unnecessary costs.” Id. at 3–4; Ex. 1066.
`
`
`
`
`
`It is
`
`ORDERED that Petitioner’s Unopposed Motion to Terminate the
`
`Proceeding is granted;
`
`FURTHER ORDERED that the Petition (Paper 3) is dismissed; and
`
`FURTHER ORDERED that this proceeding is terminated.
`
`
`
`
`
`3
`
`
`
`IPR2020-01318
`Patent 9,220,631 B1
`
`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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