trials@uspto.gov
`571-272-7822
`
`
`
`
`Paper 65
`Date: March 8, 2022
`
`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.
`
`__________
`
`
`IPR2021-00816
`Patent 9,220,631 B2
`
`__________
`
`
`
`Before ERICA A. FRANKLIN, ROBERT L. KINDER, and JAMIE T. WISZ,
`Administrative Patent Judges.
`
`Per Curiam.
`
`
`
`ORDER GRANTING UNOPPOSED MOTION FOR APPOINTMENT OF
`COMMISSIONERS AND DIRECTION OF SUBMISSION OF HAGUE
`CONVENTION APPLICATION
`
`
`
`
`
`571-272-7822
`
`
`
`
`Paper 65
`Date: March 8, 2022
`
`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.
`
`__________
`
`
`IPR2021-00816
`Patent 9,220,631 B2
`
`__________
`
`
`
`Before ERICA A. FRANKLIN, ROBERT L. KINDER, and JAMIE T. WISZ,
`Administrative Patent Judges.
`
`Per Curiam.
`
`
`
`ORDER GRANTING UNOPPOSED MOTION FOR APPOINTMENT OF
`COMMISSIONERS AND DIRECTION OF SUBMISSION OF HAGUE
`CONVENTION APPLICATION
`
`
`
`
`
`
`IPR2021-00816
`Patent 9,220,631 B2
`
`
`
`
`
`
`
`
`On October 26, 2021, the Patent Trial and Appeal Board of the United States
`Patent and Trademark Office instituted a trial in this proceeding pursuant to
`35 U.S.C. § 314(a), determining that there existed a reasonable likelihood that at
`least one of the challenged claims of United States Patent No. 9,220,631 B2 would
`be found unpatentable. Paper 13. Trial was instituted as to all challenges set forth
`in the Petition. Id. at 75. The Petitioner in this proceeding is Regeneron
`Pharmaceuticals, Inc. (“Regeneron”). The Patent Owner is Novartis Pharma AG,
`Novartis Pharmaceuticals Corporation, and Novartis Technology LLC
`(collectively, “Novartis”).
`On February 24, 2022, a teleconference was held. Novartis was represented
`on the call by Elizabeth Holland. Regeneron was represented on the call by
`Christopher Pepe. Judges Erica A. Franklin, Robert L. Kinder, and Kristi L. R.
`Sawert1 participated on the call on behalf of the Patent Trial and Appeal Board.
`On March 3, 2022, Novartis filed a joint motion seeking entry of an order
`appointing certain U.S. attorneys as commissioners to take the voluntary oral
`depositions under oath via video conference in Switzerland of certain Novartis
`witnesses. Paper 62 (“Mot.”). Novartis and Regeneron request an order to take the
`voluntary oral depositions under oath via video conference in Switzerland of
`Juergen Sigg and Marie Picci whereas each witness either lives or works in
`Switzerland. Mot. 1. Once authorized, Regeneron intends to notice these two
`witnesses for deposition. Id. According to the joint motion, the depositions will be
`taken pursuant to Article 17 of the Hague Convention of 18 March 1970 on Taking
`
`
`1 Pursuant to the Order of March 3, 2022 (Paper 57), Administrative Patent Judge
`Jamie T. Wisz replaces Administrative Patent Judge Kristi L. R. Sawert on the
`panel.
`
`
`
`2
`
`
`
`
`
`
`
`
`
`IPR2021-00816
`Patent 9,220,631 B2
`
`Evidence Abroad in Civil or Commercial Matters (the “Hague Convention” 2). Id.
`The parties represent that the Board has authority to issue the requested order
`appointing commissioners under 37 C.F.R. §42.53(b). Id. Further, the Motion
`explains the significance of each witness to this proceeding and identifies that
`Novartis has submitted declarations from Ms. Picci (Ex. 2002) and Dr. Sigg (Ex.
`2206), both Novartis employees, in support of its Patent Owner Response. Mot. 1–
`2.
`
`The parties explain that the Swiss Penal Code provides that attorneys
`attempting to take a deposition or carry out other activities on behalf of a foreign
`state in Switzerland outside of authorized methods are subject to arrest on criminal
`charges. Mot. 3; see, e.g., Article 271 of the Swiss Penal Code, available at:
`https://www.admin.ch/opc/en/classified-compilation/19370083/index.html. Thus,
`the parties represent they must comply with the Hague Convention in seeking
`testimony in this proceeding in order to comply with Swiss law.
`The Board determines that the evidence the parties seek is reasonably
`necessary to fully consider the patentability of United States Patent No. 9,220,631
`B2 in this inter partes review (IPR2021-00816). Further, the parties have
`explained that under Article 17 of the Hague Convention, the voluntary testimony,
`by deposition, of a witness located in Switzerland may be conducted by U.S.
`counsel as commissioners duly appointed by a U.S. court and authorized to
`proceed by the competent Swiss authorities. Mot. 2.
`Accordingly, the following listed counsel for Novartis and Regeneron are
`duly appointed as commissioners under Article 17 of the Hague Convention:
`
`
`2 See also Hague Convention on the Taking of Evidence Abroad in Civil or
`Commercial Matters, Oct. 7, 1972, 23 U.S.T. 2555, 847 U.N.T.S. 231, arts. 1 and
`15–17.
`
`
`
`3
`
`
`
`IPR2021-00816
`Patent 9,220,631 B2
`
`
`
`
`
`
`
`
`Counsel at Weil, Gotshal & Manges LLP (located at
`767 Fifth Avenue New York, New York 10153; and 2001 M
`Street, Suite 600 Washington, DC 20036) for Petitioner
`Regeneron (Regeneron Pharmaceuticals, Inc., located at 777
`Old Saw Mill River Road, Tarrytown, New York 10591,
`USA): Anish Desai; Elizabeth Weiswasser; Robert Vlasis;
`Christopher Pepe; Matthew Sieger and Andrew Gesior.
`Counsel at Allen & Overy LLP (located at 1221
`Avenue of the Americas New York, NY 10020; and 1101
`New York Ave, N.W. Washington, D.C. 20005) for Patent
`Owner Novartis (Novartis Pharma AG, Forum 1, Novartis
`Campus, 4056 Basel, Switzerland; Novartis Pharmaceuticals
`Corporation, One Health Plaza, East Hanover, New Jersey,
`07936, USA and Novartis Technology LLC, One Health
`Plaza, East Hanover, New Jersey, 07936, USA): Elizabeth
`Holland; William James and Daniel Margolis.
`
`Counsel at Bär & Karrer AG (located at
`Brandschenkestrasse 90, 8027 Zurich, Switzerland) for
`Patent Owner Novartis (Novartis Pharma AG, Forum 1,
`Novartis Campus, 4056 Basel, Switzerland; Novartis
`Pharmaceuticals Corporation, One Health Plaza, East
`Hanover, New Jersey, 07936, USA and Novartis Technology
`LLC, One Health Plaza, East Hanover, New Jersey, 07936,
`USA): Dr. Andreas Länzlinger; and Martina Athanas.
`
`
`
`
`
`4
`
`
`
`IPR2021-00816
`Patent 9,220,631 B2
`
`
`
`
`
`
`
`
`This Order shall be given to counsel at Bär & Karrer AG who will file it
`together with the necessary application for authorization from the relevant Swiss
`authorities.
`
`ORDER
`
`IT IS SO ORDERED this 8th day of March, 2022.
`
`
`
`
`
`
`
`5
`
`
`
`
`
`
`IPR2021-00816
`Patent 9,220,631 B2
`
`FOR PETITIONER:
`
`Anish Desai
`Elizabeth Weiswasser
`Christopher Pepe
`Robert T. Vlasis
`Petra Scamborova
`WEIL, GOTSHAL & MANGES LLP
`anish.desai@weil.com
`elizabeth.weiswasser@weil.com
`christopher.pepe@weil.com
`robert.vlasis@weil.com
`petra.scamborova@weil.com
`
`
`
`FOR PATENT OWNER:
`
`Elizabeth Holland
`William James
`Nicholas Mitrokostas
`ALLEN & OVERY LLP
`eholland@allenovery.com
`wjames@allenovery.com
`nicholas.mitrokostas@allenovery.com
`
`Linnea Cipriano
`Joshua Weinger
`GOODWIN PROCTER LLP
`lcipriano@goodwinlaw.com
`jweinger@goodwinprocter.com
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`6
`
`
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
