`Tel: 571-272-7822 Entered: October 25, 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.
`
`KINDER, Administrative Patent Judge.
`
`
`
`
`
`
`DECISION
`Dismissing Motion to Exclude as Moot
`37 C.F.R. §§ 42.64(c), 42.61(a)
`
`
`
`
`
`
`
`IPR2021-00816
`Patent 9,220,631 B2
`
`
`Along with its Reply to Patent Owner’s Response, Petitioner
`submitted additional evidence, including Exhibit 1105 (Reply Declaration of
`Horst Koller) and Exhibit 1108 (Declaration of Joel Cohen, M.D.). Patent
`Owner then filed a Motion to Exclude Evidence (Paper 101), seeking to
`exclude Exhibit 1108 in its entirety and paragraphs 28–29 of Exhibit 1105
`because this evidence was outside the scope of a proper reply, untimely, and
`prejudicial. Paper 101, 4–8. Petitioner filed an Opposition to Patent
`Owner’s Motion to Exclude (Paper 104), and in turn, Patent Owner filed a
`Reply in Support of its Motion to Exclude (Paper 110).
`Patent Owner seeks to exclude two paragraphs from Mr. Koller’s
`Reply Declaration (Ex. 1105 ¶¶ 28–29) relating to the potential contact
`between Parylene-C and a VEGF antagonist. Patent Owner also seeks to
`exclude Dr. Cohen’s Declaration (Ex. 1108). Dr. Cohen is a toxicologist
`testifying on behalf of Petitioner regarding the potential compatibility of
`Parylene-C with a VEGF antagonist. More specifically, the evidence that
`Patent Owner seeks to exclude relates to whether a person of ordinary skill
`in the art would not have been motivated to use a Parylene-C coating in a
`prefilled syringe because of toxicological concerns.
`In our Final Written Decision, issued concurrently herewith, we do
`not rely on the embodiments in the prior art using Parylene-C as a coating.
`Accordingly, we do not rely on or reference Exhibit 1105 ¶¶ 28–29 or
`Exhibit 1108 to support our Decision. Therefore, Patent Owner’s Motion to
`Exclude (Paper 101) is dismissed as moot.
`
`
`
`
`
`
`2
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`
`
`IPR2021-00816
`Patent 9,220,631 B2
`
`ORDER
`
`In consideration of the foregoing, it is hereby:
`
`
`
`
`
`ORDERED that Patent Owner’s Motion to Exclude Evidence
`(Paper 101) is DISMISSED AS MOOT.
`
`
`
`3
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`
`
`IPR2021-00816
`Patent 9,220,631 B2
`FOR PETITIONER:
`
`Anish Desai
`Christopher Pepe
`Elizabeth Weiswasser
`WEIL GOTSHAL & MANGES, LLP
`anish.desai@weil.com
`christopher.pepe@weil.com
`elizabeth.weiswasser@weil.com
`
`FOR PATENT OWNER:
`
`Elizabeth Holland
`William James
`Nicholas Mitrokostas
`ALLEN & OVERY LLP
`elizabeth.holland@allenovery.com
`william.james@allenovery.com
`nicholas.mitrokostas@allenovery.com
`
`Linnea Cipriano
`Joshua Weinger
`Duncan Greenhalgh
`GOODWIN PROCTER LLP
`lcipriano@goodwinlaw.com
`jweinger@goodwinprocter.com
`dgreenhalgh@goodwinlaw.com
`
`4
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`