`Trials@uspto.gov
`Tel: 571-272-7822
`
`Entered: November 1, 2022
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`REGENERON PHARMACEUTICALS, INC.,
`Petitioner,
`
`v.
`
`NOVARTIS PHARMA AG, NOVARTIS TECHOLOGY 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.
`
`
`
`
`
`ORDER
`Directing the Submission of a Redacted Public Version of the
`Final Written Decision and Granting the Joint Motion to Expunge Certain
`Exhibits
`37 C.F.R. §§ 42.5 and 42.14
`
`
`
`
`
`
`IPR2021-00816
`Patent 9,220,631 B2
`
`Public Version of the Final Written Decision
`
`On October 25, 2022, the Board issued a Final Written Decision
`(“Decision,” Paper 113) in this proceeding, but restricted its access to
`“Board and Parties Only” because the Decision references numerous
`exhibits and information that we have previously sealed pursuant to the
`Second Modified Default Protective Order (Paper 103) entered on July 8,
`2022. The confidential materials were protected pursuant to our orders
`granting motions to seal filed by Novartis Pharma AG, Novartis Technology
`LLC, and Novartis Pharmaceuticals Corporation (collectively, “Novartis”)
`and a motion to seal filed by Regeneron Pharmaceuticals, Inc.
`(“Regeneron”). See Papers 22, 103, 105 (orders granting motions to seal).
`The parties shall meet and confer and jointly submit, via email, a
`proposed redacted version of the Decision on or before November 18, 2022.
`If any disagreement exists, the parties may schedule a conference call prior
`to that due date.
`Any redactions should weigh heavily the strong public policy for
`making all information filed in a quasi-judicial administrative proceeding
`open to the public, especially when that information is contained in a final
`written decision. See Paper 15. For example, the parties should not propose
`redacting any information that is otherwise publicly available or disclosed in
`other proceedings publicly. The Board will review all redactions and may
`schedule a conference call to discuss redactions it deems unnecessary or
`excessive. Otherwise, the redacted copy of the Decision submitted by the
`parties will be entered as the publicly accessible version of the Decision.
`
`
`
`
`
`2
`
`
`
`IPR2021-00816
`Patent 9,220,631 B2
`
`Expungement of Certain Exhibits
`Novartis originally filed, but later withdrew, a Motion to Amend in
`this proceeding. Papers 36, 37, 89. Because a significant amount of
`evidence filed in support or opposition to this withdrawn Motion to Amend
`is confidential, but is no longer relevant to any issue in this proceeding, we
`requested that the parties consider whether any exhibits could be expunged
`from this proceeding. The parties filed a “Joint Motion to Expunge”
`(Paper 111) on August 12, 2022. The Joint Motion requests that the Board
`expunge 44 exhibits that are not relied upon for any issue decided in this
`proceeding. See Paper 111 (listing 44 exhibits that the parties jointly request
`to expunge).
`Having now verified that the Decision does not rely on any of the
`exhibits that the parties seek to expunge, the parties request to expunge the
`identified 44 exhibits is granted. We have considered the public’s interest in
`maintaining a complete and understandable file history of this inter partes
`review, but because Novartis withdrew its Motion to Amend, the
`information contained in these exhibits is now irrelevant to any issue in the
`proceeding, which negates the public’s interest. The expunged exhibits are
`set forth below.
`
`
`
`
`
`
`
`
`3
`
`
`
`IPR2021-00816
`Patent 9,220,631 B2
`
`Order
`
`Accordingly, it is:
`ORDERED that the parties shall submit, via email, a proposed
`redacted version of the Decision on or before November 18, 2022; and
`FURTHER ORDERED that the “Joint Motion to Expunge” (Paper
`111) is granted. The Board shall expunge (and delete from PTAB E2E) the
`following exhibits:
`1101
`1110
`1116
`1117
`1121
`1122
`1126
`1127
`1131
`1132
`1136
`1160
`1166
`1167
`2210
`2211
`2218
`2222
`
`
`
`
`1113
`1119
`1124
`1129
`1134
`1164
`1181
`2213
`2230
`
`1114
`1120
`1125
`1130
`1135
`1165
`2208
`2214
`
`
`1112
`1118
`1123
`1128
`1133
`1163
`1169
`2212
`2229
`
`
`
`
`
`
`
`
`
`
`
`4
`
`
`
`IPR2021-00816
`Patent 9,220,631 B2
`
`For PETITIONER:
`Elizabeth Weiswasser
`Anish Desai
`Brian Ferguson
`Christopher Pepe
`WEIL, GOTSHAL & MANGES LLP
`elizabeth.weiswasser@weil.com
`anish.desai@weil.com
`brian.ferguson@weil.com
`christopher.pepe@weil.com
`
`For PATENT OWNER:
`Elizabeth Holland
`William James
`Linnea Cipriano
`Joshua Weinger
`GOODWIN PROCTER LLP
`eholland@goodwinprocter.com
`wjames@goodwinlaw.com
`lcipriano@goodwinlaw.com
`jweinger@goodwinprocter.com
`
`
`
`
`
`5
`
`
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