`
`Filed: December 18, 2018
`Paper No. 16
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`
`
`
`Filed On Behalf Of:
`
`Alnylam Pharmaceuticals, Inc.
`
`By:
`
`Scott K. Reed
`sreed@venable.com
`212-218-2100
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________
`
`ALNYLAM PHARMACEUTICALS, INC.,
`Petitioner,
`v.
`SILENCE THERAPEUTICS GMBH,
`Patent Owner.
`________________
`
`Case PGR2018-00059
`U.S. Patent No. 9,695,423
`________________
`
`
`
`JOINT MOTION TO TERMINATE PURSUANT TO 35 U.S.C. § 327(a)
`
`
`
`
`
`
`Case PGR2018-00059
`U.S. Patent No. 9,695,423
`
`
`Pursuant to 35 U.S.C. § 327 and 37 C.F.R. § 42.74, Petitioner Alnylam
`
`Pharmaceuticals, Inc. and its wholly owned subsidiary Alnylam U.S., Inc.
`
`(collectively, “Alnylam” or “Petitioner”) and Patent Owner Silence Therapeutics
`
`GmbH (“Patent Owner”) jointly and respectfully request termination of PGR2018-
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`00059, which is directed to U.S. Patent No. 9,695,423 (the “’423 patent”), due to
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`settlement between Petitioner and Patent Owner. The Board authorized the parties
`
`to file this motion by e-mail on December 17, 2018.
`
`I.
`
`Brief Explanation as to Why Termination Is Appropriate
`
`On April 2, 2018, Petitioner filed its petition for post-grant review of the
`
`’423 patent (Paper No. 2). On April 16, 2018, the Board issued a Notice of Filing
`
`Date Accorded to Petition (Paper No. 4). Patent Owner filed its Preliminary
`
`Response on July 16, 2018 (Paper No. 7). On October 10, 2018, the Board issued a
`
`Decision Denying Institution of Post-Grant Review (Paper No. 9). On November
`
`2, 2018, Petitioner filed its Request for Rehearing (Paper No. 11) (pending). On
`
`December 9, 2018, Petitioner and Patent Owner reached a settlement that resolves
`
`all disputes between them with respect to this proceeding and the parties’ related
`
`district court litigation. A Stipulation and Order of Dismissal agreed to by the
`
`parties in the related district court litigation has been filed in the district court.
`
`Pursuant to 37 C.F.R. § 42.74(b), the parties’ confidential settlement
`
`1
`
`
`
`
`Case PGR2018-00059
`U.S. Patent No. 9,695,423
`
`
`agreement is in writing, and a true and correct copy is being filed concurrently
`
`herewith as Exhibit 1064. The parties are also filing concurrently herewith a joint
`
`request to treat the confidential settlement agreement as business confidential
`
`information and keep it separate from the files of this proceeding in accordance
`
`with 37 C.F.R. § 42.74(c) and 35 U.S.C. § 327(b). The parties hereby certify that
`
`there are no other agreements, oral or written, between the parties made in
`
`connection with, or in contemplation of, the termination of the proceeding.
`
`Termination of this proceeding is proper under 35 U.S.C. § 327(a) because
`
`the Board has not issued a final written decision and thus, has not yet decided the
`
`ultimate merits of this proceeding. Accordingly, Petitioner and Patent Owner
`
`respectfully request that the Board terminate PGR2018-00059, due to settlement
`
`between Petitioner and Patent Owner.
`
`II. Related Litigations Involving The Patent At Issue
`
`The only related litigation involving the patent at issue in this proceeding is
`
`Alnylam Pharmaceuticals, Inc. v. Silence Therapeutics PLC, No. 1:18-cv-10613-
`
`MLW (D. Mass. filed Mar. 29, 2018). The complaint in that case was filed in the
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`United States District Court for the District of Massachusetts on March 29, 2018.
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`The parties to that litigation are: Petitioner Alnylam Pharmaceuticals, Inc. as the
`
`plaintiff; and Patent Owner Silence Therapeutics GmbH and its exclusive licensee,
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`2
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`
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`Case PGR2018-00059
`U.S. Patent No. 9,695,423
`
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`Silence Therapeutics plc, as the defendants. The parties to that litigation have filed
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`a Stipulation and Order of Dismissal in the district court to discontinue that action.
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`III. Related Proceedings Currently Before the Patent Office
`
`There are no other related proceedings before the Patent Office involving the
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`patent at issue. Petitioner and Patent Owner are likewise concurrently filing similar
`
`motions to terminate with respect to Case Nos. PGR2018-00067 (U.S. Patent No.
`
`9,758,784), PGR2018-00075 (U.S. Patent No. 9,783,802), PGR2018-00088 (U.S.
`
`Patent No. 9,790,505) and PGR2018-00089 (U.S. Patent No. 9,790,501).
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`IV. Conclusion
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`For the foregoing reasons, Petitioner and Patent Owner respectfully request
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`termination of this post-grant review of the ’423 patent.
`
`
`
`
`
`3
`
`
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`
`
`Dated: December 18, 2018
`
`Respectfully submitted,
`
`Case PGR2018-00059
`U.S. Patent No. 9,695,423
`
`
`
`
`
`
`
`
`
`
`
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`
`
`
`
` /s/ Scott K. Reed
`
`Scott K. Reed (Reg. No. 32,433)
`Prajakta A. Sonalker (Reg. No. 65,406)
`VENABLE LLP
`1290 Avenue of the Americas
`New York, NY 10104-3800
`Tel: (212) 218-2100
`
`Counsel for Petitioner Alnylam
`Pharmaceuticals, Inc.
`
`
`
`
`Dated: December 18, 2018
`
`Respectfully submitted,
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
` /s/ Matthew Kreeger
`
`Matthew Kreeger (Reg. No. 56,398)
`MORRISON & FOERSTER LLP
`425 Market Street
`San Francisco, California 94105-2482
`Tel: (415) 268-6468
`Fax: (415) 268-7522
`
`Jian Xiao (Reg. No. 55,748)
`MORRISON & FOERSTER LLP
`755 Page Mill Road
`Palo Alto, CA 94304
`Tel: (650) 813-5736
`Fax: 650) 494-0792
`
`Counsel for Patent Owner Silence
`Therapeutics GmbH
`
`
`
`
`4
`
`
`
`Case PGR2018-00059
`U.S. Patent No. 9,695,423
`
`
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies that a copy of the foregoing JOINT MOTION TO
`
`TERMINATE PURSUANT TO 35 U.S.C. § 327(a) was served electronically via
`
`email on December 18, 2018 at the following addresses of record:
`
`Lead Counsel
`
`Back-up Counsel
`
`Matthew Kreeger, Reg. No. 56,398
`MKreeger@mofo.com
`MORRISON & FOERSTER LLP
`425 Market Street
`San Francisco, CA 94105
`Tel: (415) 268-6467
`Fax: (415) 268-7522
`
`Jian Xiao, Reg. No. 55,748
`JXiao@mofo.com
`MORRISON & FOERSTER LLP
`755 Page Mill Road
`Palo Alto, CA 94304
`Tel: (650) 813-5736
`Fax: 650) 494-0792
`
`
`
`Patent Owner has consented to service by electronic mail to
`
`68013-423-PGR@mofo.com.
`
`
`
`Dated: December 18, 2018
`
`Respectfully submitted,
`
` /s/ Scott K. Reed
`
`Scott K. Reed (Reg. No. 32,433)
`VENABLE LLP
`1290 Avenue of the Americas
`New York, NY 10104-3800
`Tel: (212) 218-2100
`
`
`
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