`571-272-7822
`
`Paper 9
`Entered: March 2, 2020
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`PROGENICS PHARMACEUTICALS, INC.,
`Petitioner,
`
`v.
`
`MAX-PLANCK-GESELLSCHAFT ZUR FOERDERUNG DER
`WISSENSCHAFTEN E.V.
`AND
`UNIVERSITAT ZU KOLN,
`Patent Owners.
`
`
`PGR2019-00052
`Patent 10,112,974 B2
`
`
`
`
`
`
`
`
`
`
`
`
`Before GEORGIANNA W. BRADEN, J. JOHN LEE, and
`MICHAEL A. VALEK, Administrative Patent Judges.
`
`VALEK, Administrative Patent Judge.
`
`
`
`
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`PGR2019-00052
`Patent 10,112,974 B2
`
`On February 28, 2020, a conference call was held among counsel for
`
`the parties and Judges Valek, Braden, and Lee to discuss Patent Owner’s
`decision not to file a response in the proceeding. During the call, Patent
`Owner stated it was waiving the right to file a response and motion to amend.
`Patent Owner further indicated it did not intend to file any of the other papers
`contemplated in the Scheduling Order (Paper 8).
`
`Patent Owner indicated it did not intend to disclaim, or request adverse
`judgment as to, all the claims in the proceeding. Patent Owner explained it
`would only be willing to disclaim those claims for which we determined
`Petitioner had met its initial burden in our Decision on Institution. See Paper
`7, 35 (stating the information in the Petition “demonstrates it is more likely or
`not that claims 1–5, 7, 9, 13, 15, and 31 are unpatentable on one or more of
`the asserted grounds”). Thus, Patent Owner will not request adverse judgment
`as to Petitioner’s grounds for claims 6, 8, 10–12 and 14. Accordingly, the
`post grant review will continue as instituted, albeit without a response or other
`papers from Patent Owner.
`
`In light of Patent Owner’s decision to waive its response, there is no
`need for the reply, sur-reply, and motion to exclude contemplated by the
`Scheduling Order and our rules. Petitioner may request that we allow it to file
`a short brief limited to addressing issues discussed in the institution decision.
`New evidence, however, will not be permitted.
`
`In consideration of the foregoing, it is hereby:
`
`ORDERED that the Scheduling Order (Paper 8) is amended as follows:
`
`2
`
`
`
`PGR2019-00052
`Patent 10,112,974 B2
`
`
`1. DUE DATES 1–3 and 5–7 are cancelled. Neither party may file any
`of the papers contemplated under those DUE DATES without first
`arranging a conference call with the parties and the Board to seek
`permission to do so.
`2. If Petitioner decides to request the additional briefing noted above,
`the request must be made by March 13, 2020. The request should be
`made by email to Trials@uspto.gov, indicating: a) the number of
`pages Petitioner seeks; b) a proposed deadline for filing; c) the parties
`have conferred regarding Petitioner’s request; and d) whether Patent
`Owner opposes the request.
`3. The deadline for DUE DATE 4 is changed to March 27, 2020.
`
`
`
`
`
`
`
`
`
`
`3
`
`
`
`PGR2019-00052
`Patent 10,112,974 B2
`
`PETITIONER:
`
`John P. Rearick
`Michael A. Shinall
`Stephanie L. Schonewald
`CHOATE HALL & STEWART LLP
`jrearick@choate.com
`mshinall@choate.com
`sschonewald@choate.com
`
`
`
`PATENT OWNER:
`
`John A. Sopp
`Brion P. Heaney
`Millen, White, Zelano & Branigan, P.C.
`sopp@mwzb.com
`heaney@mwzb.com
`
`4
`
`
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