UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_____________
`
`DAIICHI SANKYO, INC. AND
`ASTRAZENECA PHARMACEUTICALS, LP
`Petitioners,
`
`v.
`
`SEAGEN INC.
`Patent Owner.
`
`Case No. PGR2021-00042
`Patent 10,808,039
`
`_______________
`
`____________________________________________________________
`
`PATENT OWNER’S SURREPLY
`
`
`
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_____________
`
`DAIICHI SANKYO, INC. AND
`ASTRAZENECA PHARMACEUTICALS, LP
`Petitioners,
`
`v.
`
`SEAGEN INC.
`Patent Owner.
`
`Case No. PGR2021-00042
`Patent 10,808,039
`
`_______________
`
`____________________________________________________________
`
`PATENT OWNER’S SURREPLY
`
`
`
`PGR2021-00042
`
`
`
`Petitioners’ Reply fails to cure the weakness in their Petition, as the Fintiv
`
`factors as a whole favor discretionary denial.
`
`Factor 1 (Neutral). Petitioners’ representation that “[u]pon institution,
`
`Daiichi Sankyo Co., Ltd. will seek a stay” fails to render a stay more likely, as the
`
`Board has cautioned against speculation as to a district court’s ruling on Factor 1.
`
`Western Digital Corp. v. Kuster, No. IPR2020-01391, Paper 10 at 8-9 (P.T.A.B.
`
`Feb. 16, 2021) (factor 1 neutral despite expressed intent to move for a stay upon
`
`institution). Moreover, the available data do not support Petitioners’ claim that
`
`Judge Gilstrap granted a stay in 88% of post-institution cases. In reality, 22 of 30
`
`(73%) post-institution stay requests were granted, and of those, 16 were issued on
`
`stipulated, unopposed, or patent owner-initiated motions. (Ex. 2037.) Only six
`
`(27.3%) post-institution stay grants involved opposed motions by the challenger.
`
`(Ex. 2038.) If the Board credits Petitioner’s promise of a post-institution motion to
`
`stay, similar weight should be afforded Seagen’s intent to oppose any such motion.
`
`Factor 2 (Favors Denial). Petitioners’ Reply fails to offer any response to
`
`the Board’s decision that this factor “strongly favor[s] denying institution” where
`
`the trial date predates the final written decision by months. Apple Inc. v. Pinn,
`
`Inc., No. PGR2020-00066, Paper 16 at 11-12 (P.T.A.B. Dec. 8, 2020). Petitioners’
`
`citation to Western Digital does little to help their argument, as in that case the
`
`Board found Factor 2 to be neutral in large part because the same judge had
`
`sf-4494316
`
`1
`
`
`
`PGR2021-00042
`
`postponed other trials due to COVID-19 shortly before the institution decision. As
`
`explained in the Preliminary Response, Judge Gilstrap has resumed jury trials in
`
`other cases, and COVID-related uncertainties are continuing to diminish.
`
`Factor 3 (Favors Denial). Petitioners are wrong that Seagen only “focuses
`
`on investment after institution.” (Reply at 2.) Seagen’s Preliminary Response
`
`detailed the parties’ entire investment, both actual and projected, before and after
`
`institution. In the month since, the parties have begun claim construction
`
`proceedings, taken additional depositions, served additional discovery responses,
`
`and produced additional documents. Before the Board’s institution decision,
`
`Seagen will have filed its opening claim construction brief, with the responsive
`
`claim construction brief due merely days after the Board’s institution decision.
`
`Petitioners’ argument that “[o]nly investment completed ‘at the time of the
`
`institution decision’ is relevant” misstates the law. (Reply at 2 (citing Dolby Labs.,
`
`Inc. v. Intertrust Techs. Corp., No. IPR2020-01123, Paper 10 at 19 (P.T.A.B. Jan.
`
`6, 2021)) (emphasis in original).) In Dolby, significant post-institution investment
`
`merely led the Board to find that Factor 3 does “not weigh for or against”
`
`discretionary denial, not deem the post-institution investment irrelevant. Dolby
`
`Labs., No. IPR2020-01123, Paper 10 at 21. Thus, even accepting Petitioners
`
`inaccurate characterization of the record, Factor 3 would at best come out as
`
`neutral and not, as Petitioners claim, in favor of institution.
`
`sf-4494316
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`2
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`
`
`PGR2021-00042
`
`
`Factor 4 (Favors Denial). Petitioners again rely on the speculative
`
`assertion that the “litigation likely will be stayed.” (Reply at 3.) Petitioners did
`
`not—and indeed cannot—refute the fact that their Petition relies on identical
`
`grounds for unpatentability as those at issue in the Texas Action.
`
`Factor 5 (Favors Denial). Petitioners persist in pressing the cosmetic
`
`technicality that “[n]either petitioner is a defendant in Texas” (Reply at 3) and fail
`
`to acknowledge their own admission that the Texas defendant is a real party-in-
`
`interest to this Petition. (Pet. at 82.) Petitioners’ Reply likewise offers no rebuttal
`
`to the fact that Petitioner AstraZeneca has already participated in discovery in the
`
`Texas Action, and may still intervene in that action to fully prosecute its claims
`
`relating to the same patent at issue in this proceeding.
`
`Factor 6 (Favors Denial). Petitioners contend that “PO opted not to
`
`respond at all to multiple arguments.” (Reply at 3.) Petitioners’ anticipation
`
`argument, however, is fully rebutted by Seagen’s response to the priority
`
`argument, because alleged lack of priority is the only basis in the Petition for any
`
`cited reference to qualify as prior art. Seagen also provided multiple arguments in
`
`response to Petitioner’s Ground 2 on the basis of lack of enablement. Petitioners’
`
`conclusory assertion that their “unpatentability grounds . . . are particularly strong”
`
`(id.) does not change the fact that their petition suffers from numerous fundamental
`
`flaws, as outlined in the preliminary response.
`
`sf-4494316
`
`3
`
`
`
`PGR2021-00042
`
`Dated: May 26, 2021
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`
`
`By: /Matthew I. Kreeger/
`Matthew I. Kreeger, Reg. No. 56,398
`MORRISON & FOERSTER LLP
`425 Market Street
`San Francisco, CA 94105
`Tel: (415) 268-6467
`Fax: (415) 268-7522
`
`
`Attorney for Patent Owner
`
`sf-4494316
`
`4
`
`
`
`PGR2021-00042
`
`
`Certificate of Service (37 C.F.R. § 42.6(e)(4))
`
`I hereby certify that the attached PATENT OWNER’S SURREPLY was
`
`served as of the below date via email on the Petitioner at the following
`
`correspondence address:
`
`Preston K. Ratliff II
`Naveen Modi
`Michael A. Stramiello, Ph.D.
`Paul Hastings LLP
`200 Park Avenue, New York, NY, 10166
`Daiichi_Sankyo-Seagen-PGR-PH@paulhastings.com
`
`David I. Berl
`Thomas S. Fletcher
`Williams & Connolly LLP
`725 12th St. NW
`Washington, DC, 20005
`Enhertu@wc.com
`
`
`
`Dated: May 26, 2021
`
`
`
`
`
`
`
`
`
`
`
`
`By: /Matthew I. Kreeger/
`Matthew I. Kreeger, Reg. No. 56,398
`MORRISON & FOERSTER LLP
`425 Market Street
`San Francisco, CA 94105
`Tel: (415) 268-6467
`Fax: (415) 268-7522
`
`sf-4494316
`
`5
`
`
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