Celltrion, Inc.v.Genentech, Inc.

Patent Trial and Appeal Board

Oct 6, 2015

09564288 (P.T.A.B. Oct. 6, 2015)

Trials@uspto.gov Paper 12
571-272-7822 Entered: October 6, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

CELLTRION, INC.
Petitioner,

v.

GENENTECH, INC.,
Patent Owner.
____________

Case IPR2015-01733 (Patent 7,976,838)
Case IPR2015-01744 (Patent 7,820,161)1
____________

Before FRANCISCO C. PRATS, ERICA A. FRANKLIN, and
SHERIDAN K. SNEDDEN, Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

DECISION
Dismissing Petitions and Terminating Proceedings
37 C.F.R. § 42.5(a); 37 C.F.R. § 42.71(a)

1 This decision addresses issues that are identical in the two cases. We,
therefore, exercise our discretion to issue one order to be filed in each case.

IPR2015-01733 (Patent 7,976,838)
IPR2015-01744 (Patent 7,820,161)

2

With authorization of the Board, Paper 10,2 Petitioner filed in each of
the instant proceedings an Unopposed Motion to Dismiss, Paper 11. In each
motion, Petitioner requests dismissal of the pending petition, Paper 2,
without prejudice, and termination of the proceeding. Paper 11, 1.
Additionally, in each motion, Petitioner requests that its motion for joinder,
Paper 3, with IPR2015-00415 and IPR2015-00417, now terminated, be
dismissed as moot. Id.
Each of the instant proceedings is in the preliminary stage. Patent
Owner has not filed a preliminary response in either proceeding,3 and we
have not considered the merits of the Petitions or the Motions for Joinder.
Further, as Patent Owner has acknowledged, it does not object to Petitioner
moving to dismiss the petitions and terminate the proceedings. Paper 10, 1.
Under these circumstances, we determine that it is appropriate to dismiss the
petitions without prejudice, to dismiss the joinder motions, and to terminate
the proceedings. 37 C.F.R. § 42.5(a); 37 C.F.R. § 42.71(a). This Decision
does not constitute a final written decision pursuant to 35 U.S.C. § 318(a).
Although the petitions in these proceedings are dismissed without
prejudice, any subsequently filed petitions must comply with the statutory
and regulatory requirements applicable to petitions. See, e.g., 35 U.S.C.
§§ 322–325 and 37 C.F.R. § 42.3. In other words, a dismissal without
prejudice does not modify or otherwise alter the application of statutory and
regulatory requirements to a filed petition, including the Board’s

2 Paper numbers referenced in this Decision are the same in each proceeding.
3 The Preliminary Response in each proceeding would not be due until the
latter part of November 2015.
IPR2015-01733 (Patent 7,976,838)
IPR2015-01744 (Patent 7,820,161)

3

discretionary considerations when deciding whether to institute an inter
partes review.
ORDER
In accordance with the foregoing, it is hereby:
ORDERED that the Petitions in IPR2015-001733 and IPR2015-
001744 are dismissed without prejudice; and
FURTHER ORDERED that the proceedings in IPR2015-001733 and
IPR2015-001744 are terminated.

PETITIONER:

Elizabeth Holland
Cynthia Harman
GOODWIN PROCTER LLP
eholland@goodwinprocter.com
chardman@goodwinprocter.com

PATENT OWNER:

Jeffrey P. Kushan
James A. High
SIDLEY AUSTIN LLP
IPRNotices@sidley.com
jhigh@sidley.com

Gary N. Frischling
Keith A. Orso
IRELL & MANELLA LLP
Genentech/rituxanIPR@irell.com
korso@irell.com