IPR2020-01318 (P.T.A.B. Dec. 7, 2020)

Novartis Pharma AG

Patent Trials and Appeals BoardDec 7, 2020

IPR2020-01318 (P.T.A.B. Dec. 7, 2020)

Trials@uspto.gov Paper 17 571-272-7822 Date: December 7, 2020 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ REGENERON PHARMACEUTICALS, INC., Petitioner, v. NOVARTIS PHARMA AG, NOVARTIS TECHNOLOGY LLC, NOVARTIS PHARMACEUTICALS CORPORATION, Patent Owner. ____________ IPR2020-01318 Patent 9,220,631 B1 ____________ Before ERICA A. FRANKLIN, ROBERT L. KINDER, and KRISTI L. R. SAWERT, Administrative Patent Judges. KINDER, Administrative Patent Judge. DECISION Dismissing the Petition and Terminating the Proceeding Prior to Institution of Trial 35 U.S.C. § 314 IPR2020-01318 Patent 9,220,631 B1 2 With our authorization, Regeneron Pharmaceuticals, Inc. (“Petitioner”) filed an Unopposed Motion to Terminate this proceeding. Paper 16 (“Mot.” or “Motion”). Petitioner requests that the Petition be dismissed and the proceeding terminated because “granting the motion will preserve the resources of the Board and the parties, and will promote efficiency as contemplated by 37 C.F.R. § 42.1(b).” Mot. 1. In making its Motion, Petitioner asserts that dismissal of the Petition in this proceeding is appropriate because the proceeding is at an early stage, with no decision having yet been made whether to institute trial. Mot. 3–4. Petitioner also contends that dismissal will “save the Board and the parties from devoting any further resources and time to this proceeding,” and “will help achieve 37 C.F.R. § 42.1(b)’s goal of securing the ‘just, speedy, and inexpensive resolution of every proceeding.’” Mot. 4. Petitioner notes that it filed two petitions for inter partes review of U.S. Patent No. 9,220,631 (“the ’631 patent”). Mot. 1. The petitions were docketed as IPR2020-01317 (“the ’1317 IPR”) and IPR2020-01318 (this IPR). Id. Petitioner contends that granting this Motion will alleviate the Board from work in this IPR and allow the Board to instead focus its resources on analyzing the issues raised in the ’1317 IPR in determining whether to institute a trial in that proceeding. Mot. 4. Dismissal of this proceeding will not impact the pendency of the ’1317 IPR, according to Petitioner. Id. Novartis Pharma AG, Novartis Technology LLC, and Novartis Pharmaceuticals Corporation (collectively, “Patent Owner”) has indicated that it will not oppose Petitioner’s Motion. Mot. 1 (citing Ex. 1066, correspondence between counsel). IPR2020-01318 Patent 9,220,631 B1 3 Dismissal of the Petition and termination of the proceeding is appropriate under the present circumstances. See 37 C.F.R. § 42.72 (providing authorization to “terminate a trial without rendering a final written decision, where appropriate”). Our “regulations expressly provide the Board with broad authority to dismiss a petition where appropriate.” Facebook, Inc. v. EveryMD.com, IPR2018-00050, Paper 19 at 4 (PTAB Oct. 9, 2018); see 37 C.F.R. § 42.71(a) (“The Board . . . may grant, deny, or dismiss any petition or motion.”). We have yet to reach the merits of the Petition and we have not yet issued an institution decision. Thus, the proceeding is at an early stage and it is appropriate to dismiss the Petition and terminate the proceeding to promote efficiency and unnecessary costs. See, e.g., Samsung Elecs. Co. v. NVIDIA Corp., IPR2015-01270, Paper 11 (PTAB Dec. 9, 2015) (granting opposed motion to dismiss before institution). Accordingly, we grant Petitioner’s Motion because of the “early juncture” of this proceeding, it is unopposed, and doing so will “promote efficiency and minimize unnecessary costs.” Id. at 3–4; Ex. 1066. It is ORDERED that Petitioner’s Unopposed Motion to Terminate the Proceeding is granted; FURTHER ORDERED that the Petition (Paper 3) is dismissed; and FURTHER ORDERED that this proceeding is terminated. IPR2020-01318 Patent 9,220,631 B1 4 PETITIONER: Elizabeth Weiswasser Brian Ferguson Anish Desai Christopher Pepe WEIL GOTSHAL & MANGES, LLP Elizabeth.weiswasser@weil.com Anish.desai@weil.com Brian.ferguson@gweil.com Christopher.pepe@weil.com PATENT OWNER: Elizabeth J. Holland William G. James Linnea Cipriano Joshua Weinger GOODWIN PROCTER LLP EHolland@goodwinlaw.com WJames@goodwinlaw.com LCipriano@goodwinlaw.com JWeinger@goodwinlaw.com