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Trials@uspto.gov
`Tel: 571.272.7822
`
`Paper No. 11
`Entered: May 18, 2016
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`GENZYME CORPORATION,
`Petitioner,
`
`v.
`
`GENETECH, INC. AND CITY OF HOPE,
`Patent Owner.
`_______________
`
`Cases IPR2016-00383
`Patent 6,331,415 B1
`_______________
`
`
`
`Before LORA M. GREEN, ERICA A. FRANKLIN, and
`SUSAN L. C. MITCHELL, Administrative Patent Judges.
`
`GREEN, Administrative Patent Judge.
`
`
`
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`

`

`IPR2016-00383
`Patent 6,331,415 B1
`
`
`A conference call was held was held on Friday, May 6, 2016, among
`Richard McCormick and Lisa Ferri, counsel for Petitioner, Genzyme
`Corporation (“Genzyme”); Jeffrey Kushnan, David Cavanaugh, and Robert
`Gunther, counsel for Patent Owner; and Administrative Patent Judges Green,
`Franklin, and Mitchell. A court reporter was present on the call, and Patent
`Owner filed a transcript of the call as Exhibit 2026.1 Petitioner requested the
`call to obtain authorization to file a reply to Patent Owner’s Preliminary
`Response (Paper 10).
`Petitioner stated that it was seeking authorization to file a reply
`directed to the arguments made by Patent Owner in its Preliminary Response
`that we should decline to institute trial on the basis of 35 U.S.C. §§ 325(d)
`and 315(e). Specifically, Petitioner asserted that Patent Owner argues that
`Genzyme, the Petitioner in the instant proceeding, is related to Sanofi-
`Aventis U.S. LLC and Regeneron Pharmaceuticals, Inc. (collectively,
`“Sanofi”), petitioner in IPR2015-01624, which challenges the same patent at
`issue in the instant proceeding. According to Genzyme, although there has
`been some corporate restructuring, Sanofi, at the time of filing of IPR2015-
`01624, did not have access to Genzyme’s art or arguments.
`
`As for estoppel under 35 U.S.C. § 315(e), Petitioner asserted that
`Patent Owner argued that trial should not be instituted on the basis of the
`potential outcome in IPR2015-01624, in which a final decision is not due for
`roughly a year. Thus, Petitioner contended that declining to institute the
`instant proceeding on that basis would be premature. Moreover, Petitioner
`
`
`1 This order summarizes the statements made during the conference call. A
`more detailed record may be found in the transcript.
`
` 2
`
`
`
`
`
`

`

`IPR2016-00383
`Patent 6,331,415 B1
`
`asserted that Patent Owner and Sanofi are in settlement negotiations, and
`thus, IPR2015-01624 may never proceed to a final written decision.
`
`Patent Owner responded that at the time the instant Petition was filed,
`there was a common real party-in-interest in the instant proceeding and
`IPR2015-01624. Patent Owner argued further that the Petition in the instant
`proceeding was an attempt to remedy the deficiencies of the Petition filed in
`IPR2015-01624. According to Patent Owner, this is not the type of situation
`in which the Board normally authorizes a reply to the preliminary response
`to be filed.
`
`After considering the arguments of the parties, we authorized
`Petitioner to file a fifteen (15) page reply, to be limited to the issues raised
`by Patent Owner under 35 U.S.C. §§ 325(d) and 315(e) in its Preliminary
`Response. The reply is to be filed no later than May 20, 2016. Patent
`Owner is not authorized to file a sur-reply at this time, but, after review of
`Petitioner’s reply, may contact the Board if it would like seek permission to
`file a sur-reply.
`
`Petitioner also sought clarification as to whether it would be permitted
`to submit additional evidence with its reply. We stated that it was permitted
`to submit additional evidence with its reply, but to the extent that it submits
`declaration evidence as to the relationship between the real parties-in-
`interest, it may require making the declarant available for a deposition
`before a decision on institution is made.
`In that regard, to the extent that Petitioner seeks to submit confidential
`information, we note that no protective order has been entered in this
`proceeding. The parties are reminded of the requirement for a protective
`order when filing a motion to seal. 37 C.F.R. § 42.54. The parties must
`
` 3
`
`
`
`
`
`

`

`IPR2016-00383
`Patent 6,331,415 B1
`
`confer before filing a proposed protective order. If the parties have agreed
`to a proposed protective order, including the Standing Default Protective
`Order, Office Trial Practice Guide, 77 Fed. Reg. 48,756, App. B (Aug 14,
`2012), they should file a signed copy of the proposed protective order with
`the motion to seal. If the parties choose to propose a protective order other
`than, or departing from, the default Standing Protective Order, they must
`submit a joint, proposed protective order, accompanied by a red-lined
`version based on the default protective order in Appendix B to the Office
`Patent Trial Practice Guide. If the parties cannot come to an agreement as to
`the proposed protective order, they should contact the Board and request a
`conference call.
`
`
`
`Accordingly, it is:
`ORDERED that Petitioner is authorized to file a fifteen (15) page
`reply to Patent Owner’s Preliminary Response, to be limited to the issues
`raised by Patent Owner under 35 U.S.C. §§ 325(d) and 315(e) in its
`Preliminary Response; and
`FURTHER ORDERED that Petitioner’s reply is to be filed by May
`20, 2016.
`
`
`
`
`
` 4
`
`
`
`
`
`

`

`IPR2016-00383
`Patent 6,331,415 B1
`
`PETITIONER:
`
`Richard McCormick
`rmccormick@mayerbrown.com
`Brian Nolan
`BNolan@mayerbrown.com
`
`
`PATENT OWNER:
`
`David L. Cavanaugh
`David.Cavanaugh@wilmerhale.com
`Heather M. Petruzzi
`Heather.Petruzzi@wilmerhale.com
`
`Jeffrey P. Kushan
`iprnotices@sidley.com
`
`Adam R. Brausa,
`abrausa@durietangri.com
`
` 5
`
`
`
`
`
`

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