`Patent Owners’ Notice of Non-Opposition to Motion for
`Joinder and Waiver of Preliminary Response
`
`Adam R. Brausa
`Reg. No. 60,287
`Daralyn J. Durie
`Pro Hac Vice Application
`Pending
`Durie Tangri LLP
`217 Leidesdorff Street
`San Francisco, CA 94111
`
`
`Jeffrey P. Kushan
`Reg. No. 43,401
`Peter S. Choi
`Reg. No. 54,033
`Sidley Austin LLP
`1501 K Street, N.W.
`Washington, D.C.
`20005
`
`
`Filed on behalf of Patent Owners Genentech, Inc. and City of Hope by:
`
`David L. Cavanaugh
`Reg. No. 36,476
`Heather M. Petruzzi
`Reg. No. 71,270
`Robert J. Gunther, Jr.
`Pro Hac Vice Application
`Pending
`Wilmer Cutler Pickering
`Hale and Dorr LLP
`1875 Pennsylvania Ave., NW
`Washington, DC 20006
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________________________________
`
`GENZYME CORPORATION,
`Petitioner
`
`v.
`
`GENENTECH, INC. AND CITY OF HOPE
`Patent Owners
`____________________________________________
`
`Case IPR2016-00460
`Patent 6,331,415
`____________________________________________
`
`PATENT OWNERS’ NOTICE OF NON-OPPOSITION TO MOTION FOR
`JOINDER AND WAIVER OF PRELIMINARY RESPONSE
`
`
`
`
`
`IPR2016-00460
`Patent Owners’ Notice of Non-Opposition to Motion for
`Joinder and Waiver of Preliminary Response
`
`
`
`Patent Owners Genentech Inc. (“Genentech”) and City of Hope submit this
`
`
`
`Notice of Non-Opposition to Motion for Joinder and Waiver of Preliminary
`
`Response to Petitioner Genzyme Corporation’s (“Genzyme”) Motion for Joinder
`
`Under 35 U.S.C. § 315(c), and 37 C.F.R. § 42.22 and § 42.122(b) (“Motion for
`
`Joinder”) (Paper 10). In view of Genzyme’s agreement to abide by the conditions
`
`set forth in its Motion for Joinder and reproduced below, Patent Owners do not
`
`oppose Genzyme’s motion to join this inter partes review with IPR2015-01624,
`
`filed by Sanofi-Aventis U.S. LLC (“Sanofi-Aventis”) and Regeneron
`
`Pharmaceuticals, Inc. (“Regeneron”) and relating to the same patent at issue here,
`
`U.S. Patent No. 6,331,415 (“the Cabilly ’415 patent”). The conditions are as
`
`follows:
`
`1. Genzyme agrees to “consolidated filings for all substantive papers in
`
`the proceeding (e.g., Reply to the Patent Owner’s Response,
`
`Opposition to Motion to Amend, Motion for Observation on Cross
`
`Examination Testimony of a Reply Witness, Motion to Exclude
`
`Evidence, Opposition to Motion to Exclude Evidence and Reply)” and
`
`to “incorporate its filings with those of Sanofi-Aventis and Regeneron
`
`into a consolidated filing in the Sanofi-Aventis IPR [2015-01624],
`
`including being subject to the ordinary rules for one party on page
`- 1 -
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`
`
`
`
`IPR2016-00460
`Patent Owners’ Notice of Non-Opposition to Motion for
`Joinder and Waiver of Preliminary Response
`
`
`limits.” (Paper 10 at 6.) Genzyme further agrees that “Sanofi,
`
`Regeneron and Genzyme will be jointly responsible for the
`
`consolidated filings” with the exception for motions that do not
`
`involve the other parties. (Id. at 6, 9.)
`
`2.
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`Genzyme agrees “not to be permitted any arguments separate from
`
`those advanced by Sanofi-Aventis and Regeneron in the consolidated
`
`filings” in order to “avoid lengthy and duplicative briefing.” (Paper
`
`10 at 6.)
`
`3.
`
`Genzyme agrees that “[c]onsolidated discovery is also appropriate
`
`given that Genzyme, Sanofi-Aventis and Regeneron are using the
`
`same expert declaration in the two proceedings.” Specifically,
`
`“Genzyme, Sanofi-Aventis and Regeneron will designate an attorney
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`to conduct the cross-examination of any given witness produced by
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`Genentech and City of Hope, and the redirect of any given witness
`
`produced by Genzyme, Sanofi-Aventis and Regeneron within the
`
`timeframe normally allotted by the rules for one party. Genzyme will
`
`not receive any separate cross-examination or redirect time from that
`
`of Sanofi-Aventis and Regeneron.” (Paper 10 at 6-7; see also id. at
`
`- 2 -
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`9.)
`
`
`
`
`
`IPR2016-00460
`Patent Owners’ Notice of Non-Opposition to Motion for
`Joinder and Waiver of Preliminary Response
`
`
`Genzyme agrees that “[t]he Genzyme IPR [2016-00460] will be
`
`4.
`
`instituted and joined with the Sanofi-Aventis IPR [2015-01624] on the
`
`same grounds as those for which review was instituted in the Sanofi-
`
`Aventis IPR.” (Paper 10 at 8.)
`
`5.
`
`Genzyme agrees that “[t]he scheduling order for the Sanofi-Aventis
`
`IPR will apply to the joined proceeding.” (Paper 10 at 8.)
`
`If the Board grants Genzyme’s joinder motion, Patent Owners waive their
`
`right to a Preliminary Response (37 C.F.R. § 42.107).
`
`
`
`Respectfully submitted,
`
`Date: March 28, 2016
`
`
`
`/David L. Cavnauagh/
`David L. Cavanaugh
`Registration No. 36,476
`Counsel for Patent Owners
`
`
`WILMER CUTLER PICKERING HALE AND DORR LLP
`1875 PENNSYLVANIA AVENUE NW
`WASHINGTON, DC 20006
`TEL: 650-600-5036
`FAX: 650-858-6100
`EMAIL: david.cavanaugh@wilmerhale.com
`
`- 3 -
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`
`
`IPR2016-00460
`Patent Owners’ Notice of Non-Opposition to Motion for
`Joinder and Waiver of Preliminary Response
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that, on March 28, 2016, I caused a true and correct copy of the
`foregoing materials:
`
`
` Patent Owners’ Notice of Non-Opposition to Motion for Joinder and Waiver
`of Preliminary Response
`
`to be served via electronic mail on the following attorneys of record:
`
`Richard McCormick
`Lisa M. Ferri
`Brian W. Nolan
`Mayer Brown LLP
`1221 Avenue of the Americas
`New York, NY 10020-1001
`Rmccormick@mayerbrown.com
`LFerri@mayerbrown.com
`BNolan@mayerbrown.com
`MB-Genzyme-Cabilly-IPR-2@mayerbrown.com
`
`
`
`_/Rebecca A. Whitfield/_
`Rebecca A. Whitfield
`Reg. No. 73,756
`Wilmer Cutler Pickering Hale and Dorr LLP
`60 State Street
`Boston, MA 02109
`
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