`
`Patent Owners’ Response to Petitioner’s Motion for Joinder
`
`
`Filed on behalf of Patent Owners Genentech, Inc. and City of Hope by:
`
`David L. Cavanaugh
`Reg. No. 36,476
`Owen K. Allen
`Reg. No. 71,118
`Heather M. Petruzzi
`Reg. No. 71,270
`Robert J. Gunther, Jr.
`Pro Hac Vice To be Filed
`Wilmer Cutler Pickering
`Hale and Dorr LLP
`1875 Pennsylvania Ave., NW
`Washington, DC 20006
`
`
`Adam R. Brausa
`Reg. No. 60,287
`Daralyn J. Durie
`Pro Hac Vice To Be Filed
`Durie Tangri LLP
`217 Leidesdorff Street
`San Francisco, CA 94111
`
`
`David I. Gindler
`Pro Hac Vice To Be
`Filed
`Joseph M. Lipner
`Pro Hac Vice To Be
`Filed
`Michael R. Fleming
`Irell & Manella LLP
`1800 Avenue of the
`Stars, Suite 900
`Los Angeles, CA
`90067
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________________________________
`
`MERCK SHARP & DOHME CORP.,
`Petitioner,
`
`v.
`
`GENENTECH, INC. AND CITY OF HOPE,
`Patent Owners.
`____________________________________________
`
`Case IPR2017-00047
`Patent 6,331,415
`____________________________________________
`
`PATENT OWNERS’ RESPONSE TO
`PETITIONER’S MOTION FOR JOINDER
`
`
`
`
`
`
`
`
`
`
` IPR2017-00047
`
`Patent Owners’ Response to Petitioner’s Motion for Joinder
`
`On October 11, 2016, Petitioner Merck Sharpe & Dohme Corp. filed the
`
`instant petition—which raises the exact same art and arguments as the petition in
`
`recently-instituted IPR2016-00710—along with a motion seeking to join the
`
`instant petition to IPR2016-00710. Merck’s instant petition lacks substantive merit
`
`for the same reasons that Patent Owners will detail in their Response to the same
`
`grounds asserted in IPR2016-00710, which is currently due in December 2016.
`
`Nevertheless, Patent Owners do not object to Merck’s motion to join the
`
`present petition to IPR2016-00710, provided that, as a condition to joinder, Merck
`
`should not be permitted to proceed with its already-pending petition in IPR2016-
`
`01373. Merck filed IPR2016-01373 over three months ago, challenging many of
`
`the same claims of U.S. Patent No. 6,331,415 (“the Cabilly ’415 patent”). If the
`
`present petition is joined with IPR2016-00710, the final written decision in that
`
`consolidated proceeding will estop Merck under 35 U.S.C. § 315(e)(1) on any
`
`ground presented in IPR2016-01373. Indeed, for that reason, the present motion
`
`for joinder supports denial of institution in IPR2016-01373, as Patent Owners
`
`explained in their Preliminary Response in that proceeding (IPR2016-01373, Paper
`
`13 at 28-29).
`
`
`
`Because the relief requested in Merck’s motion may ultimately result in
`
`estoppel of Merck’s grounds in IPR2016-01373, Patent Owners proposed to Merck
`
`that they would consent to joinder if, as a condition for joinder, Merck withdrew its
`
`1
`
`
`
`
`
`
`
` IPR2017-00047
`
`Patent Owners’ Response to Petitioner’s Motion for Joinder
`
`
`previously-filed petition in IPR2016-01373. After considering Patent Owners’
`
`proposal, Merck stated that it would not withdraw its petition in IPR2016-01373,
`
`even if Patent Owners agreed to joinder here.
`
`
`
`Given the statutory estoppel, Merck cannot actually pursue both the present
`
`petition and its petition in IPR2016-01373 to a final written decision. It would be a
`
`waste of party and agency resources to allow Merck to pursue two alternative
`
`petitions, given the estoppel issue noted above. Accordingly, Patent Owners do
`
`not object to Merck’s motion to join its present petition to IPR2016-00710,
`
`provided that such joinder is conditioned on Merck not being permitted to proceed
`
`with its separate petition in IPR2016-01373.
`
`
`
`Date: November 11, 2016
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`/David L. Cavanaugh/
`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: 202-663-6000
`FAX: 202-663-6363
`EMAIL: david.cavanaugh@wilmerhale.com
`
`2
`
`
`
`
`
`
`
`
`
`IPR2017-00047
`
`Patent Owners’ Response to Petitioner’s Motion for Joinder
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that, on November 11, 2016, I caused a true and correct copy
`
`of the following materials:
`
` Patent Owners’ Response to Petitioner’s Motion for Joinder
`
`to be served by electronic mail on the following attorneys of record:
`
`
`Raymond N. Nimrod
`Matthew A. Traupman
`QUINN EMANUEL URQUHART & SULLIVAN, LLP
`51 Madison Ave., 22nd Floor
`New York, NY 10010
`raynimrod@quinnemanuel.com
`matthewtraupman@quinnemanuel.com
`
`Katherine A. Helm
`SIMPSON THACHER & BARTLETT LLP
`425 Lexington Avenue
`New York, NY 10017
`khelm@stblaw.com
`
`/Owen K. Allen/
`Owen K. Allen
`Reg. No. 71,118
`Wilmer Cutler Pickering Hale and Dorr LLP
`950 Page Mill Road
`Palo Alto, CA 94304
`
`3
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