Trials@uspto.gov
`571-272-7822
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`Paper No. 25
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`Entered: May 8, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`BOEHRINGER INGELHEIM PHARMACEUTICALS, INC.,
`Petitioner,
`
`v.
`
`GENENTECH, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-02031
`Patent 6,407,213 B1
`____________
`
`
`
`Before SHERIDAN K. SNEDDEN, ZHENYU YANG, and
`ROBERT A. POLLOCK, Administrative Patent Judges.
`
`POLLOCK, Administrative Patent Judge.
`
`
`
`
`DECISION
`Granting Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71(d)
`
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`571-272-7822
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`
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`Paper No. 25
`
`Entered: May 8, 2018
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`BOEHRINGER INGELHEIM PHARMACEUTICALS, INC.,
`Petitioner,
`
`v.
`
`GENENTECH, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-02031
`Patent 6,407,213 B1
`____________
`
`
`
`Before SHERIDAN K. SNEDDEN, ZHENYU YANG, and
`ROBERT A. POLLOCK, Administrative Patent Judges.
`
`POLLOCK, Administrative Patent Judge.
`
`
`
`
`DECISION
`Granting Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`
`
`
`
`
`IPR2017-02031
`Patent 6,407,213 B1
`
`
`INTRODUCTION
`Boehringer Ingelheim Pharmaceuticals, Inc. (“Petitioner”) filed a
`Petition for an inter partes review of claims 1, 2, 4, 25, 29, 62–64, 66, 67,
`71, 69, 71–73, 75–78, 80, and 81 of U.S. Patent No. 6,407,213 B1 (“the ’213
`patent,” Ex. 1001) based on six asserted grounds. Paper 2, 4 (“Pet.”). On
`March 29, 2018, we instituted an inter partes review of a subset of the
`challenged claims under grounds 4 and 6. Paper 19, 24–25 (“Dec.”). On
`April 12, 2018, Petitioner filed a Request for Partial Rehearing of the
`Decision. Paper 23 (“Reh’g Req.”).
`For the following reasons, we grant Petitioner’s request.
`
`STANDARD OF REVIEW
`When rehearing a decision on institution, the Board reviews the
`decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An abuse
`of discretion occurs when a “decision was based on an erroneous
`conclusion of law or clearly erroneous factual findings, or . . . a clear
`error of judgment.” PPG Indus. Inc. v. Celanese Polymer Specialties
`Co., 840 F.2d 1565, 1567 (Fed. Cir. 1988) (citations omitted). The
`request must identify, specifically, all matters the party believes the
`Board misapprehended or overlooked. 37 C.F.R. § 42.71(d).
`
`
`
`2
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`IPR2017-02031
`Patent 6,407,213 B1
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`
`Ground
`
`Claim(s)
`
`DISCUSSION
`Petitioner asserted the following grounds of unpatentability (Pet. 4):
`
`Reference(s)
`
`
`1
`
`2
`
`3
`
`4
`
`5
`
`6
`
`1, 2, 25, 29, 63, 66,
`71, 75, 76, 78, 80, and
`81
`1, 2, 4, 29, 62–64, 80,
`and 81
`1, 2, 4, 25, 29, 62–64,
`66, 67, 69, 71, 72, 75,
`76, 78, 80, and 81
`1, 2, 4, 25, 29, 62, 64,
`66, 69, 71, 73, 75–78,
`80, and 81
`73 and 77
`
`63
`
` Basis
`
`§ 102 Kurrle1
`
`§ 102 Queen 19902
`
`§ 103 Kurrle and Queen 1990
`
`§ 102
`
`Jones3
`
`§ 103 Kurrle, Queen 1990, and
`Chothia & Lesk4
`Jones and Riechmann5
`
`§ 103
`
`We instituted an inter partes review to determine whether Jones
`anticipates claims 1, 2, 4, 25, 29, 62, 64, 66, 69, 71, 73, 75–78, 80, and 81 of
`
`1 Kurrle, et al., European Patent Application Publication No. 0403156,
`published December 19, 1990. Ex. 1071.
`2 Queen, et al., International Publication No. WO 90/07861, published July
`26, 1990. Ex. 1050.
`3 Jones et al., Replacing the complementarity-determining regions in a
`human antibody with those from a mouse, 321 Nature 522–525 (1986). Ex.
`1033.
`4 Chothia and Lesk, Canonical Structures for the Hypervariable Regions of
`Immunoglobulins, 196 J. MOL. BIOL. 901–17 (1987). Ex. 1062.
`5 Riechmann et al., Reshaping human antibodies for therapy, 332 Nature
`323–327 (1988). Ex. 1069.
`
`3
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`IPR2017-02031
`Patent 6,407,213 B1
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`the ’213 patent as set forth in ground 4. Dec. 24. With respect to ground 6,
`we instituted inter partes review to determine whether claim 63 was obvious
`over Jones and/or Jones and Riechmann. Id. at 24–25. In contrast, we
`exercised our discretion under § 325(d) to deny institution of grounds 1–3
`and 5, which are essentially identical to those already instituted in two co-
`pending proceedings involving other petitioners. Id. at 13. In explaining our
`decision, we stated “Petitioner could have sought to join the pending IPRs.
`It did not do so and the time for requesting joinder has expired.” Id.
`Petitioner now argues that we previously instituted inter partes
`reviews on Grounds 1–3, and 5 in IPR2017-01373 and IPR2017-01489 and
`should not use our discretion to deny meritorious grounds. Id. at 3.
`Petitioner further notes that, in light of our Decision, claims 67 and 72 are
`unchallenged on any ground in this proceeding. Id. at 1.
`On April 24, 2018, subsequent to the April 12, 2018 filing of
`Petitioner’s request for rehearing, the Supreme Court held that a decision to
`institute under 35 U.S.C. § 314 may not institute on less than all claims
`challenged in the petition. SAS Inst., Inc. v. Iancu, 2018 WL 1914661, at
`*10 (U.S. Apr. 24, 2018). The Office issued a Guidance on the Impact of
`SAS on AIA Trial Proceedings. See https://www.uspto.gov/patents-
`application-process/patent-trial-and-appeal-board/trials/guidance-impact-
`sas-aia-trial.
`Accordingly, and further to our Decision of March 29, 2018, we grant
`Petitioner’s partial rehearing request and institute an inter parte review on
`all challenged claims and all of the grounds presented in the Petition.
`The parties shall confer to discuss the impact, if any, of this Order on
`the current schedule. If, after conferring, the parties wish to otherwise
`4
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`IPR2017-02031
`Patent 6,407,213 B1
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`change the schedule beyond that permitted by stipulation under the
`scheduling order or submit further briefing, the parties must, within one
`week of the date of this Order, request a conference call with the panel to
`seek authorization for such changes or briefing.
`
`ORDER
`
`Accordingly, it is
`ORDERED that Petitioner’s Request for Partial Rehearing is granted;
`FURTHER ORDERED that an inter partes review is instituted on the
`following grounds:
`1. claims 1, 2, 25, 29, 63, 66, 71, 75, 76, 78, 80, and 81 as anticipated
`by Kurrle;
`2. claims 1, 2, 4, 29, 62–64, 80, and 81 as anticipated by Queen 1990;
`3. claims 1, 2, 4, 25, 29, 62–64, 66, 67, 69, 71, 72, 75, 76, 78, 80, and
`81 as obvious in view of Kurrle and Queen 1990;
`4. claims 1, 2, 4, 25, 29, 62, 64, 66, 69, 71, 73, 75–78, 80, and 81 as
`anticipated by Jones;
`5. claims 73 and 77 as obvious in view of Kurrle, Queen 1990, and
`Chothia & Lesk; and
`6. claim 63 as obvious in view of Jones and/or Jones and Riechmann.
`FURTHER ORDERED that Petitioner and Patent Owner shall confer
`to determine whether they desire any changes to the schedule not authorized
`by stipulation under the scheduling order in this case or any further briefing,
`and, if so, shall request a conference call with the panel to seek authorization
`for such changes or briefing within one week of the date of this Order.
`
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`5
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`IPR2017-02031
`Patent 6,407,213 B1
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`PETITIONER:
`Ire J. Levy
`Brian A. Fairchild
`Ira J. Levy
`GOODWIN PROCTER LLP
`ilevy@goodwinlaw.com
`bfairchild@goodwinlaw.com
`
`PATENT OWNER:
`David L. Cavanaugh
`Rebecca A. Whitfield
`WILMER CUTLER PICKERING HALE AND DORR LLP
`david.cavanaugh@wilmerhale.com
`Rebecca.Whitfield@wilmerhale.com
`
`Adam R. Brausa
`DURIE TANGRI LLP
`abrausa@durietangri.com
`
`
`
`6
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