Trials@uspto.gov
`571-272-7822
`
`
`
`
`
`
`
`
`
`
`
`
`
`
` Paper 23
`
`
` 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 IPR2017-02032
`Patent 6,407,213 B1
`____________
`
`
`
`Before SHERIDAN K. SNEDDEN, ZHENYU YANG, and
`ROBERT A. POLLOCK, Administrative Patent Judges.
`
`YANG, Administrative Patent Judge.
`
`
`
`
`DECISION
`Granting Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`
`
`
`
`
`
`
`
`
` Paper 23
`
`
` 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 IPR2017-02032
`Patent 6,407,213 B1
`____________
`
`
`
`Before SHERIDAN K. SNEDDEN, ZHENYU YANG, and
`ROBERT A. POLLOCK, Administrative Patent Judges.
`
`YANG, Administrative Patent Judge.
`
`
`
`
`DECISION
`Granting Petitioner’s Request for Rehearing
`37 C.F.R. § 42.71(d)
`
`
`
`
`
`
`
`
`
`
`
`IPR2017-02032
`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,
`69, 71–73, 75–78, 80, and 81 of U.S. Patent No. 6,407,213 B1 (“the ’213
`patent,” Ex. 1001). Paper 1 (“Pet.”). Petitioner challenged those claims
`under five obviousness grounds and one anticipation ground. Pet. 4. In a
`Decision, we instituted an inter partes review on the anticipation ground but
`denied the obviousness grounds. Paper 17 (“Dec.”). Petitioner filed a
`Request for Partial Rehearing of the Decision. Paper 21 (“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
`
`
`
`IPR2017-02032
`Patent 6,407,213 B1
`
`
`Claim(s)
`1, 2, 25, 29, 63, 66, 67,
`71–73, 75–78, 80, 81
`1, 2, 4, 25, 29, 62–64,
`66, 67, 69, 71–73, 75–
`78, 80, 81
`75–77
`
`75–77
`
`4, 62, 64, 69
`
`1, 2, 4, 25, 29, 62–64,
`66, 67, 69, 71, 73, 75–
`78, 80, 81
`
`2
`
`3
`
`4
`
`5
`
`6
`
`DISCUSSION
`In the Petition, Petitioner asserts the following grounds of
`unpatentability:
`Ground
`1
`
`Basis
`§ 103
`
`§ 103
`
`Reference(s)
`Queen 19891 and Protein
`Data Bank (PDB database)
`Queen 19902 and PDB
`database
`
`§ 103 Queen 1989, PDB database,
`and Tramontano3
`§ 103 Queen 1990, PDB database,
`and Tramontano
`§ 103 Queen 1989, PDB database,
`and Kabat 19874
`The ’101 patent5
`
`§ 102
`
`Pet. 4.
`
`
`1 Queen et al., A Humanized Antibody that Binds to the Interleukin 2
`Receptor, 86 PRO. NAT’L ACAD. SCI. 10029–33 (1989) (Ex. 1034).
`2 Queen et al., International Publication No. WO 90/07861 A1, published
`July 26, 1990 (Ex. 1050).
`3 Tramontano et al., Framework Residue 71 is a Major Determinant of the
`Position and Conformation of the Second Hypervariable Region in the VH
`Domains of Immunoglobulins, 215 J. MOL. BIOL. 175–82 (1990) (Ex. 1051).
`4 Kabat et al., Sequences of Proteins of Immunological Interest 4th Ed.,
`Tabulation and Analysis of Amino Acid and Nucleic Acid Sequences of
`Precursors, V-Regions, C-Regions, J-Chain, T-Cell Receptor for Antigen, T-
`Cell Surface Antigens (National Institutes of Health, Bethesda, Md.) (1987)
`(Ex. 1052).
`5 U.S. Patent No. 5,530,101, issued June 25, 1996 (Ex. 1136).
`3
`
`
`
`
`
`IPR2017-02032
`Patent 6,407,213 B1
`
`
`In the Decision, we institute an inter partes review to determine
`whether the ’101 patent anticipate 1, 2, 4, 25, 29, 62–64, 66, 67, 69, 71, 73,
`75–78, 80, and 81. Dec. 14. We, however, denied Petitioner’s challenges
`on the five obviousness grounds. Id. at 8. We explained:
`As Patent Owner correctly points out, Grounds 1–5 asserted in
`the Petition “are essentially identical to those already instituted
`in” IPR2017-01373 and IPR2017-01489. Prelim. Resp. 12–13.
`Petitioner filed this Petition before we issued the decisions
`instituting inter partes reviews in IPR2017-01373 and IPR2017-
`01489. Thus, Petitioner could have sought to join the pending
`IPRs. Yet, it did not do so. See 37 C.F.R. § 42.122. The time
`for requesting joinder has since expired. See id. As such, we
`exercise our discretion under § 325(d) and deny the Petition with
`respect to Grounds 1–5.
`
`Id.
`
`In its rehearing request, Petitioner argues that we previously instituted
`inter partes reviews on Grounds 1–5 in IPR2017-01373 and
`IPR2017-01489. Reh’g Req. 1. According to Petitioner, we should not use
`our discretion to deny meritorious grounds. Id. at 3. In addition, Petitioner
`points out that our Decision leaves claim 72 unchallenged. Id. at 1, 3.
`After Petitioner filed its rehearing request, 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, --- S. Ct. -
`----, 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.
`
`
`
`4
`
`
`
`IPR2017-02032
`Patent 6,407,213 B1
`
`
`We grant Petitioner’s partial rehearing request and institute an inter
`parte review on all of the 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 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, 67, 71–73, 75–78, 80, and 81 as
`obvious over the combination of Queen 1989 and PDB database;
`2. claims 1, 2, 4, 25, 29, 62–64, 66, 67, 69, 71–73, 75–78, 80, and 81
`as obvious over the combination of Queen 1990 and PDB
`database;
`3. claims 75–77 as obvious over the combination of Queen 1989,
`PDB database, and Tramontano;
`4. claims 75–77 as obvious over the combination of Queen 1990,
`PDB database, and Tramontano;
`
`
`
`5
`
`
`
`IPR2017-02032
`Patent 6,407,213 B1
`
`
`5. claims 4, 62, 64, and 69 as obvious over the combination of Queen
`1989, PDB database, and Kabat 1987; and
`6. claims 1, 2, 4, 25, 29, 62–64, 66, 67, 69, 71, 73, 75–78, 80, and 81
`as anticipated by the ’101 patent; and
`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.
`
`
`
`PETITIONER:
`Ire J. Levy
`Brian A. Fairchild
`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
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
