`
`Filed on behalf of Samsung Bioepis Co., Ltd.
`By: Dimitrios T. Drivas
`
`Scott T. Weingaertner
`
`White & Case LLP
`
`1221 Avenue of the Americas
`
`New York, New York 10020
`
`
`
`Filed: November 27, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`________________
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`________________
`
`
`SAMSUNG BIOEPIS CO., LTD., Petitioner,
`
`v.
`
`GENENTECH, INC., Patent Owner.
`
`________________
`
`United States Patent No. 6,407,213
`
`
`Case No.: IPR2017-02139
`
`________________
`
`PETITIONER’S REPLY TO PATENT OWNER’S
`OPPOSITION TO MOTION FOR JOINDER WITH IPR2017-01488
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Pursuant to 35 U.S.C. § 315(c) and 37 C.F.R. § 42.23, Petitioner Samsung
`
`Bioepis Co., Ltd. (“Bioepis” or “Petitioner”) submits this Reply to Patent Owner
`
`Genentech, Inc.’s (“Genentech” or “Patent Owner”) Opposition to Petitioner’s
`
`Motion for Joinder with pending IPR2017-01488 regarding U.S. Patent No.
`
`6,407,213 (the “’213 patent”).
`
`
`
`Pfizer Inc. (“Pfizer”) filed IPR2017-01488 and IPR2017-01489 on May 25,
`
`2017, regarding the ‘213 patent. Genentech filed preliminary responses to the
`
`petitions on September 5, 2017. The Board has not yet issued its decision on
`
`whether to institute inter partes review based on Pfizer’s petitions.
`
`On September 29, 2017, Bioepis filed IPR2017-02139 and IPR2017-02140
`
`on the same grounds raised by Pfizer in IPR2017-01488 and IPR2017-01489,
`
`respectively, and concurrently moved for joinder. Pfizer did not file an opposition
`
`to the motion for joinder. However, Genentech filed an opposition on October 27,
`
`2017, arguing that Bioepis must abide by certain conditions, allegedly to “ensure
`
`that [the IPR] runs efficiently, that any prejudice to Patent Owner is minimized,
`
`and that misunderstandings regarding Bioepis’s role are kept to a minimum.”
`
`(IPR2017-02139, Paper No. 7). In other words, Genentech did not oppose joinder
`
`per se. Rather, it seeks to limit Bioepis’s role in the proceeding for so long as the
`
`Pfizer IPR remains pending.
`
`
`
`1
`
`
`
`
`
`
`
`
`
`
`As explained in its motion for joinder, Bioepis has agreed to take a
`
`secondary role in the IPR and will coordinate with Pfizer for so long as Pfizer
`
`remains a party to the IPR. Accordingly, joinder will not impact trial or otherwise
`
`prejudice Genentech. To the contrary, joinder will promote efficiency and
`
`minimize the burden on Genentech and the Board, as compared to a distinct
`
`proceeding involving expert depositions and a separate oral hearing.
`
`Genentech’s proposed conditions for joinder are also unnecessary, and
`
`inappropriate, in light of Bioepis’s proposed role in the proceedings. For example,
`
`Bioepis does not anticipate any additional filings and has already agreed that it will
`
`not rely on its own experts unless Pfizer’s experts become unavailable. Joinder
`
`therefore should not have any impact on discovery deadlines or the oral hearing.
`
`Moreover, Genentech does not
`
`identify any
`
`specific “prejudice” or
`
`“misunderstandings” that could result absent implementation of its proposed
`
`conditions, and none are apparent. If anything, Genentech’s proposed conditions
`
`would deter petitioners from seeking joinder in future proceedings, which in turn
`
`can be expected to reduce significantly the overall efficiency of proceedings before
`
`the Board.
`
`
`
`For the foregoing reasons, Bioepis respectfully requests that the Board
`
`institute IPR2017-02139 on the same grounds as in IPR2017-01488, and that this
`
`proceeding be joined with IPR2017-01488.
`
`
`
`
`2
`
`
`
`
`
`
`
`
`
`
`Dated: November 27, 2017
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Respectfully submitted,
`
`/s/ Dimitrios T. Drivas .
`Dimitrios T. Drivas
`Reg. No. 32,218
`Scott T. Weingaertner
`Reg. No. 37,756
`
`Counsel to Petitioner
`Samsung Bioepis Co., Ltd.
`
`
`3
`
`
`
`
`
`
`
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6 and 42.105, I hereby certify that on this 27th
`
`day of November, 2017, the foregoing Reply to Patent Owner’s Opposition to
`
`Motion for Joinder with IPR2017-01488 was served via electronic mail to Lead
`
`and Backup Counsel in this IPR, and on Lead and Backup Counsel for Petitioner in
`
`IPR2017-01488 at the following E-mail addresses:
`
`
`
`David.Cavanaugh@wilmerhale.com
`Owen.Allen@wilmerhale.com
`Robert.Gunther@wilmerhale.com
`abrausa@durietangri.com
`ddurie@durietangri.com
`Andrew.Danford@wilmerhale.com
`Lisa.Pirozzolo@wilmerhale.com
`Kevin.Prussia@wilmerhale.com
`amanda.hollis@kirkland.com
`stefan.miller@kirkland.com
`benjamin.lasky@kirkland.com
`sarah.tsou@kirkland.com
`mark.mclennan@kirkland.com
`christopher.citro@kirkland.com
`
`
`Date: November 27, 2017
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Signed,
`
`/s/ Dimitrios T. Drivas .
`Dimitrios T. Drivas
`USPTO Reg. No. 32,218
`Scott T. Weingaertner
`Reg. No. 37,756
`
`Counsel for Petitioner
`Samsung Bioepis Co., Ltd.
`
`
`
`
`
`
`
`
`
`
`
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
