`
`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.: IPR2017-02140
`
`________________
`
`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 IPR2017-01489 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.”
`
`(IPR2017-02140, 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 IPR2017-02140 on the same grounds as in IPR2017-01489, and that this
`
`proceeding be joined with IPR2017-01489.
`
`
`
`
`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 IPR2017-01489 was served via electronic mail to Lead
`
`and Backup Counsel in this IPR, and on Lead and Backup Counsel for Petitioner in
`
`IPR2017-01489 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.
`
`
`
`
`
`
`
`
`
`
`