UNITED STATES PATENT AND TRADEMARK OFFICE
`
`__________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`__________
`
`REGENERON PHARMACEUTICALS, INC.,
`Petitioner
`
`v.
`
`NOVARTIS PHARMA AG,
`NOVARTIS TECHNOLOGY LLC,
`NOVARTIS PHARMACEUTICALS CORPORATION,
`Patent Owner
`
`__________
`
`Case IPR2021-00816
`Patent 9,220,631
`
`__________
`
`JOINT MOTION FOR THE APPOINTMENT OF COMMISSIONERS AND
`DIRECTION OF SUBMISSION OF HAGUE CONVENTION
`APPLICATION
`
`
`
`__________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`__________
`
`REGENERON PHARMACEUTICALS, INC.,
`Petitioner
`
`v.
`
`NOVARTIS PHARMA AG,
`NOVARTIS TECHNOLOGY LLC,
`NOVARTIS PHARMACEUTICALS CORPORATION,
`Patent Owner
`
`__________
`
`Case IPR2021-00816
`Patent 9,220,631
`
`__________
`
`JOINT MOTION FOR THE APPOINTMENT OF COMMISSIONERS AND
`DIRECTION OF SUBMISSION OF HAGUE CONVENTION
`APPLICATION
`
`
`
`Pursuant to the parties’ teleconference with the Board on February 24, 2022,
`
`Patent Owner Novartis Pharma AG, Novartis Pharmaceuticals Corporation, and
`
`Novartis Technology LLC (collectively, “Novartis”) and Petitioner Regeneron
`
`Pharmaceuticals, Inc. (“Regeneron”) jointly move the Board for entry of an order
`
`duly appointing as Commissioners the counsel for Novartis and Regeneron for the
`
`purpose of taking the voluntary testimony by oral deposition under oath via
`
`videoconference in Switzerland of two (2) Novartis witnesses, Marie Picci and
`
`Juergen Sigg, whom Regeneron intends to notice for deposition, who either live or
`
`work in Switzerland pursuant to Article 17 of the Hague Convention of 18 March
`
`1970 on Taking Evidence Abroad in Civil or Commercial Matters (the “Hague
`
`Convention”). The Board has authority to issue the requested order appointing
`
`commissioners under 37 C.F.R. §42.53(b). Testimony obtained from these two
`
`Novartis witnesses may also be used in the related proceeding, Novartis Pharma
`
`AG, et al. v. Regeneron Pharm., Inc., No. 3:20-CV-00690-DNH-CFH (N.D.N.Y.).
`
`Novartis has agreed to voluntarily obtain the Swiss authorization for the two
`
`Novartis witnesses in order for the parties to proceed pursuant to Article 17 of the
`
`Hague Convention.
`
`Novartis has submitted declarations from Ms. Picci (Ex. 2002) and Dr. Sigg
`
`(Ex. 2206), Novartis employees, in support of its Patent Owner Response (Paper
`
`
`
`35) and Contingent Motion to Amend (Paper 37). Regeneron has accordingly
`
`requested their depositions.
`
`Article 17 of the Hague Convention provides that “[i]n a civil or
`
`commercial matter, a person duly appointed as a commissioner for the purpose
`
`may, without compulsion, take evidence in the territory of a Contracting State in
`
`aid of proceedings commenced in the courts of another Contracting State if – (a) a
`
`competent authority designated by the State where the evidence is to be taken has
`
`given its permission either generally or in the particular case; and (b) he complies
`
`with the conditions which the competent authority has specified in the permission.
`
`Therefore, under Article 17 of the Hague Convention, the voluntary
`
`testimony, by deposition, of a witness located in Switzerland can be conducted by
`
`U.S. counsel as commissioners duly appointed by a U.S. court and authorized to
`
`proceed by the competent Swiss authorities. See Swiss Federal Office of Justice’s
`
`Guidelines, at p. 29,
`
`https://www.rhf.admin.ch/dam/rhf/en/data/zivilrecht/wegleitungen/wegleitung-
`
`zivilsachen-e.pdf.download.pdf/wegleitung-zivilsachen-e.pdf. The parties jointly
`
`request an order from the Board appointing counsel for the Parties as
`
`Commissioners to take the voluntary testimony of Novartis’s witnesses.
`
`Swiss law can prohibit the taking of evidence in Switzerland for purposes of
`
`a foreign civil proceeding absent compliance with treaties or international
`
`
`
`agreements. See, e.g., U.S. Embassy in Switzerland and Liechtenstein,
`
`https://ch.usembassy.gov/u-s-citizen- services/local-resources-of-u-s-
`
`citizens/living-in-ch/judicial-information/obtaining-evidence/ (last visited October
`
`12, 2021). Indeed, the Swiss Penal Code provides that: “any person who carries
`
`out activities on behalf of a foreign state on Swiss territory without lawful
`
`authority, where such activities are the responsibility of a public authority or public
`
`official, any person who carries out such activities for a foreign party or
`
`organisation, any person who facilitates such activities, is liable to a custodial
`
`sentence not exceeding three years or to a monetary penalty, or in serious cases to
`
`a custodial sentence of not less than one year.” See, e.g., Article 271 of the Swiss
`
`Penal Code, https://www.admin.ch/opc/en/classified-
`
`compilation/19370083/index.html. In particular, the Swiss Federal Office of
`
`Justice's Guidelines state that: "the conduct of a hearing by a foreign authority or
`
`foreign lawyers by video conference of witnesses or parties who are physically
`
`located in Switzerland constitutes an act by a public authority on Swiss territory,
`
`and as such is therefore illegal unless authorised.” See Swiss Federal Office of
`
`Justice’s Guidelines, at p. 33,
`
`https://www.rhf.admin.ch/dam/rhf/en/data/zivilrecht/wegleitungen/wegleitung-
`
`zivilsachen-e.pdf.download.pdf/wegleitung-zivilsachen-e.pdf. An act will be
`
`deemed “authorized” under the Swiss Penal Code if it is permitted under the law or
`
`
`
`a treaty concluded by Switzerland. In particular, acts performed within the
`
`framework of the Hague Convention, to which both the United States and
`
`Switzerland are parties (see Hague Conf. on Private Int’l Law, Status Table,
`
`http://www.hcch.net/index_en.php?act=conventions.status&cid=82 (last updated
`
`June 2021)) are ipso facto deemed “authorized.” Thus, to comply with Swiss law,
`
`Novartis must follow the Hague Convention in providing testimony in this matter
`
`with the prior authorization of the Swiss competent authorities.
`
`The parties respectfully request that the Board issue an order appointing the
`
`following counsel for Novartis and counsel for Regeneron as Commissioners
`
`pursuant to Article 17 of the Hague Convention:
`
`Counsel at Weil, Gotshal & Manges LLP (located at 767 Fifth Avenue New
`
`York, New York 10153; and 2001 M Street, Suite 600 Washington, DC 20036)
`
`for Petitioner Regeneron (Regeneron Pharmaceuticals, Inc., located at 777 Old
`
`Saw Mill River Road, Tarrytown, New York 10591, USA): Anish Desai;
`
`Elizabeth Weiswasser; Robert Vlasis; Christopher Pepe; Matthew Sieger and
`
`Andrew Gesior.
`
`Counsel at Allen & Overy LLP (located at 1221 Avenue of the Americas
`
`New York, NY 10020; and 1101 New York Ave, N.W. Washington, D.C. 20005)
`
`for Patent Owner Novartis (Novartis Pharma AG, Forum 1, Novartis Campus,
`
`4056 Basel, Switzerland; Novartis Pharmaceuticals Corporation, One Health
`
`
`
`Plaza, East Hanover, New Jersey, 07936, USA and Novartis Technology LLC,
`
`One Health Plaza, East Hanover, New Jersey, 07936, USA): Elizabeth Holland;
`
`William James and Daniel Margolis.
`
`Counsel at Bär & Karrer AG (located at Brandschenkestrasse 90, 8027
`
`Zurich, Switzerland) for Patent Owner Novartis (Novartis Pharma AG, Forum 1,
`
`Novartis Campus, 4056 Basel, Switzerland; Novartis Pharmaceuticals
`
`Corporation, One Health Plaza, East Hanover, New Jersey, 07936, USA and
`
`Novartis Technology LLC, One Health Plaza, East Hanover, New Jersey, 07936,
`
`USA): Dr. Andreas Länzlinger; and Martina Athanas.
`
`Similar requests were made and orders issued in (1) International Trade
`
`Commission Inv. No. 337-1207, Certain Pre-Filled Syringes for Intravitreal
`
`Injection and Components Thereof and (2) Novartis Pharma AG et al v.
`
`Regeneron Pharmaceuticals, Inc., No. 1:20-cv00690-DNH-CFH (N.D.N.Y.).
`
`Copies of those orders are attached as Exhibits 2330 and 2331.
`
`Therefore, the parties seek an order from the Board appointing the persons
`
`listed above as commissioners for the purpose of taking voluntary testimony by
`
`oral deposition under oath via videoconference in Switzerland. A proposed order
`
`is attached as Exhibit 2332. The signed order will be given to counsel at Bär &
`
`Karrer AG who will file it together with the necessary application for authorization
`
`from the relevant Swiss authorities.
`
`
`
`Date: March 3, 2022
`
`Respectfully submitted,
`
` By: /Elizabeth J. Holland/
`Elizabeth J. Holland (Reg. No. 47,657)
`ALLEN & OVERY LLP
`1221 Avenue of the Americas
`New York, NY 10020
`Tel: (212) 610-6300
`elizabeth.holland@allenovery.com
`
`William G. James (Reg. No. 55,931)
`ALLEN & OVERY LLP
`1101 New York Ave, N.W.
`Washington, D.C. 20005
`Tel: (202) 683-3800
`william.james@allenovery.com
`
`Linnea Cipriano (Reg. No. 67,729)
`GOODWIN PROCTER LLP
`The New York Times Building
`620 Eighth Avenue
`New York, NY 10018-1405
`Tel: 212-813-8800
`lcipriano@goodwinlaw.com
`
`Joshua Weinger (Reg. No. 73,198)
`GOODWIN PROCTER LLP
`100 Northern Avenue
`Boston MA 02210-1980
`Tel: 617-570-1000
`jweinger@goodwinlaw.com
`
`Attorneys for Patent Owner
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`A copy of this Joint Motion for the Appointment of Commissioners and
`
`Direction of Submission of Hague Convention Applications has been served on
`
`Petitioner’s attorneys of record as follows via electronic mail:
`
`Elizabeth Stotland Weiswasser
`Weil, Gotshal & Manges LLP
`767 Fifth Avenue
`New York, NY 10153
` T: 212-310-8022
`F: 212-310-8007
`elizabeth.weiswasser@weil.com
`USPTO Reg. No. 55,721
`
`Anish R. Desai
`Weil, Gotshal & Manges LLP
`767 Fifth Avenue
`New York, NY 10153
` T: 212-310-8730
`F: 212-310-8007
`anish.desai@weil.com
`USPTO Reg. No. 73,760
`
`Natalie Kennedy
`Weil, Gotshal & Manges LLP
` 767 Fifth Avenue
`New York, NY 10153
` T: 212-310-8730
`F: 212-310-8007
`natalie.kennedy@weil.com
`USPTO Reg. No. 68,511
`
`Andrew Gesior
`Weil, Gotshal & Manges LLP
` 767 Fifth Avenue
`New York, NY 10153
`
`
`
`
`
`
`
`
`
` T: 212-310-8730
`F: 212-310-8007
`andrew.gesior@weil.com
`USPTO Reg. No. 76,588
`
`
`Christopher M. Pepe
`Weil, Gotshal & Manges LLP
`2001 M Street, N.W., Suite 600
`Washington, D.C. 20036
`T: 202-682-7000
`F: 202-857-0940
`christopher.pepe@weil.com
`USPTO Reg. No. 73,851
`
`Regeneron.IPR.Service@weil.com
`
`Petra Scamborova
`Regeneron Pharmaceuticals, Inc.
`777 Old Saw Mill River Road
`Tarrytown, NY 10591
`T: 914-847-7611
`petra.scamborova@regeneron.com
`Admitted pro hac vice
`
`James T. Evans
`Regeneron Pharmaceuticals, Inc.
`777 Old Saw Mill River Road
`Tarrytown, NY 10591
`T: 914-847-7000
`james.evans@regeneron.com
`USPTO Reg. No. 64,377
`
`Attorneys for Regeneron Pharmaceuticals, Inc.
`
`
`
`
`
`
`
`
`
`
`
`Dated: March 3, 2022
`
`By:
`
`/Elizabeth J. Holland/
`Elizabeth J. Holland (Reg. No. 47,657)
`Lead Counsel for Patent Owners
`ALLEN & OVERY LLP
`1221 Avenue of the Americas
`New York, NY 10020
`Tel: (212) 610-6300
`elizabeth.holland@allenovery.com
`
`
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
