throbber
Trials@uspto.gov
`571.272.7822
`
`
` Paper: 69
` Date: July 23, 2024
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`SAMSUNG BIOEPIS CO., LTD., CELLTRION, INC., and
`BIOCON BIOLOGICS INC.,
`Petitioners,
`
`v.
`
`REGENERON PHARMACEUTICALS, INC.,
`Patent Owner.
`____________
`
`IPR2023-008841
`Patent 11,253,572 B2
`____________
`
`
`Before SUSAN L. C. MITCHELL, ROBERT A. POLLOCK, and
`RYAN H. FLAX, Administrative Patent Judges.
`
`FLAX, Administrative Patent Judge.
`
`
`
`ORDER
`Entry of Adverse Judgment After Institution of Trial
`37 C.F.R. §§ 43.72, 42.73(b)
`
`
`
`
`
`1 IPR2024-00260 and IPR2024-00298 are joined with IPR2023-00884. See
`Papers 31 and 33.
`
`

`

`IPR2023-00884
`Patent 11,253,572 B2
`
`
`INTRODUCTION
`I.
`Regeneron is the owner of U.S. Patent 11,253,572 B2 (Ex. 1001, “the
`’572 patent”). Paper 5, 1. On April 27, 2023, Samsung filed a Petition for
`inter partes review challenging the patentability of claims 1–30 (all claims)
`of the ’572 patent. Paper 2, 1 (“Pet.”). Trial was instituted on November
`17, 2023. Paper 13. Subsequently, on December 14, 2023, Celltrion, Inc. in
`IPR2024-00260, and on December 18, 2023, Biocon Biologics Inc. in
`IPR2024-00298, each respectively filed a petition for inter partes review
`also challenging the patentability of claims 1–30 of the ’572 patent, and filed
`motions for joinder with IPR2023-00884. Papers 31 and 33. The trials were
`instituted and the motions for joinder were granted. Id.
`We have not yet made a final determination in this proceeding.
`II. ANALYSIS
`On July 10, 2024, via email to the Board, Patent Owner stated the
`following:
`Counsel for Patent Owner writes to notify the Board that Patent
`Owner has filed a Disclaimer under 37 CFR 1.321(a),
`disclaiming claims 1-30 in U.S. Patent No. 11,253,572 that are
`the subject of IPR2023-00884. The Disclaimer was filed via
`Patent Center with the U.S. Patent and Trademark Office today
`and is attached. As a result of the disclaimer, no challenged
`claims remain and Patent Owner therefore requests
`termination of the proceedings. Please advise whether any
`additional filings should to be made or any further steps taken
`to request termination of the present proceeding.
`Ex. 3004 (emphasis added). A copy of this Disclaimer, dated July 10, 2024,
`is entered into the record as Exhibit 3005.
`Under 37 C.F.R. § 42.72, “[t]he Board may terminate a trial without
`rendering a final written decision, where appropriate . . . .” Further,
`
`2
`
`

`

`IPR2023-00884
`Patent 11,253,572 B2
`
`37 C.F.R. § 42.73(b)(1) and (2) together state that, “[a] party may request
`judgment against itself at any time during a proceeding. Actions construed
`to be a request for adverse judgment include . . . [d]isclaimer of the involved
`application or patent [and] [c]ancellation or disclaimer of a claim such that
`the party has no remaining claim in the trial.” Thus, in disclaiming every
`claim in the ’572 patent, Patent Owner has constructively requested adverse
`judgement. Ex. 3005.
`We grant Patent Owner’s request.
`Several exhibits filed in this proceeding were done so under seal as
`they were identified to contain confidential subject matter. Within 60 days,
`each party shall assemble all copies of all confidential information it has
`received, including confidential information provided to its representatives
`and experts, and shall return or destroy the confidential information and
`provide a certification of destruction to the party who produced the
`confidential information. See Board’s Consolidated Trial Practice Guide, 84
`Fed. Reg. 64,280, at 115 (Nov. 19, 2019).
`III. ORDER
`For the foregoing reasons, it is
`ORDERED that Patent Owner’s request for adverse judgment in this
`proceeding is granted;
`FUTHER ORDERED that adverse judgment is hereby entered
`against Patent Owner pursuant to 37 C.F.R. § 42.73(b) with respect to claims
`1–30 of U.S. Patent 11,253,572 B2 and the proceeding is thereby terminated;
`FURTHER ORDERED that Patent Owner shall file a notice and
`copy of this judgment in any proceeding or action involving the ’572 patent;
`
`3
`
`

`

`IPR2023-00884
`Patent 11,253,572 B2
`
`
`FURTHER ORDERED that, pursuant to 37 C.F.R. § 42.73(d),
`Patent Owner is precluded from taking any action inconsistent with this
`judgment, including obtaining any patent claim that is not patentably distinct
`from the claims of the ’572 patent; and
`FURTHER ORDERED that the parties shall return or dispose of
`received confidential information within 60 days.
`
`
`
`4
`
`

`

`IPR2023-00884
`Patent 11,253,572 B2
`
`
`
`For PETITIONER SAMSUNG BIOEPIS CO., LTD.:
`
`Raymond N. Nimrod
`Matthew A. Traupman
`Landon Andrew Smith
`QUINN EMANUEL URQUHART & SULLIVAN LLP
`raynimrod@quinnemanuel.com
`matthewtraupman@quinnemanuel.com
`landonsmith@quinnemanuel.com
`qe-samsungbioepis@quinnemanuel.com.
`
`
`For PETITOINER CELLTRION, INC.:
`
`Lora Green
`Yahn Lin Chu
`GEMINI LAW LLP
`lgreen@geminilaw.com
`fchu@geminilaw.com
`
`
`For PETITIONER BIOCON BIOLOGICS INC.:
`
`Paul Molino
`Jeffrey Marx
`Neil McLaughlin
`Steven Birkos
`Deanne Mazzochi
`Thomas Ehrich
`RAKOCZY MOLINO MAZZOCHI SIWIK LLP
`paul@rmmslegal.com
`jmarx@rmmslegal.com
`nmclaughlin@rmmslegal.com
`sbirkos@rmmslegal.com
`dmazzochi@rmmslegal.com
`tehrich@rmmslegal.com
`
`
`5
`
`

`

`IPR2023-00884
`Patent 11,253,572 B2
`
`
`For PATENT OWNER:
`
`Adam R. Brausa
`Rebecca Weires
`Kira Davis
`Daralyn Durie
`MORRISON & FOERSTER LLP
`ABrausa@mofo.com
`RWeires@mofo.com
`kiradavis@mofo.com
`ddurie@mofo.com
`
`
`
`6
`
`

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