`Trials@uspto.gov Paper: 57
`571-272-7822
`Date: July 30, 2024
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`________________________________________
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________________________________
`SAMSUNG BIOEPIS CO. LTD and BIOCON BIOLOGICS INC.
`Petitioner(s),
`v.
`REGENERON PHARMACEUTICALS, INC.,
`Patent Owner.
`________________________________________
`IPR2023-00739
`Patent 10,888,601 B21
`________________________________________
`
`
`
`Before JOHN G. NEW, ROBERT A. POLLOCK, and RYAN H. FLAX,
`Administrative Patent Judges.
`
`NEW, Administrative Patent Judge.
`
`
`
`
`JUDGMENT
`Granting Adverse Judgment after Institution of Trial
`37 C.F.R. § 42.73(b)
`
`
`
`
`
`
`1 IPR2024-00201 has been joined with IPR2023-00739. A copy of this
`adverse judgment will be entered in IPR2024-00201.
`
`
`
`Case 1:24-cv-00053-TSK Document 23-2 Filed 08/02/24 Page 2 of 4 PageID #: 2801
`IPR2023-00739
`Patent 10,888,601 B2
`
`
`
`
`
`
`We instituted trial in this inter partes proceeding on October 20, 2023.
`Paper 9. On July 10, 2024, Patent Owner Regeneron Pharmaceuticals, Inc.
`(“Patent Owner”) communicated to the panel, via email, that it had filed a
`Disclaimer under 37 C.F.R. § 1.321(a), disclaiming claims 10–12, 17–19,
`21, 25–28, and 33 of U.S. Patent No. 10,888,601 B2, which are the
`remaining challenged claims of this inter partes review. See Ex. 3002.
`Patent Owner had previously disclaimed all of the other claims challenged in
`this proceeding. See Exs. 2001, 2002. A copy of the Disclaimer was
`attached to the email, it is of record before the Office, and it is entered as
`Exhibit 3003.
`Because no challenged claims now remain in this inter partes review,
`Patent Owner requested termination of the proceeding. Ex. 3002. Petitioner
`Samsung Bioepis Co. Ltd (“Petitioner”) subsequently addressed an email to
`the Board, requesting that the Board enter adverse judgment in this
`proceeding, in view of Patent Owner’s disclaimer of all challenged claims.
`Ex. 3004. Patent Owner has not expressly requested adverse judgment.
`Section 42.73 of our rules provides, in relevant part, that: “A party
`may request judgment against itself at any time during a proceeding.
`Actions construed to be a request for adverse judgment include: …
`(2) Cancellation or disclaimer of a claim such that the party has no
`remaining claim in the trial.” 37 C.F.R. § 42.73(b). According to our
`reviewing court, 37 C.F.R. § 42.73(b) gives the Board authority to construe a
`patent owner’s actions in disclaiming all challenged claims in an instituted
`trial as a request for an adverse judgment. Arthrex, Inc. v. Smith & Nephew,
`Inc., 880 F.3d 1345, 1349 (Fed. Cir. 2018).
`
`
`
`2
`
`
`
`Case 1:24-cv-00053-TSK Document 23-2 Filed 08/02/24 Page 3 of 4 PageID #: 2802
`IPR2023-00739
`Patent 10,888,601 B2
`
`
`
`
`
`
`In the present inter partes review, Patent Owner has disclaimed all
`challenged claims of the ’601 patent, such that there are none left to be
`contested by the Petition. We consequently view Patent Owner’s filing of
`the Disclaimer, removing the last of the challenged claims from this inter
`partes review, and its request for termination of the proceeding, as a
`constructive request for adverse judgment against itself under § 42.73(b).
`Arthrex, 880 F.3d at 1349. Because there are no challenged claims left for
`the Petition to contest in this proceeding, adverse judgment against Patent
`Owner is granted.
`
`
`ORDER
`
`Accordingly, it is
`ORDERED that Patent Owner’s constructive request for adverse
`judgment is granted and adverse judgment is entered under 37 C.F.R.
`§ 42.73(b) against Patent Owner with respect to all challenged claims of the
`’601 patent;
`FURTHER ORDERED that Patent Owner shall file a notice and copy
`of this judgment in any proceeding or action involving the ’601 patent; and
`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
`disclaimed claim 1 of the ’601 patent.
`
`
`
`
`
`
`
`
`3
`
`
`
`
`
`
`Case 1:24-cv-00053-TSK Document 23-2 Filed 08/02/24 Page 4 of 4 PageID #: 2803
`IPR2023-00739
`Patent 10,888,601 B2
`
`
`For PETITIONER:
`
`Raymond Nimrod
`Matthew Traupman
`Landon Smith
`QUINN EMANUEL URQUHART& SULLIVAN, LLP
`raynimrod@quinnemanuel.com
`matthewtraupman@quinnemanuel.com
`landonsmith@quinnemanuel.com
`
`
`For PATENT OWNER:
`
`Adam Brausa
`Rebecca Weires
`Kira Davis
`Daralyn Durie
`MORRISON & FOERSTER LLP
`abrausa@mofo.com
`rweires@mofo.com
`kiradavis@mofo.com
`ddurie@mofo.com
`
`
`
`4
`
`
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