`Tel: 571-272-7822
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`Paper 12
` Entered: June 8, 2016
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`_______________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`_______________
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`GENZYME CORPORATION,
`Petitioner,
`
`v.
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`GENENTECH, INC. AND CITY OF HOPE,
`Patent Owner.
`_______________
`
`Case IPR2016-00460
`Patent 6,331,415 B1
`_______________
`
`
`Before LORA M. GREEN, ERICA A. FRANKLIN, and
`SUSAN L. C. MITCHELL, Administrative Patent Judges.
`
`GREEN, Administrative Patent Judge.
`
`
`DECISION
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`Institution of Inter Partes Review and Grant of Motion for Joinder
`37 C.F.R. § 42.108
`37 C.F.R. § 42.122(b)
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`
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`IPR2016-00460
`Patent No. 6,331,415 B1
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`I.
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`INTRODUCTION
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`Genzyme Corporation (“Petitioner” or “Genzyme”) filed a Petition
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`(Paper 2, “Pet.”) requesting an inter partes review of claims 1–4, 9, 11, 12,
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`14–20, and 33 of U.S. Patent No. 6,331,415 B1 (Ex. 1001, “the ’415
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`patent”). On February 26, 2016, Petitioner filed a Motion for Joinder (Paper
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`10, “Mot.”). The Motion for Joinder seeks to join this proceeding with
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`Sanofi-Aventis U.S. LLC and Regeneron Pharmaceuticals, Inc. v.
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`Genentech, Inc. and City of Hope, Case IPR2015-01624 (“the ’1624 IPR”).
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`Mot. 1. In response, Genentech Inc. and City of Hope (collectively “Patent
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`Owner” or “Genentech”) filed a Notice of Non-Opposition to Motion for
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`Joinder and Waiver of Preliminary Response. Paper 11.
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`For the reasons described below, we institute an inter partes review of
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`challenged claims 1–4, 11, 12, 14, 18–20, and 33, and grant Petitioner’s
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`Motion for Joinder.
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`II.
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`INSTITUION OF INTER PARTES REVIEW
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`The Petition in this proceeding asserts the same grounds as those on
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`which we instituted review in the ’1624 IPR. Specifically, based on the
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`Petition filed by Sanofi-Aventis U.S. LLC and Regeneron Pharmaceuticals,
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`Inc. (collectively “Sanofi-Aventis”), on February 5, 2016, we instituted a
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`trial in the ’1624 IPR on the following grounds:
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`2
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`IPR2016-00460
`Patent No. 6,331,415 B1
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`References
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`Bujard1 and Riggs & Itakura2
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`Bujard and Southern3
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`Basis
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`§ 103(a)
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`§ 103(a)
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`Claims Challenged
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`1, 3, 4, 11, 12, 14,
`19, and 33
`1, 2, 18, 20, and 33
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`Sanofi-Aventis U.S. LLC and Regeneron Pharmaceuticals, Inc. v.
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`Genentech, Inc. and City of Hope, Case IPR2015-01624, slip. op. at 26
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`(PTAB February 5, 2016) (Paper 15).
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`Petitioner proposes an order in its Motion for Joinder in which the
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`instant inter partes review is instituted only on the grounds for which inter
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`partes review was instituted in the ’1624 IPR. Mot. 8. In view of the fact
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`that the challenges presented by the instant Petition and in the petition in the
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`‘1624 IPR are identical, see Mot. 3, we institute an inter partes review in
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`this proceeding on the same grounds and for the same reasons as those on
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`which we instituted the ’1624 IPR. We do not institute inter partes review
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`on any other grounds or as to any additional claims.
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`III. GRANT OF MOTION FOR JOINDER
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`An inter partes review may be joined with another inter partes
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`review, subject to the provisions of 35 U.S.C. § 315(c), which governs
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`joinder of inter partes review proceedings:
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`1 Bujard et al., US 4,495,280, issued Jan. 22, 1985 (“Bujard”) (Ex. 1002).
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`2 Arthur D. Riggs and Keiichi Itakura, Synthetic DNA and Medicine, 31 AM.
`J. HUM. GENET., 531–538 (1979) (“Riggs & Itakura”) (Ex. 1003).
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`3 P.J. Southern and P. Berg, Transformation of Mammalian Cells to
`Antibiotic Resistance with a Bacterial Gene Under Control of the SV40
`Early Region Promoter, 1 J. MOLECULAR AND APPLIED GENETICS 327–341
`(1982) (“Southern”) (Ex. 1004).
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`3
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`IPR2016-00460
`Patent No. 6,331,415 B1
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`(c) JOINDER.—If the Director institutes an inter partes review,
`the Director, in his or her discretion, may join as a party to that
`inter partes review any person who properly files a petition under
`section 311 that the Director, after receiving a preliminary
`response under section 313 or the expiration of the time for filing
`such a response, determines warrants the institution of an inter
`partes review under section 314.
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`As the moving party, Genzyme bears the burden of proving that it is
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`entitled to the requested relief. 37 C.F.R. § 42.20(c). A motion for joinder
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`should: (1) set forth the reasons joinder is appropriate; (2) identify any new
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`grounds of unpatentability asserted in the petition; and (3) explain what
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`impact (if any) joinder would have on the trial schedule for the existing
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`review. See Frequently Asked Question H5, http://www.uspto.gov/patents-
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`application-process/appealing-patent-decisions/trials/patent-review-
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`processing-system-prps-0 (last visited June 2, 2016).
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`The Petition in this proceeding has been accorded a filing date of
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`January 15, 2016 (Paper 3), which is before the date of institution in the
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`’1624 IPR, which was instituted on February 5, 2016 (’1624 IPR, Paper 15).
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`The Petition, therefore, satisfies the joinder requirement of being filed within
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`one month of our instituting a trial in the ’1624 IPR. 37 C.F.R. § 42.122(b).
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`
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`In its Motion for Joinder, Genzyme contends that the grounds asserted
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`in the instant Petition are the same grounds of unpatentability asserted in the
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`’1624 IPR. Mot. 1, 3, 8. Genzyme contends further that joinder is
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`appropriate as it will promote efficient resolution of the challenges to the
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`claims of the ’415 patent. Id. at 1. Genzyme represents that “joinder would
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`not affect the pending schedule in the Sanofi-Aventis IPR nor increase the
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`complexity of that proceeding, thereby minimizing costs,” stating that it
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`agrees to consolidated filings with Sanofi-Aventis. Id. at 1–2. Patent Owner
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`4
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`IPR2016-00460
`Patent No. 6,331,415 B1
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`does not oppose joinder, but lists several conditions that should be included
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`in the decision ordering joinder to which Genzyme has agreed, such as the
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`necessity for consolidated filing to avoid lengthy and duplicative briefing.
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`Paper 11, 1–3.
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`As discussed above, joinder is discretionary. In the instant
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`proceeding, we agree with Genzyme that joinder of the instant proceeding
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`with the ’1624 IPR would promote the efficient resolution of the
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`proceedings. Genzyme has brought the same challenges as presented by the
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`’1624 IPR, thus, the substantive issues in the ’1624 IPR would not be unduly
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`complicated by joining with the instant IPR. In particular, joinder merely
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`introduces the same grounds presented originally in the ’1624 IPR, where all
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`of the prior art asserted in this Petition is of record. In addition, Genzyme
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`agrees to be limited to the grounds on which trial was instituted in the
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`’1624 IPR. Mot. 8. Moreover, the instant proceeding was filed timely
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`before we instituted trial in the ’1624 IPR. Finally, Patent Owner will be
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`able to address the challenges in a single proceeding, promoting efficiency.
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`IV. ORDER
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`In view of the foregoing, it is
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`ORDERED that IPR2016-00460 is instituted and joined with
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`IPR2015-01624;
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`FURTHER ORDERED that the grounds on which IPR2015-01624
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`was instituted are unchanged and no other grounds are instituted in the
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`joined proceeding;
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`FURTHER ORDERED that the Scheduling Order entered in
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`IPR2015-01624 shall govern the schedule of the joined proceedings;
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`5
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`IPR2016-00460
`Patent No. 6,331,415 B1
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`FURTHER ORDERED that, throughout the joined proceeding,
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`Sanofi-Aventis or Genzyme will file papers, except for motions that do not
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`involve the other party, as a single, consolidated filing; that the filing party
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`(either Sanofi-Aventis or Genzyme) will identify each such filing as a
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`consolidated filing;
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`FURTHER ORDERED that, throughout the joined proceeding, Sanofi
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`and Genzyme will designate an attorney to conduct the cross-examination of
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`any witness produced by Patent Owner, as well as the redirect of any witness
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`produced by Sanofi-Aventis and Genzyme within the time provided by
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`37 C.F.R. § 42.53, and Genzyme will not receive any cross-examination or
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`redirect time separate from that of Sanofi-Aventis;
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`FURTHER ORDERED that IPR2016-00460 is terminated under
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`37 C.F.R. § 42.72, and all further filings in the joined proceedings are to be
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`made in IPR2015-01624;
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`FURTHER ORDERED that a copy of this Decision will be entered
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`into the record of IPR2015-01624; and
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`FURTHER ORDERED that the case caption in IPR2015-01624 shall
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`be changed to reflect joinder with this proceeding in accordance with the
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`attached example.
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`6
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`IPR2016-00460
`Patent No. 6,331,415 B1
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`FOR PETITIONER:
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`Richard McCormick
`rmccormick@mayerbrown.com
`
`Brian Nolan
`bnolan@mayerbrown.com
`
`Ferri Lisa
`lferri@mayerbrown.com
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`
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`FOR PATENT OWNER:
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`David Cavanaugh
`David.cavanaugh@wilmerhale.com
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`Heather M. Petruzzi
`Heather.petruzzi@wilmerhale.com
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`Adam R. Brausa
`abrasusa@durietangri.com
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`Jeffrey P. Kushan
`iprnotices@sidley.com
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`7
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`Example Case Caption for Joined Proceeding
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_______________
`
`SANOFI-AVENTIS U.S. LLC,
`REGENERON PHARMACEUTICALS, INC., AND,
`GENZYME CORPORATION,
`Petitioners,
`v.
`
`GENENTECH, INC. AND CITY OF HOPE,
`Patent Owners.
`_______________
`
`Case IPR2015-016241
`Patent 6,331,415 B1
`_______________
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`1 Case IPR2016-00460 has been joined with this proceeding.
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`8