IPR2020-00327 (P.T.A.B. Oct. 14, 2020)

GlaxoSmithKline LLC

Patent Trials and Appeals BoardOct 14, 2020

IPR2020-00327 (P.T.A.B. Oct. 14, 2020)

Trials@uspto.gov Paper 23 571-272-7822 Entered: October 14, 2020 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ EPIZYME, INC., Petitioner, v. GLAXOSMITHKLINE LLC, Patent Owner. ____________ IPR2020-00327 Patent 9,562,041 B2 ____________ Before SHERIDAN K. SNEDDEN, JO-ANNE M. KOKOSKI, and RICHARD J. SMITH, Administrative Patent Judges. SNEDDEN, Administrative Patent Judge. JUDGMENT Granting Request for Adverse Judgment After Institution of Trial 37 C.F.R. § 42.73(b) IPR2020-00327 Patent 9,562,041 B2 2 I. INTRODUCTION Epizyme, Inc. (“Petitioner”) filed a Petition requesting inter partes review of claim 1 of U.S. Patent No. 9,562,041 B2 (the “’041 patent”). Paper 2 (“Petition”). On June 15, 2020, we instituted an inter partes review as to claim 1 of the ’041 patent, the only claim of the ’041 patent. Paper 10. At that time, we also entered a Scheduling Order that set September 8, 2020, as the due date for Patent Owner’s Response to the Petition and any motion to amend the ’041 patent. Paper 11. However, Patent Owner did not file its response or a motion to amend on or before September 8, 2020. On September 10, 2020, counsel for Patent Owner forwarded an email to the Board indicating Patent Owner’s election to file a statutory disclaimer disclaiming the sole claim (claim 1) in the ’041 patent. Ex. 3001. On September 11, 2020, counsel for Petitioner forwarded an email to the Board requesting entry of adverse judgment against Patent Owner pursuant to 37 C.F.R. § 42.73(b), further stating that Patent Owner agreed that entry of adverse judgment against Patent Owner was the appropriate mechanism for terminating this proceeding. Id. On September 14, 2020, we authorized Patent Owner to file a request for adverse judgment in this case. Id. On September 29, 2020, Patent Owner filed a Request for Adverse Judgment Under 37 C.F.R. § 42.73(b)(2). Paper 22. Patent Owner also submitted a copy of the Statutory Disclaimer in the ’041 patent “disclaiming the only claim of the patent.” Id. at 1; Ex. 2001. II. DISCUSSION Under 37 C.F.R. § 42.73(b), “[a] party may request judgment against itself at any time during a proceeding.” As permitted by this Rule, Patent Owner has explicitly asked the Board to enter adverse judgment against Patent Owner under 37 C.F.R. § 42.73(b)(2), viz., “[c]ancellation or IPR2020-00327 Patent 9,562,041 B2 3 disclaimer of a claim such that the party has no remaining claim in the trial.” Paper 22. Claim 1 is the only claim at issue in this proceeding. See Paper 10, 2, 21. III. CONCLUSION Having reviewed Patent Owner’s request for adverse judgment, we determine that entry of judgment against Patent Owner is appropriate. Thus, we grant the request for adverse judgment pursuant to 37 C.F.R. § 42.73(b)(2). This constitutes a final written decision pursuant to 35 U.S.C. § 318(a) cancelling claim 1 of the ’041 patent. IV. ORDER Accordingly, it is ORDERED that adverse judgment is entered against Patent Owner pursuant to 37 C.F.R. § 42.73(b)(2); FURTHER ORDERED that claim 1 of the ’041 patent is cancelled; FURTHER ORDERED that this constitutes a Final Written Decision under 35 U.S.C. § 318(a); FURTHER ORDERED that Patent Owner shall file a notice and copy of this judgment in the files of any proceeding or action involving the ’041 patent; and FURTHER ORDERED that, pursuant to 37 C.F.R. § 42.73(d)(3), Patent Owner is precluded from taking any action inconsistent with this judgment, including obtaining any patent claim that is not patentably distinct from cancelled claim 1 in this proceeding. IPR2020-00327 Patent 9,562,041 B2 4 FOR PETITIONER: Edward R. Gates Richard F. Giunta Charles T. Steenburg WOLF, GREENFIELD & SACKS, P.C. EGates-PTAB@WolfGreenfield.com RGiunta-PTAB@WolfGreenfield.com Charles.Steenburg@WolfGreenfield.com FOR PATENT OWNER: Dorothy Whelan Mike Kane Chad Shear FISH & RICHARDSON P.C. whelan@fr.com kane@fr.com shear@fr.com Mark Rachlin Thomas Smith GLAXOSMITHKLINE mark.2.rachlin@gsk.com thomas.d.smith@gsk.com