Regeneron Pharmaceuticals, Inc.

Patent Trials and Appeals Board

Mar 15, 2022

PGR2021-00117 (P.T.A.B. Mar. 15, 2022)

Trials@uspto.gov Paper 16 571-272-7822 Entered: March 15, 2022 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD CELLTRION, INC., Petitioner, v. REGENERON PHARMACEUTICALS, INC., Patent Owner. PGR2021-00117 Patent 10,857,231 B2 Before ERICA A. FRANKLIN, JOHN G. NEW, and SUSAN L. C. MITCHELL, Administrative Patent Judges. NEW, Administrative Patent Judge. ORDER Denying Institution of Post-Grant Review 35 U.S.C. § 324 PGR2021-00117 Patent 10,857,231 B2 2 On March 14, 2022, one day before the statutory date for the Board’s Decision on Institution, Patent Owner Regeneron Pharmaceuticals Inc. (“Patent Owner”) notified the Board, via an email, that it intended that day to file a Notice of Disclaimer with the U.S. Patent and Trademark Office, disclaiming all claims of US 10,857,231 B2 (the “’231 patent”). Ex. 3002. Patent Owner also notified the Board that it had notified Petitioner Celltrion Inc. of its intentions in this respect. Id. Patent Owner subsequently filed its Notice of Disclaimer that same day. See Ex. 2048. In its email, Patent Owner stated that, in view of its statutory disclaimer of all of the claims of the ’231 patent, Patent Owner understood that the Board would terminate the proceeding and view the disclaimer as a request for adverse judgement in the present proceeding. Ex. 3002. Patent Owner has disclaimed all claims of the ’231 patent and paid the requisite fee. See Ex. 2048; see also 37 CFR § 1.321 (setting forth requirements for statutory disclaimer). Accordingly, we deny institution of the requested post-grant review. See 37 C.F.R. § 42.207(e) (“No post-grant review will be instituted based on disclaimed claims”); see also General Elec. Co. v. United Techs. Corp., IPR2017-00491, Paper 9 (PTAB July 6, 2017) (precedential) (denying institution of inter partes review under analogous rule 37 C.F.R. § 42.107(e) based on disclaimer) (“General Electric”). We decline to enter adverse judgement. We acknowledge that the Federal Circuit has construed Rule 42.73(b) as permitting the Board to enter adverse judgment when a patent owner cancels all claims prior to institution. See Arthrex, Inc. v. Smith & Nephew, Inc., 880 F.3d 1345, 1350 (Fed. Cir. PGR2021-00117 Patent 10,857,231 B2 3 2018). However, we do not read Arthrex or Rule 42.73(b) as necessarily requiring us to enter adverse judgment in this context. In the present instance, and consistent with Rule 42.207(e) and the Board’s precedential General Electric decision, we determine that a denial of institution is sufficient to dispose of this case. See also General Elec. Co. v. United Techs. Corp., IPR2019-01489, Paper 11 at 4-5 (Dec. 10, 2019) (denying institution based on disclaimer and declining authorization to file motion for adverse judgment); Google LLC v. Jenam Tech LLC, PGR2021- 00082, Paper 8 at 2 n.1 (Nov. 17, 2021) (denying institution based upon disclaimer and declining petitioner’s request to file additional briefing regarding adverse judgment); Kymera Therapeutics, Inc. v. Dana-Farber Cancer Institute, Inc., PGR2021-00115, Paper 13 at 3 (March 2, 2022) (denying institution based upon disclaimer of all claims of the challenged patent). We consequently deny institution of post-grant review. ORDER It is therefore ORDERED that no post-grant review is instituted. PGR2021-00117 Patent 10,857,231 B2 4 For PETITIONER: E. Anthony Figg Brett A. Postal ROTHWELL, FIGG, ERNST & MANBECK, P.C. efigg@rfem.com bpostal@rfem.com For PATENT OWNER: Deborah E. Fishman Alice S. Ho ARNOLD & PORTER KAYE SCHOLER LLP Deboarh.Fishman@apks.com Alice.Ho@arnoldporter.com