Celltrion, Inc.v.Genentech, Inc.

Patent Trial and Appeal BoardOct 6, 2015

12052606 (P.T.A.B. Oct. 6, 2015)

Trials@uspto.gov Paper 12 571-272-7822 Entered: October 6, 2015 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ CELLTRION, INC. Petitioner, v. GENENTECH, INC., Patent Owner. ____________ Case IPR2015-01733 (Patent 7,976,838) Case IPR2015-01744 (Patent 7,820,161)1 ____________ Before FRANCISCO C. PRATS, ERICA A. FRANKLIN, and SHERIDAN K. SNEDDEN, Administrative Patent Judges. FRANKLIN, Administrative Patent Judge. DECISION Dismissing Petitions and Terminating Proceedings 37 C.F.R. Â§ 42.5(a); 37 C.F.R. Â§ 42.71(a) 1 This decision addresses issues that are identical in the two cases. We, therefore, exercise our discretion to issue one order to be filed in each case. IPR2015-01733 (Patent 7,976,838) IPR2015-01744 (Patent 7,820,161) 2 With authorization of the Board, Paper 10,2 Petitioner filed in each of the instant proceedings an Unopposed Motion to Dismiss, Paper 11. In each motion, Petitioner requests dismissal of the pending petition, Paper 2, without prejudice, and termination of the proceeding. Paper 11, 1. Additionally, in each motion, Petitioner requests that its motion for joinder, Paper 3, with IPR2015-00415 and IPR2015-00417, now terminated, be dismissed as moot. Id. Each of the instant proceedings is in the preliminary stage. Patent Owner has not filed a preliminary response in either proceeding,3 and we have not considered the merits of the Petitions or the Motions for Joinder. Further, as Patent Owner has acknowledged, it does not object to Petitioner moving to dismiss the petitions and terminate the proceedings. Paper 10, 1. Under these circumstances, we determine that it is appropriate to dismiss the petitions without prejudice, to dismiss the joinder motions, and to terminate the proceedings. 37 C.F.R. Â§ 42.5(a); 37 C.F.R. Â§ 42.71(a). This Decision does not constitute a final written decision pursuant to 35 U.S.C. Â§ 318(a). Although the petitions in these proceedings are dismissed without prejudice, any subsequently filed petitions must comply with the statutory and regulatory requirements applicable to petitions. See, e.g., 35 U.S.C. Â§Â§ 322â€“325 and 37 C.F.R. Â§ 42.3. In other words, a dismissal without prejudice does not modify or otherwise alter the application of statutory and regulatory requirements to a filed petition, including the Boardâ€™s 2 Paper numbers referenced in this Decision are the same in each proceeding. 3 The Preliminary Response in each proceeding would not be due until the latter part of November 2015. IPR2015-01733 (Patent 7,976,838) IPR2015-01744 (Patent 7,820,161) 3 discretionary considerations when deciding whether to institute an inter partes review. ORDER In accordance with the foregoing, it is hereby: ORDERED that the Petitions in IPR2015-001733 and IPR2015- 001744 are dismissed without prejudice; and FURTHER ORDERED that the proceedings in IPR2015-001733 and IPR2015-001744 are terminated. PETITIONER: Elizabeth Holland Cynthia Harman GOODWIN PROCTER LLP eholland@goodwinprocter.com chardman@goodwinprocter.com PATENT OWNER: Jeffrey P. Kushan James A. High SIDLEY AUSTIN LLP IPRNotices@sidley.com jhigh@sidley.com Gary N. Frischling Keith A. Orso IRELL & MANELLA LLP Genentech/rituxanIPR@irell.com korso@irell.com

Celltrion, Inc. v. Genentech, Inc.