Dana-Farber Cancer Institute, Inc.

Patent Trials and Appeals Board

Mar 2, 2022

PGR2021-00115 (P.T.A.B. Mar. 2, 2022)

Trials@uspto.gov Paper 13 571-272-7822 Entered: March 2, 2022 UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ KYMERA THERAPEUTICS, INC., Petitioner, v. DANA-FARBER CANCER INSTITUTE, INC., Patent Owner. _______________ PGR2021-00115 Patent 10,849,980 B2 _______________ Before ERICA A. FRANKLIN, CHRISTOPHER G. PAULRAJ, and CYNTHIA M. HARDMAN, Administrative Patent Judges. HARDMAN, Administrative Patent Judge. DECISION Denying Institution of Post-Grant Review Due to Disclaimer of All Challenged Claims 35 U.S.C. § 324; 37 C.F.R. § 42.207(e) PGR2021-00115 Patent 10,849,980 B2 2 I. INTRODUCTION Petitioner Kymera Therapeutics, Inc. filed a Petition requesting a post-grant review of all claims (claims 1-45) of U.S. Patent No. 10,849,980 B2 (“’980 patent,” Ex. 1001). Paper 1. Patent Owner Dana-Farber Cancer Institute, Inc. filed a Preliminary Response, together with a disclaimer of all claims of the ’980 patent, and requested that the Board deny the Petition due to the disclaimer. Paper 6 (“Prelim. Resp.”) 1; Ex. 2001 (disclaimer). With our authorization, the parties briefed whether the Board should enter adverse judgment against Patent Owner due to the disclaimer. Papers 7-9. We have authority under 35 U.S.C. § 324 and 37 C.F.R. § 42.4(a). For the reasons discussed below, we deny the Petition for post-grant review and decline to enter adverse judgment. II. ANALYSIS Patent Owner has disclaimed all claims of the ’980 patent and paid the requisite fee. See Ex. 2001; 37 CFR § 1.321 (setting forth requirements for statutory disclaimer). Accordingly, we must deny institution of the requested post-grant review. 37 C.F.R. § 42.207(e) (“No post-grant review will be instituted based on disclaimed claims.”); General Elec. Co. v. United Techs. Corp., IPR2017-00491, Paper 9 (PTAB July 6, 2017) (designated precedential on Sept. 9, 2019) (denying institution of inter partes review under analogous rule 37 C.F.R. § 42.107(e) based on disclaimer) (“General Electric”). Petitioner argues that pursuant to 37 C.F.R. § 42.73(b), we should construe Patent Owner’s disclaimer as a request for adverse judgment. Paper 8, 1. Petitioner correctly notes that in Arthrex, Inc. v. Smith & Nephew, Inc., 880 F.3d 1345, 1350 (Fed. Cir. 2018), the Federal Circuit PGR2021-00115 Patent 10,849,980 B2 3 construed Rule 42.73(b) to permit the Board to enter adverse judgment when a patent owner cancels all claims prior to institution. Id. However, we do not read Arthrex or Rule 42.73(b) as requiring us to enter adverse judgment in this context. Here, 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 on disclaimer and declining petitioner’s request to file additional briefing regarding adverse judgment). III. ORDER In consideration of the foregoing, it is hereby: ORDERED that no post-grant review is instituted. PGR2021-00115 Patent 10,849,980 B2 4 For PETITIONER: Amanda Antons Charles Hsu DECHERT LLP amanda.antons@dechert.com charles.hsu@dechert.com For PATENT OWNER: Christopher Schultz Daniel Clarke BURNS & LEVINSON LLP cschultz@burnslev.com dclarke@burnslev.com