Trials@uspto.gov
`571-272-7822
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` Paper 21
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`Entered: February 27, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
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`SEQUENOM, INC.
`Petitioner
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`v.
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`THE BOARD OF TRUSTEES OF
`THE LELAND STANFORD JUNIOR UNIVERSITY
`Patent Owner
`____________
`
`Case IPR2013-00390
`Patent 8,195,415 B2
`____________
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`Before LORA M. GREEN, FRANCISCO C. PRATS, and SCOTT E. KAMHOLZ,
`Administrative Patent Judges.
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`GREEN, Administrative Patent Judge.
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`
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`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
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`
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`
`
`
`

`

`Case IPR2013-00390
`Patent 8,195,415 B2
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`An conference call was held on Friday, February 21, 2014, among R. Danny
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`Huntington, representing Patent Owner; Steven O’Connor, representing Petitioner;
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`and Judges Green, Prats, and Kamholz. A court reporter was present on the call,
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`and Petitioner has filed a transcript of the call as Exhibit 1014. 1
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`Patent Owner requested the call to discuss an extension of Due Date 1. In
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`particular, Patent Owner explained that it was seeking an extension of time to
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`obtain a deposition to cross-examine Dr. Stacey Bolk Gabriel. According to Patent
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`Owner, it had sent an e-mail to Petitioner seeking to schedule the deposition
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`around the interference hearing between the same parties being held at the
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`Board on Tuesday, February 25, 2014. Patent Owner had also submitted a string
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`of e-mails before the conference call demonstrating it had sought to
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`schedule a deposition to cross-examine Dr. Gabriel prior to the Due Date 1,
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`February 24, 2014, when the Patent Owner response was due. Petitioner
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`responded that Patent Owner had delayed in scheduling the deposition, waiting
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`until February 6, 2014, to reach out to Petitioner to schedule the deposition.
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`During the conference, the Board noted that Petitioner had relied heavily on
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`the Declaration of Dr. Gabriel in its Petition for Inter Partes Review. The Board
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`also noted that Patent Owner was not planning on filing a motion to amend, so that
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`there was room in the schedule to accommodate the deposition of Dr. Gabriel. The
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`parties were advised of the Board’s preference for the parties to reach an
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`agreement regarding the cross-examination of Dr. Gabriel, as well as the date for
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`filing of Patent Owner’s response. Additionally, in view of Petitioner’s heavy
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`reliance on Dr. Gabriel’s Declaration in support of its Petition, and the uncertainty
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`as to the amount of weight to be accorded to the Gabriel Declaration in the absence
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`1 This order summarizes the statements made during the conference call. A more
`detailed record may be found in the transcript.
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`
`
`2
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`

`

`Case IPR2013-00390
`Patent 8,195,415 B2
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`of cross-examination, the Board advised the parties that it would be in the interest
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`of justice as well as their mutual best interests to reach an agreement which would
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`enable the Board to receive and consider the testimony and cross-examination of
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`Dr. Gabriel.
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`Accordingly, it is:
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`ORDERED that the parties shall promptly endeavor to reach an agreement
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`as to a date for the cross-examination of Dr. Gabriel, as well as the date for Patent
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`Owner to file its response to the Petition (DUE DATE 1), and the date for
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`Petitioner to file its reply to Patent Owner’s response to the Petition (DUE
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`DATE 2);
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`FURTHER ORDERED, upon reaching such agreement, the parties shall file
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`a stipulation setting forth the proposed new dates for any and/or all of DUE
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`DATES 1-3.
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`For PETITIONER:
`Steven P. O’Connor
`Michele C. Bosch
`FINNEGAN, HENDERSON, FARABOW, GARRETT & DUNNER, L.L.P.
`steven.oconnor@finnegan.com
`michele.bosch@finnegan.com
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`
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`For PATENT OWNER:
`R. Danny Huntington
`Sharon E. Crane, Ph.D.
`ROTHWELL, FIGG, ERNST & MANBECK, P.C.
`dhuntington@rfem.com
`scrane@rfem.com
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`3
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