`By: Steven P. O’Connor
`
`Michele C. Bosch
`FINNEGAN, HENDERSON, FARABOW,
` GARRETT & DUNNER, L.L.P.
`901 New York Avenue, NW
`Washington, DC 20001-4413
`Telephone: 202-408-4000
`Facsimile: 202-408-4400
`E-mail: steven.oconnor@finnegan.com
`
` michele.bosch@finnegan.com
`
`
`
`
` Paper No. ____
`Filed December 23, 2013
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________________
`
`SEQUENOM, INC.
`Petitioner
`
`v.
`
`THE BOARD OF TRUSTEES OF
`THE LELAND STANFORD JUNIOR UNIVERSITY
`Patent Owner
`____________________
`
`Case IPR2013-00390
`Patent 8,195,415
`____________________
`
`
`SEQUENOM REQUEST FOR REHEARING
`UNDER 37 C.F.R. § 42.71(c)
`
`
`
`
`
`TABLE OF CONTENTS
`
`I.
`
`II.
`
`INTRODUCTION ........................................................................................... 1
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`LEGAL STANDARD ..................................................................................... 2
`
`III. ARGUMENT ................................................................................................... 3
`
`A.
`
`B.
`
`Lo I Has an Earlier Filing Date Than Lo II, and thus
`Unpatentability Grounds 11-16 Based on Lo I Are Not
`Redundant to Instituted Grounds 1-6 Based on Lo II ........................... 4
`
`The Disclosures of Lo I and Lo II Differ, as do the Facts and
`Substantive Arguments Underlying Their Respective Grounds
`of Unpatentability, and thus Grounds 11-16 Based on Lo I Are
`Not Redundant to Instituted Grounds 1-6 Based on Lo II .................... 7
`
`IV. CONCLUSION ................................................................................................ 8
`
`
`
`i
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`
`
`
`TABLE OF AUTHORITIES
`
`Cases
`
`Garmin Int’l, Inc. v. Cuozzo Speed Techs. LLC,
` IPR2012-00001, (PTAB Nov. 13, 2013) ............................................................. 5
`
`Illumina, Inc. v. Trustees of Columbia Univ.,
` IPR2012-0007, (PTAB May 10, 2013)................................................................ 6
`
`Star Fruits S.N.C. v. United States,
` 393 F.3d 1277 (Fed. Cir. 2005) ........................................................................... 3
`
`Statutes
`
`35 U.S.C. § 102(g)(2) (former) .................................................................................. 5
`
`35 U.S.C. § 314(a) .................................................................................................2, 6
`
`Regulations
`
`37 C.F.R. § 42.108 .................................................................................................2, 6
`
`37 C.F.R. § 42.71(c) ...................................................................................... 1, 2, 3, 6
`
`37 C.F.R. § 42.71(d) .................................................................................................. 2
`
`ii
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`
`
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`I.
`
`INTRODUCTION
`On December 9, 2013, the Board instituted inter partes review (“IPR”) of all
`
`claims of U.S. Patent No. 8,195,415 (Ex. 1001, “the ’415 patent”)1 based on six of
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`the sixteen unpatentability grounds presented by Sequenom (“Petitioner”). Paper
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`7. Specifically, the Board instituted IPR of claims 1-17 of the ’415 patent on
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`grounds 1-6 based on Lo II (Ex. 1002). Paper 7 at 21-22.
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`The Board, however, declined to institute IPR on additional grounds
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`presented by Petitioner that were based not on Lo II, but on Lo I (Ex. 1003), a
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`reference with an earlier filing date and different disclosure than Lo II.
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`Specifically, the Board declined to authorize review on Petitioner’s asserted
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`grounds 11-16 based on Lo I, having a filing date of July 23, 2007, because those
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`grounds are allegedly redundant to instituted grounds 1-6 based on Lo II, having a
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`filing date of July 23, 2008. Paper 7 at 21. Yet, as explained by Petitioner,
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`because the Patent Owner may present evidence that Lo II is not prior art to the
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`’415 patent as of Lo II’s filing date (see Paper 1 at 5), grounds 11-16 based on Lo
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`I, having a one year-earlier filing date, are not redundant to the instituted grounds.
`
`
`
`
`1 All cited exhibits refer to the exhibits from Sequenom’s Petition for Inter Partes
`
`Review, Paper 1.
`
`
`
`Moreover, the disclosures of Lo II and Lo I differ, as do the facts and
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`substantive arguments upon which their respective unpatentability attacks rely.
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`And because the Patent Owner may, for example, present evidence that a claim
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`element is not present in the art cited for the instituted grounds based on Lo II,
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`when that same element is more clearly set forth in the art cited for the grounds
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`based on Lo I, grounds 11-16 based on Lo I are not redundant to the instituted
`
`grounds.
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`Petitioner therefore requests reconsideration by the Board under 37 C.F.R.
`
`§ 42.71(c) and modification of the Decision to Institute IPR of the ’415 patent
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`claims to include the additional grounds of unpatentability 11-16 based on Lo I.
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`II. LEGAL STANDARD
`
`An IPR will be “instituted for a ground of unpatentability” when the Board
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`decides that the evidence put forward in a petition “demonstrate[s] that there is a
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`reasonable likelihood that at least one of the claims challenged in the petition is
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`unpatentable.” 35 U.S.C. § 314(a); 37 C.F.R. § 42.108.
`
`Under 37 C.F.R. § 42.71(c), “[a] party may request rehearing on a decision
`
`by the Board on whether to institute a trial pursuant to paragraph (d) of this
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`section.” Section 42.71(d) provides in relevant part:
`
`A party dissatisfied with a decision may file a request for
`rehearing, without prior authorization from the Board. The
`burden of showing a decision should be modified lies with the
`party challenging the decision. The request must specifically
`2
`
`
`
`
`identify all matters the party believes the Board misapprehended
`or overlooked, and the place where each matter was previously
`addressed in a motion, an opposition, or a reply.
`
`A request for rehearing must be filed “[w]ithin 14 days of the entry of . . . a
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`decision to institute a trial as to at least one ground of unpatentability asserted in
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`the petition.” Id.
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`When rehearing a decision on petition, a panel reviews the decision for an
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`abuse of discretion. 37 C.F.R. § 42.71(c). “An abuse of discretion occurs where
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`the decision is based on an erroneous interpretation of the law, on factual findings
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`that are not supported by substantial evidence, or represents an unreasonable
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`judgment in weighing relevant factors.” Star Fruits S.N.C. v. United States, 393
`
`F.3d 1277, 1281 (Fed. Cir. 2005).
`
`III. ARGUMENT
`
`Petitioner’s unpatentability grounds based on Lo I are not redundant to those
`
`based on Lo II for two distinct reasons: Lo I has (1) an earlier filing date, and (2) a
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`different disclosure than Lo II. The Board first overlooked the potential
`
`significance of the different filing dates of the Lo I and Lo II references, and thus
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`legally erred in concluding that grounds 11-16 based on Lo I are redundant to
`
`instituted grounds 1-6 based on Lo II. The Board also overlooked the different
`
`disclosures of Lo I and Lo II, and thus overlooked the different facts and
`
`substantive arguments Petitioner relied upon in grounds 11-16 based on Lo I
`
`3
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`
`
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`compared to the instituted grounds. Accordingly, the Board abused its discretion
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`in declining to institute review of the ’415 patent claims on grounds 11-16, and
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`should modify its decision instituting IPR to authorize review on these additional
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`grounds.
`
`A. Lo I Has an Earlier Filing Date Than Lo II, and thus
`Unpatentability Grounds 11-16 Based on Lo I Are Not Redundant
`to Instituted Grounds 1-6 Based on Lo II
`
`By declining to institute IPR of the ’415 patent claims on grounds 11-16
`
`based on Lo I, the Board overlooked the significance of the earlier filing date of Lo
`
`I compared to Lo II, and thus erroneously concluded that unpatentability grounds
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`11-16 based on Lo I are redundant to the instituted grounds 1-6 based on Lo II.
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`Petitioner’s IPR petition sets forth sixteen grounds of unpatentability of the
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`’415 patent claims. Paper 1 at 4-5. Petitioner based grounds 1-10 on Lo II,
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`asserting that the claims of the ’415 patent are anticipated by Lo II or would have
`
`been obvious over Lo II in combination with other prior art. Id. at 4. Lo II has a
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`filing date of July 23, 2008. Ex. 1002 at 1; Paper 7 at 3 n. 2. The ’415 patent’s
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`earliest effective filing date is September 20, 2008, just two months after Lo II’s
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`filing date. Ex. 1001 at 1. Petitioner thus included additional unpatentability
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`grounds 11-16 based on Lo I, which has a priority date of July 23, 2007, a whole
`
`year earlier than Lo II’s filing date (Ex. 1003 at 91; Paper 7 at 4 n. 9), asserting that
`
`4
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`
`
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`the ’415 patent claims would have been obvious over Lo I in combination with
`
`other prior art. Paper 1 at 5.
`
`In adding unpatentability grounds 11-16 based on Lo I, Petitioner recognized
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`that the Patent Owner may be able to provide sufficient evidence to establish
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`priority of invention under 35 U.S.C. § 102(g)(2) (former) to antedate Lo II’s July
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`23, 2008, filing date,2 yet not to antedate Lo I’s earlier July 23, 2007, filing date.
`
`Such evidence may be presented by the Patent Owner in an IPR (see Garmin Int’l,
`
`Inc. v. Cuozzo Speed Techs. LLC, IPR2012-00001, slip op. 20-28 (PTAB Nov. 13,
`
`2013) (Paper 59) (Final Written Decision)), and might eliminate all unpatentability
`
`grounds based on Lo II, and thus all instituted grounds. But such evidence might
`
`not eliminate the non-instituted unpatentability grounds 11-16 based on Lo I given
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`Lo I’s one-year earlier effective prior art date. Accordingly, grounds of
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`unpatentability based on Lo I and Lo II do not necessarily stand or fall together and
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`are, therefore, not redundant grounds. The Board’s conclusion that grounds 11-16
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`are “redundant” of grounds 1-6 indicates that the Board overlooked the potential
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`significance of the different filing dates for Lo I and Lo II.
`
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`2 In fact, the ’415 patent and a Lo application that claims priority to Lo II are
`
`involved in an interference, Interference No. 105,922, declared on May 3, 2013.
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`Paper 1 at 1 n. 1.
`
`5
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`
`
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`Recognizing that different filing dates can preclude a decision of
`
`redundancy, the Board has held a distinction in effective filing dates to be a
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`legitimate reason to authorize review based on a reference having an earlier filing
`
`date in granting a request for rehearing under 37 C.F.R. § 42.71(c). Illumina, Inc.
`
`v. Trustees of Columbia Univ., IPR2012-0007, slip op. at 13 (PTAB May 10, 2013)
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`(Paper 54). In the present case, the Board determined that Petitioner’s alternative
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`grounds of unpatentability 11-16 are redundant to instituted grounds 1-6 without
`
`analyzing the different filing dates of Lo II and Lo I. But the same distinction in
`
`filing dates for which the Board modified its decision to institute IPR in Illumina
`
`applies here. And by stating that Petitioner’s alternative grounds 11-16 are
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`redundant, the Board appears to have acknowledged that grounds based on Lo I
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`would, like instituted grounds 1-6, also meet the standard required for the
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`institution of IPR. 35 U.S.C. § 314(a); 37 C.F.R. § 42.108.
`
`In Illumina, the Board granted rehearing and modified the instituted grounds
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`to substitute the earlier-filed reference for the later-filed one because Illumina’s
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`unpatentability challenges for both references relied on the same factual basis.
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`Illumina, IPR2012-0007, slip op. at 11-12, 18. In the present case, in contrast, as
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`explained in more detail below, Lo I is not substitutable for Lo II because the facts
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`and substantive arguments of unpatentability differ, with Lo II asserted as
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`anticipatory of certain claims and Lo I asserted based on obviousness. Paper 1 at
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`6
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`
`
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`4-5. Therefore, the Board should maintain the grounds under which it instituted
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`IPR of the ’415 patent, and modify its decision to additionally institute review of
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`the ’415 patent claims on Petitioner’s asserted grounds 11-16 based on Lo I.
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`B.
`
`The Disclosures of Lo I and Lo II Differ, as do the Facts and
`Substantive Arguments Underlying Their Respective Grounds of
`Unpatentability, and thus Grounds 11-16 Based on Lo I Are Not
`Redundant to Instituted Grounds 1-6 Based on Lo II
`
`By declining to institute IPR of the ’415 patent claims on unpatentability
`
`grounds 11-16 based on Lo I, the Board also overlooked that the disclosures of Lo
`
`I and Lo II differ and, accordingly, the facts and substantive arguments of grounds
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`11-16 based on Lo I differ from grounds 1-6 based on Lo II. Thus, for this distinct
`
`reason, grounds 11-16 are not redundant to the instituted grounds.
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`Petitioner asserts in unpatentability ground 1, based on Lo II, that certain
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`claims of the ’415 patent are anticipated by Lo II, that is, that Lo II teaches each
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`and every limitation of these claims. Paper 1 at 4. In contrast, Petitioner asserts in
`
`ground 11, based on Lo I, that these same claims would have been obvious over Lo
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`I in combination with other prior art. Id. at 5. Accordingly, unlike the instituted
`
`ground for these claims, which relies solely on Lo II’s disclosure, ground 11 relies
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`on the disclosure of Lo I and the disclosure of other cited prior art references.
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`Likewise, the obviousness combinations differ for grounds 12-16 based on Lo I
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`and grounds 2-6 based on Lo II. Id. at 4-5, 30-31, 37-46, 59.
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`
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`7
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`
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`Unsurprisingly, such anticipation and obviousness grounds are not redundant
`
`unpatentability grounds—they do not necessarily stand or fall together. For
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`example, the Patent Owner may be able to show that a claim element is not present
`
`in Lo II, and thus that Lo II does not anticipate or would not render obvious the
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`claims as asserted in the instituted grounds. This same claim element, however,
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`may be more clearly set forth in a reference combined with Lo I, and thus grounds
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`11-16 may independently establish unpatentability of the claims.
`
`In summary, the Board overlooked that the disclosures of Lo I and Lo II
`
`differ and, thus, that the Lo I and Lo II references have not been cited for the same
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`factual teachings. Accordingly, unpatentability grounds 11-16 based on Lo I are
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`not redundant to instituted grounds 1-6 based on Lo II for this second reason, and
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`the Board should, in addition to grounds 1-6, institute review of the ’415 patent
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`claims on Petitioner’s asserted grounds 11-16 based on Lo I.
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`IV. CONCLUSION
`For the foregoing reasons, the Board should reconsider its December 9,
`
`2013, decision and institute inter partes review of ’415 patent claims 1-17 on
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`8
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`
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`unpatentability grounds 11-16 based on Lo I in addition to instituted grounds 1-6
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`based on Lo II.
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`
`
` Respectfully submitted,
`
` Dated: December 23, 2013 By: /Steven P. O’Connor /
` Steven P. O’Connor
` Reg. No. 41,225
`
` Counsel for Party Lo
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`
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`9
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`CERTIFICATE OF SERVICE
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`I hereby certify that a true and correct copy of the foregoing “SEQUENOM
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`REQUEST FOR REHEARING UNDER 37 C.F.R. § 42.71(c)” was served by
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`electronic mail and Federal Express on this 23rd day of December 2013, upon the
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`lead and backup counsel of record for the Patent Owner as follows:
`
`
`
`R. Danny Huntington, Esq. (dhuntington@rothwellfigg.com)
`Sharon E. Crane, Ph.D. (scrane@rothwellfigg.com)
`Rothwell, Figg, Ernst & Manbeck, P.C.
`Suite 800
`607 14th Street, NW
`Washington, DC 20005
`
`By: /Steven P. O’Connor/
` Steven P. O’Connor
` Reg. No. 41,225
`
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