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`Paper No. 2
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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
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`Patent No. 8,195,415
`Issued: June 5, 2012
`Filed: January 29, 2010
`Inventors: Hei-Mun Christina Fan, et al.
`Title: NONINVASIVE DIAGNOSIS OF FETAL ANEUPLOIDY BY
`SEQUENCING
`____________________
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`Inter Partes Review No. IPR2014-00337
`__________________________________________________________________
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`PETITIONER’S MOTION FOR JOINDER TO RELATED INSTITUTED
`INTER PARTES REVIEW
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`IPR2014-00337– Motion for Joinder
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`Pursuant to 35 U.S.C. § 315(c), 37 C.F.R. §§ 42.22 & 42.122(b), Petitioner
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`Sequenom, Inc. (“Sequenom” or “Petitioner”), hereby files this Motion for Joinder
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`with its Petition For Inter Partes Review (IPR2014-00337) of claims 1-17 of U.S.
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`Patent No. 8,195,415 (the “’415 Patent”). The motion seeks to join this Petition
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`with the inter partes review of the same patent, IPR2013-00390, that was instituted
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`on December 9, 2013. This motion and the petition are timely filed.
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`I.
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`Statement of Material Facts
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`1.
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`On June 27, 2012, Sequenom was served with a complaint alleging
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`infringement of the ’415 patent. That suit is currently pending in the U.S. District
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`Court for the Northern District of California, captioned Verinata Health, Inc., et al.
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`v. Sequenom, Inc., No. 3:12-cv-00865-SI (N.D. Ca.).
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`2.
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`On June 26, 2013, Sequenom filed a Petition for Inter Partes Review
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`of claims 1-17 of the ’415 patent, which was designated IPR2013-00390.
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`3.
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`In IPR2013-00390, Petitioner relied on published U.S. Patent
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`Application Publication No. 2009/0029377 to Lo et al. (“Lo II”) as a primary
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`reference to argue that the claims of the ’415 patent are anticipated and were
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`obvious in view of other prior art.
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`1
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`IPR2014-00337– Motion for Joinder
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`4.
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`In IPR2013-00390, Petitioner also relied on U.S. Provisional Patent
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`Application No. 60/951,438 to Lo et al. (“Lo I”) as a primary reference to argue
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`that the claims of the ’415 patent were obvious in view of other prior art.1
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`4.
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`On December 9, 2013, the Board instituted trial in IPR 2013-00390 on
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`all claims of the ’415 patent. See Ex. 1017 at 21. The grounds of unpatentability
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`that review was instituted on were based on the Lo II reference. See, e.g., id. The
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`Board denied as being “redundant” the asserted grounds of unpatentability based
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`on Lo I. Id.
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`5.
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`On December 23, 2013, in IPR2013-00390, Petitioner filed a Request
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`for Rehearing under 37 C.F.R. §§ 42.71(c) requesting reconsideration and
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`modification of the decision to institute review of the ’415 patent claims to include
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`the grounds of unpatentability based on Lo I. See, e.g., Ex. 1018 at 1-2.
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`6.
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`In the Request for Rehearing, Petitioner explained that Lo I has an
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`earlier filing date than Lo II and thus the grounds of unpatentability asserted based
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`on Lo I are not redundant to the instituted grounds based on Lo II. Id. at 7-10.
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`1 The Lo I reference is incorporated by reference by published U.S. Application
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`No. 2009/0029377 (Lo II), which makes that application prior art under 35 U.S.C.
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`102(e) as of the filing date of the Lo I provisional application (i.e., July 23, 2007)
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`as to the contents of the Lo I provisional application.
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`2
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`IPR2014-00337– Motion for Joinder
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`Petitioner also argued that the facts and arguments underlying the respective
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`grounds of unpatentability based on Lo I and the instituted grounds based on Lo II
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`are not redundant. Id. at 10-11.
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`7.
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`8.
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`The Board has not yet ruled on Petitioner’s Request for Rehearing.
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`IPR2014-00337 requests institution of inter partes review of the same
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`claims as those that are the subject of IPR2013-00390, relies on declaration
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`evidence from the same expert used in the -00390 proceeding, and advances claim
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`constructions that have already been advanced in the petition requesting the -00390
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`proceeding.
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`II. Argument
`Joinder Will Provide the Board with the Opportunity to Consider
`A.
`Highly Relevant Grounds of Unpatentability that Are Not
`Redundant to the Grounds of Institution in IPR2013-00390
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`Petitioner submits that joinder of this Petition with the instituted proceeding
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`IPR2013-00390 is fully warranted. See Abb Inc. v. Roy-G-BIV Corporation,
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`IPR2013-00286, Paper 14 at 4.
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`First, the present Petition involves the same parties, the same patent, the
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`same claims, and substantially similar, although not identical, grounds of
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`unpatentability. A joined proceeding that includes the grounds of the present
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`Petition can and should be conducted on the same schedule and will involve the
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`same parties as the existing instituted proceeding.
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`3
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`IPR2014-00337– Motion for Joinder
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`Second, joinder will serve the interests of justice as it will ensure that all
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`identified patentability questions related to the claims of the ’415 Patent will be
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`resolved in a single proceeding. In particular, joining the present Petition to the
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`existing proceeding will ensure that patentability issues raised by the related
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`teachings of Lo I and Lo II will be addressed in this single proceeding.
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`In instituting trial on the basis of the -00390 petition, the Board declined to
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`institute grounds based on the Lo I reference, finding Lo I to present grounds that
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`are redundant with the grounds the Board found to be sufficient based on the Lo II
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`patent. But the Lo I reference is not cumulative or redundant to Lo II, at least
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`because Lo I has a filing date of July 23, 2007, which is one year earlier than Lo
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`II’s filing date of July 23, 2008.
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`During the co-pending interference proceeding involving the ’415 patent and
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`applications of the Petitioner, i.e., Interference No. 105,922, the ’415 patent Patent
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`Owner represented that it intends to prove a conception date of December 18,
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`2007, for the subject matter of the count, which is claim 1 of the ’415 patent. Ex.
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`1014 at 2. This “priority statement” was filed on July 31, 2013, and was not
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`available to Petitioner when Petitioner filed its petition in IPR2013-00390. Id.
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`The December 18, 2007 conception date alleged by Patent Owner, if proven
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`with sufficient evidence, could antedate Lo II. But by identifying December 18,
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`2007 as its conception date in the concurrent ’922 interference proceeding, Patent
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`4
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`IPR2014-00337– Motion for Joinder
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`Owner has effectively conceded it cannot antedate Lo I’s filing date. Thus, the Lo
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`I reference is not cumulative to the Lo II reference for at least this reason, and the
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`grounds of unpatentability presented in this Petition based on the Lo I reference are
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`not redundant to the instituted grounds in IPR No. 2013-00390 based on Lo II.
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`These circumstances suggest that an unjust outcome is possible.
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`Specifically, the Board may ultimately not resolve the patentability issues that it
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`has found to exist for a number of claims based on the admittedly relatedly
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`teachings of the Lo I and Lo II references (i.e., if Patent Owner antedates the Lo II
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`reference). With respect to all the claims at issue in the instituted proceeding, the
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`only grounds authorized for trial by the Board are based on Lo II. Ex. 1017 at 21.
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`Comparable grounds for those claims are presented in the present Petition based on
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`the Lo I reference.
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`As noted, Petitioner has filed a Request for Reconsideration of the Board’s
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`decision not to institute in IPR2013-00390 based on Lo I. See Ex. 1018. Even if
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`the Board were to grant this Request, the grounds of unpatentability set forth in this
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`Petition are not redundant or cumulative to the grounds of unpatentability set forth
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`by Petitioner in IPR2013-00390 based on Lo I. Among other things, the
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`obviousness combinations set forth in the instant Petition include references, i.e.,
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`Richard E. Green, et al., “Analysis of one million base pairs of Neanderthal DNA,”
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`Nature Vol. 444:330-36 (2006) (“Green”) and Valery Tarasov et al., “Differential
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`5
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`IPR2014-00337– Motion for Joinder
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`Regulation of microRNAs by p53 Revealed by Massively Parallel Sequencing,”
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`Cell Cycle 6(13):1586-93 (2007) (“Tarasov”), that were not relied upon in support
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`of grounds for unpatentability in the earlier Petition. These additional references
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`are used in combinations as grounds of unpatentability for, among other things,
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`several of the dependent claims in the ’415 patent, and have publication dates that
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`are earlier than the publication and/or filing dates of several of the references that
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`formed the basis of combinations with Lo I in the earlier petition.
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`Joining this Petition with IPR2013-00390 will not prejudice Patent Owner.
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`For example, this Petition presents grounds on the same claims already authorized
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`for trial. In addition, the Board can manage the joined proceeding in a way that
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`does not impact scheduling or conduct of the proceedings as the parties are the
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`same. See Motorola Mobility LLC v. Softview, LLC, IPR2013-00256, Paper 10 at
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`2-3. Patent Owner’s discovery period has just commenced, and the same expert is
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`cited in both petitions, therefore any scheduling impact would be minimal.
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`Finally, Petitioner observes that if the Board grants the present joinder
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`motion, it would render moot the necessity of deciding Petitioner’s Request for
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`Rehearing. If joinder is authorized, Petitioner submits it would be proper to
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`consider the grounds and evidence based on Lo I as raised in this Petition, and to
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`not consider further the grounds based on Lo I as they were raised in IPR2013-
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`00390. This is because the present Petition includes all the grounds of
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`6
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`IPR2014-00337– Motion for Joinder
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`unpatentability based on Lo I raised in the earlier Petition, but adds additional
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`grounds as well.
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`B.
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`Joinder Is Authorized and Furthers the Statutory Purpose of
`Providing an Alternative Forum to Review Patentability
`The Board is authorized to join a properly filed Petition for Inter Partes
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`Review to an instituted inter partes review proceeding pursuant to 35 U.S.C. §
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`315(c). See, e.g., Dell Inc. v. Network-1 Security Solutions, Inc., IPR2013-00385,
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`Paper 17 at 2-6. Additionally, this request for joinder is timely under 37 C.F.R. §
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`42.122(b), and the time periods set forth in 37 C.F.R. § 42.101(b) and § 315(b) do
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`not apply to the Petition because it is accompanied by this request for joinder.
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`Joinder will further the statutory purpose of the inter partes review authority
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`and is justified in this case. It will enable the Board to efficiently review, in a
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`single proceeding, the patentability of all the claims in the ’415 Patent that have
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`been asserted against Sequenom based on highly pertinent prior art.
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`The joined proceeding also will further the statutory purpose of providing an
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`alternative forum to efficiently review the patentability of claims being asserted in
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`district court litigation, and will reduce the number of issues the district court must
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`ultimately address and minimize any duplication of effort by the Board and the
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`Court. See Comments, General Trial Rules, 77 Fed. Reg. 48663. In other words,
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`the Board will be able to issue a decision on the challenged claims that will have a
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`meaningful impact on the litigation without causing delay. See H.R. Rep. No. 112-
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`7
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`IPR2014-00337– Motion for Joinder
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`98, at 45 (2011) (discussing “time limits during litigation”); 157 Cong. Rec.
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`S1,326 (daily ed. Mar. 7, 2011) (statement of Sen. Sessions). Joining these
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`proceedings thus is perfectly consistent with the statutory purpose and design of
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`the inter partes review authority.
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`III. Conclusion
`For all of these reasons, Sequenom submits that joinder is warranted
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`between IPR2014-00337 and IPR2013-00390.
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`Dated: January 9, 2014
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`Respectfully Submitted,
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`/Jeffrey P. Kushan/
`Jeffrey P. Kushan (Reg No. 43,401)
`Sidley Austin LLP
`1501 K Street NW
`Washington, DC 20005
`jkushan@sidley.com
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`8
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`IPR2014-00337– Motion for Joinder
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`CERTIFICATE OF SERVICE
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`I hereby certify that on this 9th day of January 2014, a copy of this Motion
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`for Joinder, has been served in its entirety by Federal Express on the following
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`address for patent owner:
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`R. Danny Huntington
`Sharon E. Crane, Ph.D.
`Rothwell, Figg, Ernst & Manbeck, P.C.
`607 14th Street, NW, Suite 800
`Washington, DC 20005
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`Peters Verny, L.L.P.
`425 Sherman Avenue
`Suite 230
`Palo Alto, CA 94306
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`January 9, 2014
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`Respectfully submitted,
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`/Jeffrey P. Kushan/
`Jeffrey P. Kushan
`Reg. No. 43,401
`Attorney for Petitioner
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`Dated:
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