Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`Paper No. 11
`Entered: July 16, 2014
`
`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 IPR2014-00337
`Patent 8,195,415 B2
`_______________
`
`
`Before LORA M. GREEN, FRANCISCO C. PRATS, and SCOTT E. KAMHOLZ,
`Administrative Patent Judges.
`
`PRATS, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`
`
`
`
`Tel: 571-272-7822
`
`
`
`Paper No. 11
`Entered: July 16, 2014
`
`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 IPR2014-00337
`Patent 8,195,415 B2
`_______________
`
`
`Before LORA M. GREEN, FRANCISCO C. PRATS, and SCOTT E. KAMHOLZ,
`Administrative Patent Judges.
`
`PRATS, Administrative Patent Judge.
`
`
`
`
`DECISION
`Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`
`
`
`
`
`Case IPR2014-00337
`Patent 8,195,415 B2
`
`
`I. INTRODUCTION
`
`A. Statement of the Case
`
`Sequenom, Inc. (“Petitioner”) filed a corrected Petition (Paper 5, “Pet.”)
`
`requesting inter partes review of all claims, claims 1–17, of U.S. Patent No.
`
`8,195,415 B2 (Ex. 1001, “the ’415 patent”). The Board of Trustees of the Leland
`
`Stanford Junior University (“Patent Owner”) did not file a Preliminary Response.
`
`We have jurisdiction under 35 U.S.C. § 314.
`
` The standard for instituting an inter partes review is set forth in 35 U.S.C.
`
`§ 314(a), which states:
`
`THRESHOLD.— The Director may not authorize an inter partes
`review to be instituted unless the Director determines that the
`information presented in the petition filed under section 311 and any
`response filed under section 313 shows that there is a reasonable
`likelihood that the petitioner would prevail with respect to at least 1 of
`the claims challenged in the petition.
`
`For the reasons below, we conclude that Petitioner has not established a
`
`reasonable likelihood that it would prevail in showing the unpatentability of at
`
`least one claim of the ’415 patent. Accordingly, we decline to institute an inter
`
`partes review. As a result, we also dismiss Petitioner’s Motion to join this
`
`proceeding with IPR2013-00390 (Paper 2) as moot.
`
`B. Related Proceedings
`
`We instituted trial for claims 1–17 of the ’415 patent in IPR2013-00390.
`
`Sequenom, Inc. v. Stanford Univ., Case IPR2013-00390 (PTAB Dec. 9, 2013)
`
`(Paper 7). The ’415 patent also is involved in Interference No. 105,922, declared
`
`on May 3, 2013. Fan v. Lo, Interference No. 105,922 (PTAB May 3, 2013) (Paper
`
`1). The ’415 patent also is asserted in a co-pending district court case, Verinata
`
`Health, Inc. v. Sequenom, Inc., Case No. 3:12-cv-00865-SI (N.D. Cal.). Pet. 3–4.
`
` 2
`
`
`
`
`
`
`
`Case IPR2014-00337
`Patent 8,195,415 B2
`
`
`II. ANALYSIS
`
`Petitioner proposes twelve grounds of unpatentability against claims 1–17 of
`
`the ’415 patent, all based on obviousness under 35 U.S.C. § 103(a). Pet. 5–6.
`
`Every proposed ground of unpatentability advanced by Petitioner relies on Lo I.1
`
`Id. Petitioner contends that Lo I “is a provisional U.S. patent application that is
`
`prior art to the ’415 patent under §§ 102(e)/103(a) as of its filing date for all it
`
`discloses.” Id. at 2 (citing Ex parte Yamaguchi, 88 USPQ2d 1606, 1612–1614
`
`(BPAI 2008)). 2
`
`We are not persuaded. Two types of documents may be relied upon under
`
`§ 102(e) to show that claims are unpatentable, “(1) an application for patent,
`
`published under section 122(b), . . . or (2) a patent granted on an application for
`
`patent.” 35 U.S.C. § 102(e). As a provisional application, Lo I is not a patent.
`
`Likewise, as a provisional application, Lo I is not “an application for patent,
`
`published under section 122(b).” To the contrary, § 122(b) states expressly that
`
`“[a]n application shall not be published if that application is . . . (iii) a provisional
`
`application filed under section 111(b) of this title.” 35 U.S.C. § 122(b)(2)(iii).
`
`Accordingly, because Lo I is undisputedly a provisional application filed under
`
`§ 111(b), Lo I is not “an application for patent, published under section 122(b),”
`
`and therefore, does not qualify as prior art under § 102(e).
`
`
`1 Lo et al., U.S. Provisional Patent Application 60/951,438 (filed July 23, 2007)
`(Ex. 1003).
`2 The application which issued as the ’415 patent, serial number 12/696,509, is a
`divisional application of serial number 12/560,708, which was filed on September
`16, 2009. Ex. 1001, 1. Accordingly, the versions of §§ 102(e) and 103(a) in effect
`before the Leahy-Smith America Invents Act (AIA) apply to the claims of the ’415
`patent. See AIA, Pub. L. No. 112-29, § 3(n)(1), 125 Stat. 293 (2011).
`
` 3
`
`
`
`
`
`
`
`Case IPR2014-00337
`Patent 8,195,415 B2
`
`
`
`
`The Board’s decision in Ex parte Yamaguchi, 88 USPQ2d 1606 (BPAI
`
`2008) does not persuade us to the contrary. In that case, the Board held that, under
`
`§ 102(e)(2), a patent that claimed the benefit of an earlier filed provisional
`
`application qualified as prior art, as of the filing date of the provisional application,
`
`for all commonly disclosed subject matter. Ex parte Yamaguchi, 88 USPQ2d at
`
`1612. Similarly, in In re Giacomini, 612 F.3d 1380, 1384–85 (Fed. Cir. 2010), the
`
`Federal Circuit held that a patent applied in a rejection under § 102(e)(2) was prior
`
`art as of the filing date of its corresponding provisional application for commonly
`
`disclosed subject matter. Thus, unlike the situation presently before us, the
`
`references at issue in Yamaguchi and Giacomini were patents, one of the two types
`
`of documents that qualify as prior art under § 102(e). In contrast, as discussed
`
`above, a provisional application does not qualify as prior art under either
`
`§ 102(e)(1) or § 102(e)(2).
`
`
`
`In sum, because Lo I is neither a patent nor an application for patent
`
`published under 35 U.S.C. § 122(b), we conclude that Lo I does not qualify under
`
`35 U.S.C. § 102(e) as prior art to the claims of the ’415 patent. Every ground of
`
`unpatentability advanced by Petitioner in the Petition under consideration herein
`
`relies on Lo I. Pet. 5-6. We are not persuaded, therefore, that Petitioner has shown
`
`a reasonable likelihood of prevailing on any of its challenges to the ’415 patent
`
`under consideration herein.
`
`III. CONCLUSION
`
`Upon consideration of the Petition, we are not persuaded, for the reasons
`
`discussed, that there is a reasonable likelihood that Petitioner would prevail on at
`
`least one alleged ground of unpatentability advanced in the Petition with respect to
`
`the claims of the ’415 patent.
`
` 4
`
`
`
`
`
`
`
`Case IPR2014-00337
`Patent 8,195,415 B2
`
`
`IV. ORDER
`
`It is
`
`ORDERED that the Petition is denied and no trial is instituted;
`
`FURTHER ORDERED that Petitioner’s motion for joinder is dismissed as
`
`
`
`
`
`moot.
`
`
`
`
`
`
`
` 5
`
`
`
`
`
`
`
`Case IPR2014-00337
`Patent 8,195,415 B2
`
`
`For PETITIONER:
`
`Michael J. Wise
`Patrick D. Morris, Ph.D.
`PERKINS COIE LLP
`mwise@perkinscoie.com
`pmorris@perkinscoie.com
`
`
`
`
`For PATENT OWNER:
`
`R. Danny Huntington
`Sharon E. Crane, Ph.D.
`ROTHWELL, FIGG, ERNST & MANBECK, P.C.
`dhuntington@rfem.com
`scrane@rfem.com
`
`
` 6
`
`
`
`
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
