Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 14
`Entered: January 13, 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 IPR2013-00390
`Patent 8,195,415 B2
`_______________
`
`
`Before LORA M. GREEN, FRANCISCO C. PRATS, and SCOTT E. KAMHOLZ,
`Administrative Patent Judges.
`
`PRATS, Administrative Patent Judge.
`
`
`
`
`DECISION
`Petitioner’s Request for Rehearing
`of Decision to Institute Inter Partes Review
`37 C.F.R. § 42.71
`
`
`
`
`
`SEQUENOM EXHIBIT 1019
`Sequenom v. Stanford
`IPR2014-00337
`
`
`Tel: 571-272-7822
`
`Paper 14
`Entered: January 13, 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 IPR2013-00390
`Patent 8,195,415 B2
`_______________
`
`
`Before LORA M. GREEN, FRANCISCO C. PRATS, and SCOTT E. KAMHOLZ,
`Administrative Patent Judges.
`
`PRATS, Administrative Patent Judge.
`
`
`
`
`DECISION
`Petitioner’s Request for Rehearing
`of Decision to Institute Inter Partes Review
`37 C.F.R. § 42.71
`
`
`
`
`
`SEQUENOM EXHIBIT 1019
`Sequenom v. Stanford
`IPR2014-00337
`
`
`
`Case IPR2013-00390
`Patent 8,195,415 B2
`
`
`I. STATEMENT OF THE CASE
`A. Statement of the Case
`On June 26, 2013, Sequenom, Inc. (“Sequenom”) filed a petition (“Pet.”) to
`institute an inter partes review of claims 1-17, of US Patent 8,195,415 B2 (“the
`’415 patent”; Ex. 1001). Paper 1. In a decision entered December 9, 2013, we
`instituted inter partes review of claims 1-17, based on a number of the grounds of
`unpatentability proposed in the petition. Paper 7 (“Decision”). Our Decision also
`denied institution as to a number of other grounds proposed in the petition, as
`being redundant in light of the grounds on which review was instituted. Id.
`In requesting rehearing, Sequenom contends that the denied grounds are not
`redundant as to the grounds on which review was instituted, and that review also
`should have been granted as to the grounds designated as redundant. Paper 9, 1-2
`(“Req. Reh’g”).
`For the reasons stated below, we deny Sequenom’s request to rehear the
`decision to institute inter partes review of claims 1-17 of the ’415 patent.
`
`II. STANDARD OF REVIEW
`When rehearing a decision on a petition to institute an inter partes review,
`the Board “will review the decision for an abuse of discretion.” 37 C.F.R.
`§ 42.71(c). The party requesting rehearing has the burden of showing the decision
`should be modified, and “[t]he request must specifically 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.” 37 C.F.R.
`§ 42.71(d).
`“An abuse of discretion occurs where the decision is based on an erroneous
`interpretation of the law, on factual findings that are not supported by substantial
`
` 2
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`Case IPR2013-00390
`Patent 8,195,415 B2
`
`evidence, or represents an unreasonable judgment in weighing relevant factors.”
`Lacavera v. Dudas, 441 F.3d 1380, 1383 (Fed. Cir. 2006), citing Star Fruits S.N.C.
`v. United States, 393 F.3d 1277, 1281 (Fed. Cir. 2005).
`
`III. ANALYSIS
`Sequenom contends that, while our Decision instituted review of claims 1-17
`on grounds of anticipation and obviousness based on the “Lo II” reference,1 we
`also should have instituted review on the proposed obviousness grounds based on
`the “Lo I” reference,2 because Lo I has an earlier filing date. Req. Reh’g 1.
`Sequenom explains that, because the earliest effective filing date of the ’415 patent
`is September 20, 2008, only two months after Lo II’s filing date, Sequenom,
`therefore, “included additional unpatentability 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 . . .
`.” Id. at 4-5.
`Thus, Sequenom contends, because evidence showing that Lo II is not prior
`art to the ’415 patent “might not eliminate the non-instituted unpatentability
`grounds 11-16 based on Lo I given Lo I’s one-year earlier effective prior art
`date . . ., [the] grounds of unpatentability based on Lo I and Lo II do not
`necessarily stand or fall together and are, therefore, not redundant grounds.” Id. at
`5. In particular, Sequenom contends, the Board “has held a distinction in effective
`filing dates to be a 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).” Id. at 6, citing Illumina, Inc. v. Trustees of Columbia Univ., IPR2012-
`0007, Paper 54, 13 (PTAB May 10, 2013).
`
`
`1 US Patent App. Pub. No. 2009/0029377 A1 (filed Jul. 23, 2008) (Ex. 1002).
`2 US Provisional Patent Application 60/951,438 (Ex. 1003).
`
` 3
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`Case IPR2013-00390
`Patent 8,195,415 B2
`
`Sequenom contends that our Decision “also overlooked that the disclosures
`of Lo I and Lo II differ and, accordingly, the facts and substantive arguments of
`grounds 11-16 based on Lo I differ from grounds 1-6 based on Lo II.” Req. Reh’g
`7. In particular, Sequenom notes, the instituted grounds based on Lo II included
`anticipation grounds, whereas the grounds based on Lo I included only
`obviousness grounds. Id. Thus, Sequenom, argues, because the issues involved in
`anticipation and obviousness “do not necessarily stand or fall together[,]” the
`grounds based on Lo I are not redundant to the proposed grounds based on Lo II.
`Id. at 8.
`Sequenom’s arguments do not persuade us that our Decision
`misapprehended any point of fact or law. As to the alleged different filing dates of
`Lo I and Lo II, as Sequenom itself acknowledges, see Pet. 37, Lo II expressly
`claims the benefit of Lo I under 35 U.S.C. § 119(e), and, indeed, incorporates by
`reference the entire contents of Lo I. Ex 1002 ¶ 1. Thus, Lo II has the same
`effective patent-defeating date as Lo I for disclosure that the two references have in
`common.
`Also, Sequenom does not direct us to any specific discussion in the petition
`explaining the relative strengths and weakness of the grounds based on Lo I
`compared to the grounds based on Lo II. Sequenom’s conjecture as to what
`evidence of prior invention Stanford might file is too speculative a basis on which
`to distinguish its challenges.
`
`IV. CONCLUSION
`Having considered Sequenom’s request for rehearing, we are not persuaded,
`for the reasons discussed, that Sequenom has shown that our Decision
`
` 4
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`
`
`Case IPR2013-00390
`Patent 8,195,415 B2
`
`misapprehended or overlooked any point of law or fact advanced in the petition,
`such that the Decision can be considered an abuse of discretion.
`
`V. ORDER
`For the reasons given, it is hereby ORDERED that Sequenom’s request for
`rehearing is denied.
`
`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
`
`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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