Filed on behalf of: Party Lo
`
`Paper _____
`Filed: April 21 [DRAFT], 2014
`
`By: Michele C. Bosch (michele.bosch@finnegan.com)
`Steven P. O’Connor (steven.oconnor@finnegan.com)
`FINNEGAN, HENDERSON, FARABOW,
`GARRETT & DUNNER, LLP
`901 New York Avenue, NW
`Washington, DC 20001-4413
`Telephone: 202-408-4000
`Facsimile: 202-408-4400
`
`Michael J. Wise (mwise@perkinscoie.com)
`PERKINS COIE LLP
`1888 Century Park East, Suite 1700
`Los Angeles, CA 90067
`Telephone: 310-788-3210
`Facsimile: 310-788-3399
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`___________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________
`
`HEI-MUN CHRISTINA FAN and STEPHEN QUAKE
`Junior Party
`(Patent 8,195,415)
`
`v.
`
`YUK-MING DENNIS LO, ROSSA WAI KWUN CHIU, and KWAN CHEE CHAN
`Senior Party
`(Application 13/070,266)
`
`___________________
`
`Patent Interference No. 105,922 (DK)
`(Technology Center 1600)
`___________________
`
`LO REQUEST FOR REHEARING
`
`SEQUENOM EXHIBIT 1023
`Sequenom v. Stanford
`IPR2014-00337
`
`

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`TABLE OF CONTENTS
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`I.
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`II.
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`III.
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`Statement of Relief Requested............................................................................. 1
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`Statement of Facts Relevant to the Request ........................................................ 2
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`Reasons Why the PTAB Should Grant the Requested Relief .............................. 4
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`A.
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`B.
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`The ’415 IPR will not consider unpatentability grounds under 35
`U.S.C. § 103 based on the ’438 provisional............................................... 4
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`The ’438 provisional and ’377 publication have different disclosures
`and filing dates and thus provide distinct unpatentability grounds ............. 5
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`IV.
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`Conclusion............................................................................................................ 7
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`ii
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`I.
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`Statement of Relief Requested
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`Party Lo (“Lo”) requests reconsideration of the PTAB’s Decision (Paper 101) and
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`Order (Paper 103) entered on 7 April 2014, which deny Lo authorization to renew its
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`request to file its deferred motion for judgment that the claims of Party Fan’s involved
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`U.S. Patent 8,195,415 (“the ’415 patent”) are unpatentable under 35 U.S.C. §§ 102 and
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`103 in view of the disclosure of two references: (1) U.S. Patent Application Publication
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`2009/0029377 (“the ’377 publication”), filed 23 July 2008, and (2) the ’377 publication’s
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`priority application, U.S. Provisional Application No. 60/951,438 (“the ’438 provisional”),
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`filed 23 July 2007, taken alone or in combination with one or more of the listed
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`references. See Paper 16, at 1-2.
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`In its Motions List, Lo sought authorization under 35 U.S.C. §§ 102 and 103
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`based on the ’377 publication, which is the published version of Lo’s parent application
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`12/178,181, filed 23 July 2008, priority of which has been accorded to Lo in this
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`interference, and Lo’s earlier-filed provisional application, the ‘438 provisional, priority of
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`which was not accorded to Lo. The statutory bases under 35 U.S.C. §102 and/or §103
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`for Lo’s arguments based upon these two references against the claims of the ’415
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`patent are distinct, as fully explained by Lo in co-pending IPR2013-00390 (“the ’415
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`IPR”).
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`Because the PTAB expressly denied institution in the ’415 IPR of Lo’s arguments
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`based upon the ’438 provisional, and because Party Fan (“Fan”) has asserted a
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`conception date in this interference as early as 18 December 2007, which would, if
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`proven, antedate the ’377 publication, but not the ’438 provisional, the PTAB should
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`reconsider its decision and permit Lo to file a motion for judgment on the grounds that
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`Fan’s involved claims are unpatentable under 35 U.S.C. § 103 in view of the ’438
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`provisional, taken in combination with one or more of the references identified in Lo’s list
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`of proposed motions. Furthermore, in view of Fan’s priority statement filed in this
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`interference, Fan is limited to its asserted earliest corroborated conception date of “as
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`early as 18 December 2007.” This date, while earlier than the effective prior art date of
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`the ‘377 publication, is not earlier than the effective prior art date of the ‘438 provisional.
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`While Fan is precluded in this interference from asserting a date of invention antedating
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`the ‘438 provisional, there is no such constraint on Fan in the ‘415 IPR. For this reason,
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`the priority phase of this interference is the proper forum for resolution of this issue.
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`II.
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`Statement of Facts Relevant to the Request
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`On 3 May 2013, the PTAB declared this interference. Paper 1. Count 1, the sole
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`count of the interference, corresponds to claim 1 of the ’415 patent, and the PTAB
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`designated claims 1-17 of the ’415 patent as corresponding to the Count. Paper 1, at 4-
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`5. At the beginning of the motions phase, Lo requested authorization to file a motion for
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`judgment on the ground that Fan’s involved claims are unpatentable under 35 U.S.C.
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`§§ 102 and 103 in view of the ’377 publication, filed 23 July 2008, either alone or in
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`combination with other cited art. Paper 16, at 1-2. That request expressly included
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`reliance on the disclosure of the ’438 provisional based on its earlier filing date, 23 July
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`2007.
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`Id. The PTAB deferred Lo’s requested motion, but authorized Lo to renew its
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`request for the deferred motion following resolution of the parties’ motions for benefit.
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`Paper 18, at 3.
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`In its priority statement, Fan asserted a conception date as early as
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`18 December 2007. Paper 24. Lo, in its priority statement, relied upon the filing date of
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`its first filed nonprovisional application, Application No. 12/178,181, filed 23 July 2008.
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`Paper 21.
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`2
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`On 26 June 2013, Lo filed IPR2013-00390 (the ’415 IPR) challenging the
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`patentability of claims 1-17 of the ’415 patent.1 Lo presented unpatentability grounds 1-
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`10 under §§ 102 and 103 based on the ’377 publication, alone or in combination with
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`other references. Lo also presented separate unpatentability grounds 11-16 under
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`§ 103 based on the ’438 provisional in combination with other references. IPR Paper 1,
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`at 3-5. On 9 December 2013, the PTAB instituted review of the ’415 patent claims
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`solely on grounds 1-6 based on the ’377 publication, which grounds argued the claims
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`were unpatentable under 35 U.S.C. § 102(e) and § 103. IPR Paper 7, at 21-22. The
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`PTAB denied review as to grounds 7-16, of which grounds 11-16 were based on the
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`’438 provisional and argued the claims were unpatentable under § 103, as redundant to
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`the instituted grounds. Id. Lo filed a Request for Rehearing (IPR Paper 9), arguing
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`against the finding of redundancy, which the PTAB denied based on the rationale that
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`the ’377 publication and the ’438 provisional have the same effective filing date for
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`common disclosure. IPR Paper 14, at 4.2
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`On 7 April 2014, the PTAB in this interference denied Lo authorization to file its
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`deferred motion for judgment that the claims of the ’415 patent are unpatentable under
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`1
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`Sequenom is the petitioner in IPR2013-00390, and is an identified real party-in-
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`interest in this interference.
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`2
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`On 9 January 2014, Petitioner Sequenom filed a motion for joinder and a second
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`IPR petition, IPR2014-00337, challenging the claims of the ’415 patent as unpatentable
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`under 35 U.S.C. § 103 based on the ’438 provisional in combination with one or more of
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`the listed references. That IPR petition is currently pending and has not been acted on
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`by the PTAB.
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`§§ 102 and 103 in view of the ’377 publication and the ’438 provisional. The PTAB
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`reasoned that because Lo will have an opportunity to pursue the relief requested in its
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`deferred prior art motion elsewhere, i.e., in the ’415 IPR, the PTAB denied Lo the
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`opportunity to renew its request to file the deferred motion during the priority phase of
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`this interference. Paper 103, at 2 (citing 35 U.S.C. § 315(d)). But this conclusion is
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`incorrect, given the narrow grounds upon which the ’415 IPR was instituted.
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`For the reasons detailed below, Lo seeks reconsideration of that denial and
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`authorization to file a motion for judgment that the ’438 provisional, in combination with
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`one or more of the listed references, renders the claims of the ’415 patent obvious.
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`III.
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`Reasons Why the PTAB Should Grant the Requested Relief
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`A.
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`The ’415 IPR will not consider unpatentability grounds under 35
`U.S.C. § 103 based on the ’438 provisional
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`At the beginning of this interference, Lo requested authorization to file a motion
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`for judgment of unpatentability of the ’415 patent claims under 35 U.S.C. §§ 102
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`and 103 based on the ’377 publication, taken alone or in combination with several other
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`references. Lo expressly stated that the ’377 publication was filed 23 July 2008, and
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`claims benefit of and incorporates by reference the ’438 provisional. Paper 16, at 1-2.
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`In the ’415 IPR, Lo similarly sought review of the ’415 patent claims based on the
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`’377 publication and ’438 provisional. Lo asserted unpatentability grounds 1-10 under
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`§§ 102 and 103 based on the ’377 publication alone or in combination with other
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`references. Lo separately asserted unpatentability grounds 11-16 under § 103 only
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`based on the ’438 provisional, relying on its different disclosure and earlier filing date.
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`The PTAB instituted the ’415 IPR solely on grounds 1-6, which are based
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`exclusively on the ’377 publication, taken alone or in combination with other references
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`under 35 U.S.C. §§ 102(e) and 103. The PTAB did not, even when reconsideration was
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`requested, institute review of the ’415 patent claims on any of grounds 11-16 based on
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`the ’438 provisional.
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`Accordingly, the ’415 IPR does not provide Lo an opportunity to pursue that
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`portion of the relief requested in its deferred motion for judgment in this interference
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`under 35 U.S.C. §103 that is based on the earlier-filed disclosure of the ’438 provisional,
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`taken in combination with one or more of the listed references.
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`B.
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`The ’438 provisional and ’377 publication have different disclosures
`and filing dates and thus provide distinct unpatentability grounds
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`Unpatentability grounds based on the ’377 publication differ from those based on
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`the ’438 provisional and thus do not provide the same relief. In concluding that grounds
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`based on the ’377 publication and ’438 provisional are redundant, the PTAB overlooked
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`that these two references have different disclosures with different filing dates.
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`Furthermore, the PTAB failed to consider that Fan’s asserted conception date could
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`antedate only the filing date of the ’377 publication, not the ’438 provisional. Lo should
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`not be denied the opportunity to present its patentability attack based on the ’438
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`provisional, in combination with other references, in both this interference and in the
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`’415 IPR.
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`Lo’s arguments for unpatentability based on the ’438 provisional are distinct from
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`those based on the ’377 publication because the ’377 publication and the ’438
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`provisional: (1) while constituting similar types of art, they are relied upon for different
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`legal arguments, i.e., under §102(e) and for §102 and/or §103 purposes, respectively;
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`(2) have different disclosures; and (3) have different filing dates. Lo presented these
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`distinctions in requesting reconsideration of the PTAB’s decision not to institute IPR
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`based on the ’438 provisional. See IPR Paper 9. Lo explained that because Lo’s
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`arguments rely on the references’ different disclosures, having different filing dates, and
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`which were argued under different sections of the law, i.e., §103 alone or under §102
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`and/or §103, they present different facts and substantive arguments and, thus, are not
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`redundant. Id., at 7-8. Regarding the different filing dates of these two references, Lo
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`further explained that because Fan might present evidence to establish priority of
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`invention under 35 U.S.C. § 102(g)(2) (pre-AIA) to antedate the ’377 publication, but not
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`the ’438 provisional, unpatentability grounds based on the two references do not
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`necessarily stand or fall together and, thus, again, are not redundant. Id., at 4-5.
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`The importance of the different filing dates of these two references is highlighted
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`by Fan’s asserted conception date in this interference. The ’377 publication has a filing
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`date of 23 July 2008, while the ’438 provisional has a filing date of 23 July 2007, a full
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`year earlier. Paper 16, at 1-2. In this interference, Fan asserts a conception date as
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`early as 18 December 2007. Paper 24. This alleged conception date would antedate
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`the ’377 publication’s filing date if proven by Fan; however, it would not antedate the
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`filing date of the ’438 provisional. For at least this reason, the ’438 provisional is not
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`cumulative to the ’377 publication, and Lo’s deferred motion based on the ’438
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`provisional will not be redundant to the instituted review grounds in the ’415 IPR that are
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`based on the ’377 publication.
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`Thus, the PTAB’s review of the ’415 patent, based on the ’377 publication, will
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`not provide the same relief as a motion for judgment under 35 U.S.C. §103 based on
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`the ’438 provisional in this interference. Accordingly, the PTAB should reconsider and
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`permit Lo to renew its request to file a motion for judgment that the claims of the ’415
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`6
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`

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`patent are unpatentable based on the ’438 provisional, taken in combination with one or
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`more listed references.
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`IV.
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`Conclusion
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`For the foregoing reasons, Lo respectfully requests reconsideration of the
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`PTAB’s Decision and Order (Papers 101 and 103), and a decision to allow Lo the
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`opportunity to request authorization to file a motion for judgment that the claims of Fan’s
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`involved ’415 patent are unpatentable under 35 U.S.C. §103 in view of the ’438
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`provisional in combination with one or more other references.
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`Respectfully submitted,
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`By: / Michele C. Bosch
`Dated: April 21, 2014
` Michele C. Bosch
` Registration No. 40,524
`
`
`/
`
`Counsel for Party Lo
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`CERTIFICATE OF SERVICE
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`I hereby certify that a copy of the foregoing LO REQUEST FOR REHEARING
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`was served electronically via the PTAB Interference Web Portal e-filing system on Party
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`Quake through its attorneys of record on this 21st day of April 2014, as follows:
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`R. Danny Huntington, Esq.
`Sharon E. Crane, Ph.D.
`Rothwell, Figg, Ernst & Manbeck, P.C.
`Suite 800
`607 14th Street, NW
`Washington, DC 20005
`
`/ Michele C. Bosch /
`By:
` Michele C. Bosch
` Reg. No. 40,524
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`8
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