BoxInterference@uspto.gov
`571.272.4683
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`Filed April 30, 2014
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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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`
`
` HEI-MUN CHRISTINA FAN and STEPHEN QUAKE
`Junior Party
`
` (Patent 8,195,415),
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`v.
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`YUK-MING DENNIS LO, ROSSA WAI KWUN CHIU, and KWAN CHEE
`CHAN
`Senior Party
`(Application 13/070,266),
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`
`
`Patent Interference No. 105,922 (DK)
`
`
`Decision – Request for Rehearing
`Bd.R. 125(c)
`
`Before, FRED E. MCKELVEY, RICHARD E. SCHAFER, and
`DEBORAH KATZ, Administrative Patent Judges.
`
`
`
`KATZ, Administrative Patent Judge.
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`-1-
`
`SEQUENOM EXHIBIT 1024
`Sequenom v. Stanford
`IPR2014-00337
`
`
`571.272.4683
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`Filed April 30, 2014
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`
`
`
`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)
`
`
`Decision – Request for Rehearing
`Bd.R. 125(c)
`
`Before, FRED E. MCKELVEY, RICHARD E. SCHAFER, and
`DEBORAH KATZ, Administrative Patent Judges.
`
`
`
`KATZ, Administrative Patent Judge.
`
`
`
`
`-1-
`
`SEQUENOM EXHIBIT 1024
`Sequenom v. Stanford
`IPR2014-00337
`
`
`
`Lo requests that we reconsider an Order entered 7 April 2014 (Paper 103, at
`2)1, denying authorization to file a motion for judgment based on alleged
`unpatentability under 35 U.S.C. §§ 102 and 103 of the claims of Fan’s involved
`’415 patent. (Lo Request for Rehearing (“Request”), Paper 104.) An inter partes
`review (“IPR”) panel of the Board denied institution of review of claims in the
`involved Fan patent, 8,195,415 (“the ’415 patent”) based on allegations of
`unpatentability over the Lo provisional application 60/951,438 (“the ’438
`provisional application”) (see IPR2013-00390, Papers 7 and 142). Therefore, Lo
`reasons that it should not be denied an opportunity in this interference for judgment
`on that basis.
`To prevail on a request for rehearing, a party bears the burden of specifically
`identifying all matters the party believes to have been misapprehended or
`overlooked and the place where the matter was previously addressed in a motion,
`opposition, or reply. Bd. R. 125(c)(3).
`In this interference, Lo listed a
`motion for judgment on the ground that Party Quake’s involved
`claims are unpatentable under 35 U.S.C. §§ 102 and 103 in view of the
`following prior art references:
`1. Yuk-Ming Dennis Lo et al., “Diagnosing Fetal Chromosomal
`Aneuploidy Using Massively Parallel Genomic Sequencing,” US
`
`1 Lo also requests reconsideration of the Decision on Motions (Paper 101) in this
`interference. (Request, Paper 104, at 1:2.) Because (1) Lo does not refer to any
`portion of that Decision or point out what we may have misapprehended or
`overlooked in rendering that Decision and (2) that Decision does not discuss
`patentability of the Fan ’415 claims under 35 U.S.C. § 102 or § 103, we do not
`reconsider that Decision.
`
` 2
`
` Paper 7 and Paper 14 of IPR2013-00390 have been made of record as Ex. 3001
`(Paper 7) and Ex. 3002 (Paper 14).
`
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`-2-
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`2009/0029377, filed 23 July 2008 and published 29 January 2009,
`which claims benefit of (and incorporates by reference) Provisional
`Application No. 60/951,438, filed 23 July 2007; [followed by a list of
`10 other references].
`
`(Lo List of Proposed Motions, Paper 16 at 1:11-17.) Contrary to Lo’s assertions in
`its request for rehearing (Request, Paper 104, at 1:7-10 and 5:4-7), Lo did not
`include the ’438 provisional application in the list of prior art on which, if
`authorized, it would challenge the patentability of Fan’s claims. Thus, a request
`for authorization to file a motion for unpatentability based on that provisional
`application was not misapprehended or overlooked when the Order of 7 April 2014
`was issued. For this reason alone, Lo’s request for rehearing is denied.
`Even if Lo had previously requested authorization for a motion based on the
`’438 provisional application, Lo’s arguments are not persuasive. Inter partes
`review of the Fan ’415 patent was instituted on the grounds of anticipation and
`obviousness over U.S. Patent Application Publication 2009/0029377 (“the ’377
`publication”; “Lo II”) but review was denied for patentability challenges based on
`’438 provisional application (“Lo I”). (See IPR2013-00390, Paper 7, Ex. 3001.)
`Lo argues that it should have an opportunity to present an attack on patentability
`based on the earlier ’438 provisional application in either the IPR or the
`interference. According to Lo, Fan cannot antedate the earlier filing date of the
`provisional application and therefore an opportunity to attack the Fan ‘415 claims
`before the Board is appropriate. (Request, Paper 104, at 1:19-2:8.)
` The IPR panel of the Board considered Lo’s arguments regarding the
`different filing dates of the Lo ’377 publication and ’438 provisional application
`when it reconsidered its Decision to institute inter partes review. (IPR2013-00390,
`Paper 14, Ex. 3002.) Specifically, the IPR panel stated:
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`-3-
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`Sequenom’s [a licensee of the Lo application] 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 [provisional
`Application 60/951,438] and Lo II [patent application publication
`2009/0029377], as Sequenom itself acknowledges, see [Petition] 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.
`
`(Id. at 4.) Thus, Lo, represented by licensee Sequenom, will have an opportunity
`in the IPR to rely on the earlier filing date of the ’438 provisional patent to
`challenge Fan’s claims where the disclosure of the provisional and published
`applications are the same.
`Furthermore, Lo does not explain, with specificity, the basis on which the
`’438 provisional application itself can be considered prior art, as opposed to merely
`providing an effective patent defeating date for Lo II. Lo states that
`“[t]he statutory bases under 35 U.S.C. §102 and/or §103 for Lo’s arguments based
`upon these two references [including the ’438 provisional application] against the
`claims of the ’415 patent are distinct, as fully explained by Lo in co-pending
`IPR2013-00390
`. . . .” 3 (Request at 1:15-18.) Lo includes no further explanation on the record
`before us in this interference to support the statutory basis for asserting an
`unpublished, provisional application as prior art. See Halliburton Energy Servs.,
`Inc. v. M-I LLC, 514 F.3d 1244, 1250, n.2 (Fed. Cir. 2008) (quoting United States
`
`
`3 The “as fully explained by Lo in copending IPR2013-00390” is an attempt to
`incorporate arguments from another paper in another proceeding into the Request.
`Bd. R 106(b)(3); Standing Order, ¶ 106.2 (Paper 2, page 19).
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`-4-
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`v. Dunkel, 927 F.2d 955, 956 (7th Cir. 1991) (“Judges are not like pigs, hunting for
`truffles buried in briefs.”)). Thus, Lo fails to provide a persuasive reason why
`authorization of such a motion would be appropriate at this time.
`We are not persuaded that any matter was misapprehended or overlooked in
`the Order of 7 April 2014. We also are not persuaded Lo has been improperly
`denied an opportunity to pursue the unpatentability of Fan’s claims over the prior
`art.4 Accordingly, the denial of a renewed request for authorization to file Lo’s
`proposed motion for unpatentability under 35 U.S.C. §§ 102 and 103 was not an
`abuse of discretion under Bd.R. 125(c)(5).
`Lo’s request for rehearing is DENIED. The Order of 7 April 2014 (Paper
`103) is not modified.
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`4 Lo also indicated that Sequenom has filed an additional petition for inter partes
`review challenging the claims of the Fan ’415 patent over provisional application
`60/951,438. (Request, Paper 104, at 3, n. 2; see IPR2014-00337.) No paper
`from IPR2014-00337 has been submitted as evidence in this interference.
`Bd. R 154(a). We therefore decline to consider arguments based on papers filed
`in IPR2014-00337. We additionally observe that we cannot have misapprehended
`or overlooked an argument based on a paper or evidence not before us.
`
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`-5-
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`cc (via electronic delivery):
`
`Attorney for Fan:
`
`R. Danny Huntington
`Sharon E. Crane
`Rothwell, Figg, Ernst & Manbeck, PC
`Email: dhuntington@rfem.com
`Email: scrane@rfem.com
`
`
`
`Attorney for Lo:
`
`Michele C. Bosch
`Steven P. O’Connor
`Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
`Email: michele.bosch@finnegan.com
`Email: steven.oconnor@finnegan.com
`
`Michael J. Wise
`Perkins Coie, LLP
`Email: mwise@perkinscoie.com
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`
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`-6-
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