Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`Paper No. 14
`Entered: September 23, 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
`Petitioner’s Request for Rehearing
`of Decision Denying Institution of Inter Partes Review
`37 C.F.R. § 42.71
`
`
`
`
`
`
`Tel: 571-272-7822
`
`
`
`Paper No. 14
`Entered: September 23, 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
`Petitioner’s Request for Rehearing
`of Decision Denying Institution of Inter Partes Review
`37 C.F.R. § 42.71
`
`
`
`
`
`
`
`Case IPR2013-00337
`Patent 8,195,415 B2
`
`
`I. INTRODUCTION
`
`Sequenom, Inc. (“Petitioner”) has filed a Request for Rehearing (Paper 12,
`
`“Req. Reh’g”) of our Decision (Paper 11, “Dec.”) denying review of the claims of
`
`U.S. Patent No. 8,195,415 B2 (Ex. 1001, “the ’415 patent”), as to all grounds
`
`advanced in the corrected Petition (Paper 5, “Pet.”). For the reasons that follow,
`
`we deny Petitioner’s request to rehear the decision not to institute inter partes
`
`review 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
`
`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
`
`Petitioner presented twelve grounds of unpatentability, all of which relied on
`
`the Lo I1 reference. Pet. 5–6. Petitioner contended that Lo I, a provisional
`
`
`1 Lo et al., U.S. Provisional Patent Application 60/951,438 (filed July 23, 2007)
`(Ex. 1003).
`
` 2
`
`
`
`
`
`
`
`Case IPR2013-00337
`Patent 8,195,415 B2
`
`
`U.S. patent application, constitutes prior art under § 102(e) as of its filing date for
`
`all it discloses, under Ex parte Yamaguchi, 88 USPQ2d 1606 (BPAI 2008)
`
`(precedential). Pet. 2.
`
`We declined to institute trial because Lo I is neither a patent nor an
`
`application for patent published under 35 U.S.C. § 122(b), and, therefore, is not
`
`one of the two types of documents that may be relied upon under 35 U.S.C.
`
`§ 102(e) to show that claims are unpatentable. Dec. 3. We also explained that we
`
`were not persuaded that Ex parte Yamaguchi stands for the proposition that a
`
`ground of unpatentability under § 102(e) may be predicated on a provisional
`
`application, without reference to a corresponding patent or application for patent
`
`published under § 122(b). Id. at 4. Specifically, we noted that, like the decision in
`
`In re Giacomini, 612 F.3d 1380, 1384–85 (Fed. Cir. 2010), Ex parte Yamaguchi
`
`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.” Dec. 4.
`
`In its Request for Rehearing, Petitioner contends that our statement of the
`
`holding in Yamaguchi overlooks language in that decision stating that a provisional
`
`application constitutes prior art under § 102(e) “for all that it teaches.” Req.
`
`Reh’g 6 (citing Yamaguchi, 88 USPQ2d at 1612). Petitioner, thus, argues that our
`
`Decision overlooked the full breadth of the holding in Yamaguchi. Id. at 7–8.
`
`Moreover, Petitioner contends, contrary to our conclusion that a provisional
`
`application is not an application for patent published under § 122(b) as required by
`
`§ 102(e)(1), Yamaguchi explains that provisional applications, in general, become
`
`publicly available when the corresponding utility application is published. Id. at
`
`8–9 (citing Yamaguchi, 88 USPQ2d at 1611–12).
`
` 3
`
`
`
`
`
`
`
`Case IPR2013-00337
`Patent 8,195,415 B2
`
`
`We are not persuaded that our Decision misapprehended or overlooked the
`
`breadth of the holding in Yamaguchi. In particular, we are not persuaded that
`
`Yamaguchi held that, because provisional applications generally become publicly
`
`available, the proponent of the patent-defeating provisional application is
`
`discharged from the requirement of showing, in a ground based on § 102(e), that
`
`the critical disclosures relied upon in the provisional application are also present in
`
`a corresponding patent, or application published under § 122(b). To the contrary,
`
`the Yamaguchi decision noted expressly that the examiner had made the fact-
`
`finding that the relevant disclosures of the patent and its corresponding provisional
`
`application were the same. Yamaguchi, 88 USPQ2d at 1613. Then, in determining
`
`whether the appellant had shown error in that finding, the decision used a table to
`
`compare directly the disclosures of the patent upon which unpatentability was
`
`asserted, and the corresponding disclosures in the related provisional application.
`
`Id.
`
`Thus, rather than analyzing the provisional application in isolation, the
`
`Yamaguchi decision ensured that the patent-defeating disclosures were present in
`
`both the patent which formed the basis of unpatentability under § 102(e), as well as
`
`the corresponding provisional application. The decision in Yamaguchi recognized,
`
`therefore, that in a ground of unpatentability under § 102(e), the patent-defeating
`
`disclosures in a provisional application must also be found in a document
`
`applicable as prior art under § 102(e), that is, either a patent or application for
`
`patent published under § 122(b). Accordingly, we are not persuaded that
`
`Yamaguchi held that a ground of unpatentability under § 102(e) may be predicated
`
`on a provisional application, without reference to a corresponding patent or
`
`application for patent published under § 122(b).
`
` 4
`
`
`
`
`
`
`
`Case IPR2013-00337
`Patent 8,195,415 B2
`
`
`Petitioner also directs us to the decisions in Ex parte Argasinski, 2009 WL
`
`460669 (BPAI 2009), Ex parte Green, 2011 WL 5116559 (BPAI 2011), Ex Parte
`
`Gilde, 2014 WL 1154004 (PTAB 2014), and Focal Therapeutics, Inc. v. Senorx,
`
`Inc., IPR2014-00116 (Paper 8), 2014 WL 1651257 (PTAB 2014). Req. Reh’g 1–
`
`2, 7, 9–10. Those decisions are not precedential, however. We, therefore, are not
`
`bound by them, and decline to consider them.
`
`In sum, for the reasons discussed, we are not persuaded that our Decision not
`
`to institute trial misapprehended or overlooked the holding in Ex parte Yamaguchi.
`
`We are also not persuaded that Petitioner has been precluded, in a prejudicial
`
`fashion, from presenting to the Board its case regarding Lo I and the other
`
`references cited in its corrected Petition. See Req. Reh’g 11–13. Petitioner did, in
`
`fact, present its grounds of unpatentability based on Lo I. See Pet., generally.
`
`Although Petitioner disagrees with our assessment of the merits of the grounds
`
`advanced in the corrected Petition, that disagreement does not demonstrate that
`
`Petitioner was not afforded the opportunity to present the grounds of
`
`unpatentability it desired, or that we misapprehended or overlooked the grounds of
`
`unpatentability that were advanced, to an extent that would be considered an abuse
`
`of discretion.
`
`IV. CONCLUSION
`
`Having considered Petitioner’s request for rehearing, we are not persuaded,
`
`for the reasons discussed, that Petitioner has shown that our Decision
`
`misapprehended or overlooked any point of law or fact advanced in the corrected
`
`Petition, such that the Decision can be considered an abuse of discretion.
`
`
`
`
`
` 5
`
`
`
`
`
`
`
`Case IPR2013-00337
`Patent 8,195,415 B2
`
`
`V. ORDER
`
`For the reasons given, it is hereby ORDERED that Petitioner’s request for
`
`rehearing is denied.
`
`
`
`
`
` 6
`
`
`
`
`
`
`
`Case IPR2013-00337
`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
`
`
` 7
`
`
`
`
`
`
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
