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`UNITED STATES PATENT AND TRADEMARK OFFICE
`________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`________________________________
`
`BIO-RAD LABORATORIES, INC.,
`Petitioner
`
`v.
`
`CALIFORNIA INSTITUTE OF TECHNOLOGY,
`Patent Owner
`______________________________
`Case Number: IPR2015-00009
`U.S. Patent No. 7,294,503 B2
`______________________________
`
`FLUIDIGM CORPORATION’S RESPONSE TO
`THE ORDER TO SHOW CAUSE
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`I. INTRODUCTION
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`
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`On October 23, 2014, Fluidigm Corporation (“Fluidigm”) submitted a
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`Mandatory Notice that it was the real-party-in interest. Having received no
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`objection from the Petitioner or the Board, Fluidigm filed a Preliminary Response
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`on January 27, 2015. On March 6, 2015, the Board issued an Order stating “[t]he
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`current record in each of these proceedings includes no evidence to support the
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`assertion that Fluidigm is an exclusive licensee with all substantial rights to the
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`’503 and ’539 patents, including the right under § 313 to file the Preliminary
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`Response, or otherwise participate, in these proceedings.” Order at 4. Accordingly,
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`the Board ordered Fluidigm to show cause why it is entitled to “stand in the shoes
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`of the Patent Owner in these proceedings” and file a preliminary response. Id.
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`Submitted with this Response is the exclusive license agreement between
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`California Institute of Technology (“Patent Owner” or “Caltech”) and Fluidigm
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`relating to the ’503 patent. See Exh. 2003 (the “License Agreement”); see also
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`Exh. 2009 (redacted version of the License Agreement).1 Under the License
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`1 A redacted version of the License Agreement was also previously submitted as a
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`public document to the Securities and Exchange Commission (“the SEC”) by
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`Fluidigm.
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`See
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`http://www.sec.gov/Archives/edgar/data/1162194/000119312510273807/dex105.h
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`tm. The redactions in Exhibit 2009 are identical to those submitted to the SEC
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`1
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`
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`Agreement, Fluidigm obtained “an exclusive license” to the ’503 patent for the life
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`
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`of the patent, and has the sole right to enforce, defend, and sublicense the ’503
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`patent. Id. Fluidigm therefore has “all substantial rights” under the ’503 patent,
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`both for standing under the Federal Circuit’s case law and under the PTO’s “real-
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`party-in-interest” rules. For that reason, the Board should permit Fluidigm to
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`participate in these proceedings in place of Patent Owner.
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`II. DISCUSSION
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`As the Board observes, Federal Circuit cases hold that an exclusive licensee
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`with all substantial rights is the “effective patentee,” and thus meets the
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`constitutional standing requirement to sue in its own name in Federal Court
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`without mandatory joinder of the named patentee. Order at 3, citing Sicom Sys. Ltd.
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`V. Agilent Techs., Inc., 427 F.3d 971, 976 (Fed. Cir. 2005) and Prima Tek II,
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`L.L.C. v. A-Roo Co., 222 F.3d 1372, 1377 (Fed. Cir. 2000).
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`Likewise, “the Board will apply traditional common-law principles in
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`determining the real party-in-interest.” Motorola Mobility LLC v. Arnouse,
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`IPR2013-00010, Paper No. 27 at 3 (Apr. 5, 2013), citing Fed. Reg., Vol. 77 No.
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`157 (Aug. 14, 2012) at 48759. In determining the real party-in-interest when a
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`patent has been licensed, the Board applies the Federal Circuit’s guidance as to
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`except that the identification of the relevant applications on page 40 are also
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`unredacted in Exhibit 2009.
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`2
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`
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`standing. Id., citing Sicom, 427 F.3d 971; Prima Tek, 222 F.3d 1372. As the Board
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`in Motorola held, an exclusive licensee with all substantial rights – and not the
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`Patent Owner – “is the entity with the right to participate in proceedings before the
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`Office.” Id. at 5; see also Motorola Mobility LLC v. Arnouse, IPR2013-00010,
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`Paper No. 30 at 6 (Apr. 19, 2013). Here, Fluidigm is the exclusive licensee with
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`“all substantial rights” in the ’503 patent, in accordance with the Federal Circuit’s
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`holdings in Sicom and Prima Tek II and the Board’s Motorola Mobility decisions.
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`Therefore, Fluidigm (and not the Patent Owner) “is the entity with the right to
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`participate in proceedings before the Office.”
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`Specifically, the License Agreement defines “Licensed Patents” as:
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`[T]he patent applications listed in Exhibit A hereto; any patents
`issuing on such patent applications, all divisionals, continuations,
`continuations-in-part, patents of addition, substitutions, registrations,
`reissues, reexaminations or extensions of any kind with respect to any
`of the existing patents and any foreign counterparts of such patent
`applications and patents, and Improvements.
`
`Exh. 2003 and 2009 at § 1.5. Exhibit A to the License Agreement specifically lists
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`application serial numbers 60/233,037, 60/246,793, and 09/953,103 – the
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`applications that led to the ’503 patent. Exh. 2003 and 2009 at p. 40; Exh. 2004
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`and 2010 at p. 7. Therefore, the ’503 patent is a Licensed Patent.
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`The License Agreement grants Fluidigm exclusive rights under the ’503
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`
`
`3
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`
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`
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`patent:
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`
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`2.1 Caltech hereby grants to [Fluidigm] an exclusive, royalty-bearing,
`worldwide license, with the right to grant and authorize sublicenses,
`under the Licensed Patents and Technology to make, have made, use,
`import, offer for sale and sell Licensed Products, practice any method
`or procedure and otherwise exploit the Licensed Patents and
`Technology.
`Exh. 2003 and 2009 at § 2.1 (underlining added). Under § 2.1, Fluidigm has
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`exclusive license rights commensurate in scope with the Licensed Patents,
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`including the ’503 patent.2 The exclusive license for the ’503 patent is for the life
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`of the patent. See Exh. 2003 and 2009 at § 12.1. Also under § 2.1, Fluidigm has the
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`right to grant sublicenses, which the Federal Circuit has noted is an important
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`consideration in determining whether a license agreement transfers all substantial
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`rights. Prima Tek II, 222 F.3d at 1380.
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`Moreover, § 7.1 provides that Fluidigm, “upon notice to Caltech, shall have
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`2 The limited retained rights under § 2.2 by Caltech “to make, have made, and use”
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`licensed products for noncommercial education and research purposes, but not for
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`sale or distribution to third parties, and the U.S. Government’s limited retained
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`rights (if any) for inventions made with federal assistance, are insufficient to defeat
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`Fluidigm’s exclusive and substantial rights. See WiAV Solutions LLC v. Motorola,
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`631 F.3d 1257, 1266 (Fed. Cir. 2010).
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`4
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`the sole right to initiate an action” for infringement “at [Fluidigm’s] expense, either
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`in [Fluidigm’s] name or in Caltech’s name if so required by law” and that
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`“[Fluidigm] shall have sole control of the action.” Exh. 2003 and 2009 at § 7.1.
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`That grant is “particularly dispositive” because “[t]he policy underlying the
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`requirement to join the owner when an exclusive licensee brings suit is to prevent
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`the possibility of two suits on the same patent against a single infringer. This
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`policy is not undercut here because the right to sue rested solely with [licensee].”
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`Vaupel Textilmaschinen KG v. Meccanica Euro Italia S.P.A., 944 F.2d 870, 875-76
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`(Fed. Cir. 1991).
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`Similarly, Fluidigm has the right to elect to have sole control of declaratory
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`judgment actions alleging invalidity, unenforceability, or noninfringement of any
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`of the Licensed Patents, and Fluidigm “also may elect to undertake and have sole
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`control of the defense of any interference, opposition or similar action with respect
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`to the Licensed Patents providing it bears all the costs of such action.” Exh. 2003
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`and 2009 at § 7.3. Accordingly, Caltech granted Fluidigm “sole control” to defend
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`this IPR proceeding and Fluidigm is bearing all costs of defending this IPR.
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`Based on at least these provisions of the License Agreement, Fluidigm is the
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`“effective patentee.” Therefore, Fluidigm is the real-party-in-interest and entitled
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`to “stand in the shoes of the Patent Owner” and participate in this proceeding to
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`defend the patentability of the ’503 patent claims.
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`
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`5
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`Respectfully submitted,
`
`/James P. Murphy/
`James P. Murphy (Lead Counsel)
`Reg. No. 55,474
`Margaux A. Aviguetero (Back-up
`Counsel)
`Reg. No. 62,940
`NOVAK DRUCE CONNOLLY BOVE
`+ QUIGG LLP
`555 Mission St., 34rd Floor
`San Francisco, 94105
`P: 415-814-6170
`FluidigmIPR@novakdruce.com
`Attorneys for Fluidigm Corp.
`
`
`
`
`March 13, 2015
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`6
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that, on March 13, 2015, a copy of this
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`FLUIDIGM CORPORATION’S RESPONSE TO THE BOARD’S ORDER
`
`TO SHOW CAUSE has been served upon the following counsel for Petitioner,
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`Bio-Rad Laboratories, Inc., via the e-mail correspondence address of record:
`
`Dion M. Bregman
`Michael J. Lyons
`Morgan, Lewis & Bockius LLP
`Two Palo Alto Square
`3000 El Camino Real, Suite 700
`Palo Alto, CA 94306
`biorad.service@morganlewis.com
`
`/Simone LeVant/
`Simone LeVant
`Novak Druce Connolly Bove + Quigg LLP
`555 Mission Street
`Thirty-Fourth Floor
`San Francisco, California 94105
`P: 415-814-6161
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`
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`7
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