Case IPR2016-00822
`U.S. Patent No. 7,064,197
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`
`
`HOLOGIC, INC., and BECTON, DICKINSON AND COMPANY,
`Petitioner
`
`
`v.
`
`
`ENZO LIFE SCIENCES, INC.,
`Patent Owner
`
`__________________
`
`
`Case IPR2016-00822
`
`U.S. Patent No. 7,064,197
`TITLE: SYSTEM, ARRAY AND NON-POROUS SOLID SUPPORT
`COMPRISING FIXED OR IMMOBILIZED NUCLEIC ACIDS
`Issue Date: June 20, 2006
`
`______________
`
`
`
`
`ENZO’S NOTICE OF APPEAL
`
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`U.S. Patent No. 7,064,197
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________
`
`
`HOLOGIC, INC., and BECTON, DICKINSON AND COMPANY,
`Petitioner
`
`
`v.
`
`
`ENZO LIFE SCIENCES, INC.,
`Patent Owner
`
`__________________
`
`
`Case IPR2016-00822
`
`U.S. Patent No. 7,064,197
`TITLE: SYSTEM, ARRAY AND NON-POROUS SOLID SUPPORT
`COMPRISING FIXED OR IMMOBILIZED NUCLEIC ACIDS
`Issue Date: June 20, 2006
`
`______________
`
`
`
`
`ENZO’S NOTICE OF APPEAL
`
`
`
`Mail Stop Patent Board
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`
`Case IPR2016-00822
`U.S. Patent No. 7,064,197
`
`
`
`Pursuant to 35 U.S.C. §§ 141, 142, and 319, and in accordance with 37
`
`C.F.R. §§ 90.2-90.3, Patent Owner Enzo Life Sciences (“Enzo”) appeals to the
`
`United States Court of Appeals for the Federal Circuit from the Final Written
`
`Decision of the Patent Trial and Appeal Board (“Board”) entered on October 2,
`
`2017 in Case IPR2016-00822 (Paper 48) (“Final Written Decision”), and from all
`
`underlying findings, determinations, rulings, opinions, orders, and decisions
`
`regarding that inter partes review of U.S. Patent No. 7,064,197 (“the ’197 patent”).
`
`This Notice of Appeal is timely filed within 63 days of the Final Written Decision.
`
`In accordance with 37 C.F.R. § 90.2(a)(3)(ii), Enzo states that the issues on
`
`appeal may include, but are not limited to: the Board’s determination that Claims
`
`17, 19, 25, 105, 106, 114, 116, 119, 128, 129, 150, 152, 178, 180, 186, and 187 of
`
`the ’197 patent are unpatentable as anticipated by Fish; the Board’s determination
`
`that Claims 130, 131, 151, and 154 of the ’197 patent are unpatentable as obvious
`
`over Fish; the Board’s determination that Claims 120 and 189 of the ’197 patent
`
`are unpatentable as obvious over Fish, Metzgar, and Sato; the Board’s
`
`determination that Claims 113 and 185 of the ’197 patent are unpatentable as
`
`obvious over Fish and Gilham; whether VPK is prior art to the ’197 patent; the
`
`Board’s determination that Claims 17, 19, 25, 105, 106, 114, 119, 120, 128, 129,
`
`131, 150–152, 178, 180, 186, and 189 of the ’197 patent are unpatentable as
`
`obvious over VPK and Metzgar; the Board’s determination that Claims 16, 38, 64,
`
`1
`
`
`
`Case IPR2016-00822
`U.S. Patent No. 7,064,197
`
`
`
`78, 101, 195, 218, 222, and 230 of the ’197 patent are unpatentable as obvious over
`
`VPK, Noyes, Metzgar, and Ramachandran; the Board’s construction of Claims
`
`113, 116, 130, 154, 185, and 187 of the ’197 patent, including its construction of
`
`the claim terms “hybridizable form,” “array,” and “nucleic acid of interest;” the
`
`Board’s consideration of the expert testimony, prior art, and other evidence in the
`
`record; the Board’s factual findings, conclusions of law, or other determinations
`
`supporting or related to those issues, as well as all other issues decided adversely to
`
`Enzo in any orders, decisions, rulings, and opinions; whether inter partes review is
`
`unconstitutional because it permits an executive agency to exercise the judicial
`
`power of the United States in violation of Article III of the Constitution; whether
`
`inter partes review is unconstitutional because Enzo has the right to a trial by jury
`
`on the validity of the ’197 patent under the Seventh Amendment; and whether inter
`
`partes review is unconstitutional as applied to the ’197 patent because the
`
`enactment of the inter partes review statutes retroactively impaired Enzo’s vested
`
`rights in the ’197 patent, which rights vested when the ’197 patent issued in 2006.
`
`This Notice of Appeal is being e-filed with the Clerk’s Office for the United
`
`States Court of Appeals for the Federal Circuit, along with payment of the required
`
`docketing fees. In addition, a copy of this Notice of Appeal is being filed
`
`simultaneously with the Patent Trial and Appeal Board and with the Director of the
`
`United States Patent and Trademark Office.
`
`2
`
`
`
`Case IPR2016-00822
`U.S. Patent No. 7,064,197
`
`
`
`Dated: November 29, 2017
`
`Respectfully submitted,
`
`/kkm/
`Kevin K. McNish (Reg. No. 65,047)
`kmcnish@desmaraisllp.com
`DESMARAIS LLP
`230 Park Avenue
`New York, NY 10169
`Telephone: 212-351-3400
`Facsimile: 212-351-3401
`
`Lead Counsel for Patent Owner
`Enzo Life Sciences, Inc.
`
`
`3
`
`
`
`Case IPR2016-00822
`U.S. Patent No. 7,064,197
`
`
`
`CERTIFICATE OF FILING
`
`The undersigned certifies that on November 29, 2017, in addition to filing
`
`the foregoing electronically through PTAB E2E, a copy of this Notice of Appeal
`was deposited with Priority Mail Express on November 29, 2017 for filing with the
`Director of the United States Patent and Trademark Office, at the following
`address:
`
`
`
`
`
`
`
`The undersigned also certifies that on November 29, 2017, a copy of this
`
`Notice of Appeal was filed electronically through the United States Court of
`Appeals for the Federal Circuit’s CM/ECF system.
`
`Dated: November 29, 2017
`
`Office of the Solicitor
`United States Patent and Trademark Office
`Mail Stop 8
`Post Office Box 1450
`Alexandria, Virginia 22313-1450
`
`Respectfully submitted,
`
`/kkm/
`Kevin K. McNish (Reg. No. 65,047)
`kmcnish@desmaraisllp.com
`DESMARAIS LLP
`230 Park Avenue
`New York, NY 10169
`Telephone: 212-351-3400
`Facsimile: 212-351-3401
`
`Lead Counsel for Patent Owner
`Enzo Life Sciences, Inc.
`
`
`
`
`
`
`
`
`
`
`
`Case IPR2016-00822
`U.S. Patent No. 7,064,197
`
`
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. § 42.6(e), the undersigned certifies that on November
`
`29, 2017, a complete copy of the foregoing was served on counsel of record for all
`parties by filing this document through PTAB E2E and by sending this document
`via electronic mail to the following addresses:
`
`For Petitioner Hologic:
`
`M. Paul Barker (Reg. No. 32,013)
`paul.barker@finnegan.com
`
`Arpita Bhattacharyya (Reg. No. 63,681)
`arpita.bhattacharyya@finnegan.com
`
`Thomas L. Irving (Reg. No. 28,619)
`tom.irving@finnegan.com
`
`
`Dated: November 29, 2017
`
`For Petitioner BD:
`
`Jamie T. Wisz (Reg. No. 58,429)
`Jamie.Wisz@WilmerHale.com
`
`Heather Petruzzi (Reg. No. 71,720)
`Heather.Petruzzi@WilmerHale.com
`
`Nancy Lynn Schroeder
`75,538)
`Nancy.Schroeder@WilmerHale.com
`
`Respectfully submitted,
`
`(Reg. No.
`
`
`
`/kkm/
`Kevin K. McNish (Reg. No. 65,047)
`kmcnish@desmaraisllp.com
`DESMARAIS LLP
`230 Park Avenue
`New York, NY 10169
`Telephone: 212-351-3400
`Facsimile: 212-351-3401
`
`Lead Counsel for Patent Owner
`Enzo Life Sciences, Inc.
`
`
`
`
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
