`
`By: Daniel M. Becker, Reg. No. 38,376
`
`Jennifer R. Bush, Reg. No. 50,784
`
`Fenwick & West LLP
`
`801 California Street
`
`Mountain View, CA 94041
`
`Tel: (650) 988-8500
`
`Fax: (650) 938-5200
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________
`
`ANCESTRY.COM DNA, LLC,
`Petitioner
`
`v.
`
`DNA GENOTEK INC.,
`Patent Owner.
`
`Inter Partes Review No. IPR2016-01152
`Patent 8,221,381 B2
`_____________
`
`PETITIONER ANCESTRY.COM DNA, LLC’S
`REQUEST FOR REHEARING AND RECONSIDERATION
`UNDER 37 C.F.R. § 42.71(d)
`
`
`
`
`IPR2016-01152
`Patent 8,221,381 B2
`Request for Rehearing and Reconsideration
`
`
`
`TABLE OF CONTENTS
`
`
`I.
`II.
`
`INTRODUCTION .......................................................................................... 1
`LEGAL STANDARDS .................................................................................. 1
`A.
`The Standard of Review for Rehearing ................................................ 1
`The Standard for Instituting Inter Partes Review ................................ 2
`B.
`III. ARGUMENT .................................................................................................. 3
`A.
`The Board Erred in Not Considering All Evidence Related to
`Motivation to Combine Birnboim and O’Donovan ............................. 3
`The Board Erred By Not Employing the Obviousness Analysis from
`Graham v. John Deere ......................................................................... 8
`The Board Erred In Misapplying In re Kahn to the Obviousness
`Analysis .............................................................................................. 10
`IV. CONCLUSION ............................................................................................. 14
`
`B.
`
`C.
`
`i
`
`
`
`
`
`IPR2016-01152
`Patent 8,221,381 B2
`Request for Rehearing and Reconsideration
`
`
`
`TABLE OF AUTHORITIES
`
`CASES
`Atl. Research Mktg. Sys. v. Troy,
`659 F.3d 1345 (Fed. Cir. 2011) .............................................................................. 1
`
`Graham v. John Deere,
`383 U.S. 1 (1966) ...............................................................................................8, 9
`
`In re Kahn,
`441 F.3d 977 (2006) ............................................................................ 9, 10, 11, 13
`
`KSR Int'l Co. v. Teleflex Inc.,
`550 U.S. 398 (2007) ...........................................................................................4, 9
`
`PPG Indus. Inc. v. Celanese Polymer Specialties Co. Inc.,
`840 F.2d 1565 (Fed. Cir. 1988) .............................................................................. 2
`
`Renda Marine, Inc. v. U.S.,
`509 F.3d 1372 (Fed. Cir. 2007) .............................................................................. 1
`
`United States v. Bradshaw,
`281 F.3d 278 (1st Cir. 2002) .................................................................................. 2
`
`STATUTES
`
`35 U.S.C. § 102 .......................................................................................................... 2
`
`35 U.S.C. § 103 ......................................................................................................2, 8
`
`35 U.S.C. § 314(a) ..................................................................................................... 2
`
`
`
`ii
`
`
`
`IPR2016-01152
`Patent 8,221,381 B2
`Request for Rehearing and Reconsideration
`
`
`
`OTHER AUTHORITIES
`
`Office Patent Trial Guide,
`Fed. Reg. Vol. 77 at 48757 (August 14, 2012) ...................................................... 1
`
`Office Patent Trial Guide,
`Fed. Reg. Vol. 77 at 48765 (August 14, 2012) ...................................................... 3
`
`Office Patent Trial Practice Guide (August 14, 2012) .............................................. 2
`
`REGULATIONS
`
`37 C.F.R. § 42.71(d) .................................................................................................. 1
`
`37 C.F.R. § 42.71(d)(2) .............................................................................................. 1
`
`37 C.F.R. § 42.104 ..................................................................................................... 2
`
`37 C.F.R. §42.108 ...................................................................................................... 2
`
`37 C.F.R. §42.108(c) .................................................................................................. 2
`
`37 C.F.R. §42.71(c) .................................................................................................... 1
`
`iii
`
`
`
`IPR2016-01152
`Patent 8,221,381 B2
`Request for Rehearing and Reconsideration
`
`INTRODUCTION
`
`
`
`I.
`
`On November 23, 2016, the Board issued its Decision Denying Institution of
`
`Inter Partes Review in IPR2016-01152 (Paper 11) (“Decision”). This request
`
`respectfully seeks rehearing of the Decision for factual and legal errors discussed
`
`in detail below. This request is authorized under 37 C.F.R. § 42.71(d), and prior
`
`authorization by the Board is not required for filing such a request. This paper is
`
`timely filed within the 30-day period set forth in 37 C.F.R. § 42.71(d)(2).
`
`II. LEGAL STANDARDS
`A. The Standard of Review for Rehearing
`“A party dissatisfied with the Board’s determination to institute trial may
`
`request a hearing as to points believed to have been overlooked or
`
`misapprehended.” Office Patent Trial Guide, Fed. Reg. Vol. 77 at 48757 (August
`
`14, 2012); see also 37 C.F.R. §42.71(c) and (d). Under 37 C.F.R. §42.71(d),
`
`“[w]hen rehearing a decision on petition, a panel will review the decision for an
`
`abuse of discretion.” An abuse of discretion “occurs when a court misunderstands
`
`or misapplies the relevant law” or makes erroneous factual findings. Renda
`
`Marine, Inc. v. U.S., 509 F.3d 1372, 1379 (Fed. Cir. 2007). “A decision based on
`
`an erroneous view of the law … invariably constitutes an abuse of discretion.” Atl.
`
`Research Mktg. Sys. v. Troy, 659 F.3d 1345, 1359 (Fed. Cir. 2011), citing United
`
`1
`
`
`
`IPR2016-01152
`Patent 8,221,381 B2
`Request for Rehearing and Reconsideration
`
`
`
`States v. Bradshaw, 281 F.3d 278, 291 (1st Cir. 2002). Additionally, an abuse of
`
`discretion occurs where a “decision was based on … clearly erroneous factual
`
`findings.” PPG Indus. Inc. v. Celanese Polymer Specialties Co. Inc., 840 F.2d
`
`1565, 1567 (Fed. Cir. 1988). As discussed below, the Board’s decision to deny
`
`institution included both an erroneous factual finding, and an erroneous view of the
`
`law of obviousness.
`
`B.
`The Standard for Instituting Inter Partes Review
`Under 35 U.S.C. § 314(a), as implemented by 37 C.F.R. §42.108, an inter
`
`partes review will be “instituted for a ground of unpatentability” where the Board
`
`decides that the evidence put forward in a petition “shows that there is a
`
`reasonable likelihood that the petitioner would prevail with respect to at least one
`
`of the claims challenged in the petition.” Office Patent Trial Practice Guide
`
`(August 14, 2012) (emphasis added); 37 C.F.R. §42.108(c) (identifying “sufficient
`
`grounds” for institution). The petition must identify “the specific statutory grounds
`
`under 35 U.S.C. 102 or 103 on which the challenge to the claim is based and the
`
`patents or printed publications relied upon for each ground” and “must specify
`
`where each element of the claim is found in the prior art patents or printed
`
`publications relied upon.” 37 C.F.R. § 42.104. In determining whether there is a
`
`2
`
`
`
`IPR2016-01152
`Patent 8,221,381 B2
`Request for Rehearing and Reconsideration
`
`
`
`“reasonable likelihood that petitioner would prevail,” the Board considers the
`
`contents of the petition and any preliminary response filed by the Patent Owner.
`
`Office Patent Trial Guide, Fed. Reg. Vol. 77 at 48765 (August 14, 2012).
`
`III. ARGUMENT
`A. The Board Erred in Not Considering All Evidence Related to
`Motivation to Combine Birnboim and O’Donovan
`
`In its Decision, the Board concluded that Petitioner provided no clear
`
`explanation of “which features of O’Donovan’s container are to be incorporated
`
`into Birnboim’s container, or how, or why.” Decision at 10. Petitioner
`
`respectfully submits that this statement is an erroneous factual finding, because
`
`Petitioner addressed each of these questions in the Petition. Thus, Petitioner
`
`contends that the Board erred because it does not appear to have considered all
`
`evidence of record.
`
`First, Petitioner stated which features of O’Donovan are to be incorporated
`
`into Birnboim’s container in the Petition. Petitioner noted that “Birnboim
`
`discloses all elements of ’381 claim 1 except [1.5], which limits the shape of the
`
`piercing member, and the positioning of reservoir [1.7] within lid [1.6]. See Ex.
`
`1003 ¶ 107. As discussed below, elements [1.5] and [1.6]/[1.7] are disclosed in
`
`O’Donovan.” Pet. at 29.
`
`3
`
`
`
`IPR2016-01152
`Patent 8,221,381 B2
`Request for Rehearing and Reconsideration
`
`
`
`Similarly, Petitioner noted that “O’Donovan is relied upon only for elements
`
`[1.5] and [1.6]/[1.7]. These elements are readily found in O’Donovan: the PTAB
`
`has already instituted trial of claim 1 as anticipated by O’Donovan in the first
`
`IPR.” Pet. at 73. Thus, Petitioner respectfully submits that which features of
`
`O’Donovan are to be incorporated into Birnboim’s device were articulated as
`
`limitations [1.5] and [1.6]/[1.7].
`
`As to how these limitations would be incorporated into Birnboim, Petitioner
`
`explained that the combination would “position the reservoir in the lid.” Pet. at 61.
`
`Petitioner further noted that O’Donovan discloses “chamber 2 [with] multiple
`
`spikes 20” in the claimed shape and configuration for piercing the reservoir
`
`positioned within the lid. Pet. at 40-42. Thus, Petitioner respectfully submits that
`
`the Petition also described how the relevant limitations of O’Donovan would be
`
`incorporated into Birnboim’s container.
`
`As to why such combination would have been made, it is well-established
`
`that one of the ways in which a “[p]atent's subject matter can be proved obvious is
`
`by noting that there existed at the time of invention a known problem for which
`
`there was an obvious solution encompassed by the patent's claims.” KSR Int'l Co.
`
`v. Teleflex Inc., 550 U.S. 398, 419-20 (2007).
`
`4
`
`
`
`IPR2016-01152
`Patent 8,221,381 B2
`Request for Rehearing and Reconsideration
`
`
`
`Petitioner identified in detail such a known problem in the prior art
`
`Birnboim spit kit:
`
`As admitted by Patent Owner in the background section of the
`
`’381 patent, the preferred embodiment exemplified in Birnboim had
`
`readily recognizable problems: “[a] drawback of this container is that
`
`it includes multiple parts..., which increases the cost of manufacture of
`
`the container. Additionally, because the disk is held in place by
`
`friction fit, there must be a high degree of precision for the
`
`manufacture of the components of the container.” Ex. 1001, 1:66-2:4.
`
`Accordingly, prior to the effective date of the ’381 patent, “[t]here
`
`remain[ed] a need for an improved container system for releasably
`
`and reliably storing a substance. Ex. 1001, 2:5-6.”
`
`Pet. at 7, 35.
`
`Petitioner’s expert agrees with the ’381 Patent Owner: the
`
`preferred embodiment in Birnboim suffered from these readily
`
`recognizable problems. Ex. 1003 ¶ 108. Although Birnboim itself
`
`suggests a modification to Birnboim’s primary embodiment to solve
`
`this problem, via an alternative embodiment in which “the barrier may
`
`be a septum … that would separate the composition from the fluid
`
`5
`
`
`
`IPR2016-01152
`Patent 8,221,381 B2
`Request for Rehearing and Reconsideration
`
`
`
`until the septum ... is pierced” (Ex.1008, 23:29-31) or “punctured”
`
`(Ex. 1008, 9:11), that solution is incomplete: Birnboim does not
`
`disclose how, in such embodiment, the “means for closing the
`
`container may be coupled to the disestablishment of the barrier. Ex.
`
`1008, 24:8-9.”
`
`Pet. at 35-36. As referenced in the excerpt quoted above, this identification
`
`of known problems in the prior art was supported by Petitioner’s expert
`
`declaratory evidence. Ex. 1003 at ¶¶ 107-112.
`
`Petitioner also identified the “obvious solution encompassed by the patent's
`
`claims” — combination with features drawn from O’Donovan, a reference that the
`
`same panel of the Board had already concluded anticipates the ’381 patent’s
`
`broadest claim. Pet. at 2.
`
`Petitioner did not rely only on the Board’s prior finding in IPR2016-00060
`
`that O’Donovan discloses all of the limitations of ’381 claim 1. Petitioner
`
`explained, in detail, why a POSITA addressing the known problem in the
`
`Birnboim prior art would have sought a solution from among the “‘variety of
`
`containers’ [that] had been developed prior to the ’381 patent’s earliest claimed
`
`filing date ‘for holding substances separately in such a manner that a user may
`
`6
`
`
`
`IPR2016-01152
`Patent 8,221,381 B2
`Request for Rehearing and Reconsideration
`
`
`
`open a closure to combine the substances’” (Pet. at 8), and more specifically, from
`
`the subset of that art describing the “[r]outine[ ]” solution to such a problem,
`
`“storing the substance within the container’s lid, with the contents released from
`
`the lid by attachment of the lid to the body of the container—optionally with a
`
`further advancement of the lid, or of lid components, toward the container body....”
`
`Pet. at 8. See also Pet. at 8-11. Petitioner explicitly explained that “[t]he ’381
`
`Patent Owner employed this routine configuration to solve the admitted drawbacks
`
`and deficiencies of the earlier Birnboim spit kit.” Pet. at 11. Routine solutions are
`
`obvious solutions.
`
`Petitioner respectfully submits that the Board erred because it does not
`
`appear to have considered this evidence of record. The Board also did not cite to
`
`or appear to credit the additional evidence on Petition pages 40, 61, 66, and 73.
`
`Petitioner respectfully submits that the Board further erred by characterizing
`
`Petitioner’s quotation of controlling legal principles as mere “conclusory
`
`statements [that] are nothing more than a restatement of basic tests identified by
`
`the Supreme Court for determining whether an invention would have been
`
`obvious.” Decision at 10. As discussed above, Petitioner explained the which, the
`
`how, and the why of the asserted combination, and also articulated that the
`
`O’Donovan approach, “used to improve one device,” would have been recognized
`
`7
`
`
`
`IPR2016-01152
`Patent 8,221,381 B2
`Request for Rehearing and Reconsideration
`
`
`
`to be useful “to improve [the Birnboim] similar devices in the same way.” Pet. at
`
`66, citing KSR at 415. Petitioner submits that it is legal error to hold, as the Board
`
`has done, that quoting controlling legal principles renders that precedent less
`
`controlling.
`
`It is difficult to assert that a POSITA would not have been motivated to so
`
`combine these references, given that O’Donovan solves the known problem in the
`
`Birnboim prior art with a “routine” — that is to say, obvious — solution. Indeed,
`
`the combination of these references shows “the progression of Birnboim’s
`
`development of a spit kit container … from initially using a pivoting partition as
`
`disclosed in Birnboim, to a known method of piercing a barrier as shown by
`
`O’Donovan.” Pet. at 73. Thus, Petitioner respectfully requests that the Board
`
`reconsider this finding.
`
`B.
`
`The Board Erred By Not Employing the Obviousness Analysis
`from Graham v. John Deere
`
`In assessing whether subject matter would have been obvious under § 103,
`
`the Board follows the guidance of the Supreme Court in Graham v. John Deere
`
`Co. The Board determines “the scope and content of the prior art,” ascertains “the
`
`differences between the prior art and the claims at issue,” and resolves “the level of
`
`ordinary skill in the pertinent art.” Against this background, the Board determines
`
`8
`
`
`
`IPR2016-01152
`Patent 8,221,381 B2
`Request for Rehearing and Reconsideration
`
`
`
`whether the subject matter would have been obvious to a person of ordinary skill in
`
`the art at the time of the asserted invention. See Graham v. John Deere, 383 U.S. 1,
`
`17 (1966).
`
`The Board made several statements about the scope and content of prior art
`
`references Birnboim and O’Donovan, but did not explicitly identify the differences
`
`between the prior art and the claims at issue. Petitioner showed that the
`
`combination of Birnboim and O’Donovan discloses all claimed limitations, and the
`
`Patent Owner did not challenge that any of the elements were missing from the
`
`cited references. Instead, the Board stated that “[i]t [was] not sufficient … to
`
`demonstrate that each of the claim elements is known.” Decision at 8, citing KSR.
`
`The Board also did not discuss the relevant level of skill in the art.
`
`Petitioner proffered that a POSITA “would have at least a bachelor of science
`
`degree in an engineering field, such as mechanical engineering, and several years
`
`of experience designing collection devices for the medical field.” Ex. 1003 at ¶ 20.
`
`Next, with respect to the determination of obviousness, the Board seemed to
`
`rely solely on In re Kahn’s articulation of showing “some articulated reasoning
`
`with some rational underpinning to support the legal conclusion of obviousness.”
`
`Decision at 9, citing In re Kahn. The Board did not consider whether the subject
`
`matter would have been obvious to a person of ordinary skill in the art at the time
`
`9
`
`
`
`IPR2016-01152
`Patent 8,221,381 B2
`Request for Rehearing and Reconsideration
`
`
`
`of the asserted invention, against the backdrop of the considerations of the
`
`differences between the prior art and the claims at issue and the level of ordinary
`
`skill in the pertinent art, since it did not look to those factors.
`
`Considering that all elements were shown in the prior art references,
`
`Petitioner respectfully submits that it showed in the Petition that the claimed
`
`subject matter would indeed have been obvious to a POSITA, and backed up this
`
`claim with expert testimony. That is all that is required here.
`
`C. The Board Erred In Misapplying In re Kahn to the Obviousness
`Analysis
`
`The Board concluded that Petitioner did not articulate a “rational
`
`underpinning” to support the legal conclusion of obviousness, but appears to have
`
`misapplied the relevant standard from In re Kahn.
`
`As articulated in In re Kahn, the motivation-suggestion-teaching test asks
`
`not merely what the references disclose, but whether a person of ordinary skill in
`
`the art, possessed with the understandings and knowledge reflected in the prior art,
`
`and motivated by the general problem facing the inventor, would have been led to
`
`make the combination recited in the claims. In Re Kahn, 441 F.3d 977, 988
`
`(2006).
`
`10
`
`
`
`IPR2016-01152
`Patent 8,221,381 B2
`Request for Rehearing and Reconsideration
`
`
`
`As noted in In re Kahn, “the Board need only establish motivation to
`
`combine by a preponderance of the evidence to make its prima facie case.” In re
`
`Kahn, 441 F.3d at 989. Just as in In re Kahn, the evidence of a “rational
`
`underpinning” provided by Petitioner presented “far more than a “mere scintilla”
`
`of evidence present from which a reasonable mind could find a motivation to
`
`combine.” See id.
`
`In In re Kahn, the problem identified as facing the inventor of the primary
`
`reference (Andersen) was in fact solved by the express teachings of the secondary
`
`reference (Stanton), which was deemed sufficient to exceed the “far more than a
`
`mere scintilla” standard. In Re Kahn, 441 F.3d at 989-90.
`
`Likewise, Petitioner respectfully submits that the Petition provided evidence
`
`that O’Donovan provided an explicit solution to the problem facing the inventor of
`
`the Birnboim reference, and within the same field of endeavor. Pet. at 36-37.
`
`Finally, even if the Board had correctly determined a POSITA would not
`
`have been motivated to substitute improvements in O’Donovan for the explicitly
`
`recognized deficiencies in Birnboim, Petitioner respectfully submits that the Board
`
`also overlooked evidence in the Petition of the converse: a person of ordinary skill
`
`would have been motivated to add two minor elements of Birnboim to O’Donovan
`
`for several reasons.
`
`11
`
`
`
`IPR2016-01152
`Patent 8,221,381 B2
`Request for Rehearing and Reconsideration
`
`
`
`First, with respect to dependent claim 9 of the ’381 patent, the collection of
`
`approximately 1-16 ml of sample, O’Donovan itself practically discloses this claim
`
`element, for example, providing for “a first chamber 2 of approximately 64 mm
`
`height.” Ex. 1007 at 2:41-42. Combined with the other apparent dimensions of
`
`Figures 1-4 and the other descriptions in O’Donovan, it is clear that O’Donovan
`
`alone informed a POSITA that it covered collecting, e.g., 1 ml of samples, all that
`
`is needed to satisfy Claim 9. But even if it did not, a person of ordinary skill
`
`would have been motivated to look to similar two-compartment collection devices
`
`like Birnboim to meet this basic need for virtually any collection of blood—which,
`
`as Petitioner’s expert has explained in various proceedings between the parties,
`
`would typically involve collection of a few drops of blood in any routine test, or
`
`about 1 ml of sample. Indeed, it is hard to imagine a blood test not involving the
`
`collection of anywhere in the broad range of approximately 1-16 ml of sample.
`
`This would have required a simple and de minimis, if any, change to the
`
`O’Donovan design to slightly (if at all) enlarge the vial to permit the collection of,
`
`e.g., 1 ml of sample.
`
`Second, a POSITA would similarly have been motivated to look to devices
`
`such as Birnboim to meet the requirements of dependent claim 40 of the ’381, the
`
`collection of DNA or RNA. At the time of the O’Donovan invention, DNA
`
`12
`
`
`
`IPR2016-01152
`Patent 8,221,381 B2
`Request for Rehearing and Reconsideration
`
`
`
`collection was a burgeoning industry and would have been a likely use for the
`
`collection of blood, even for a device such as O’Donovan whose preferred (but by
`
`no means only) embodiment was optical scanning in a point-of-care setting. It
`
`would have been obvious to a person of ordinary skill to look to references such as
`
`Birnboim—which was a two-compartment system for the collection of biological
`
`samples, and which expressly discussed the collection of DNA or RNA—to apply
`
`the O’Donovan invention to this simple additional use. Indeed, as the Board has
`
`found, O’Donovan implicitly teaches that its lid is configured to be removable
`
`(see, e.g., IPR2016-00060, Institution Decision (Paper 19), at 9), permitting DNA
`
`testing in any ordinary use of the invention in the lab. This would have required no
`
`modification of O’Donovan at all, only use of the very same device for a different
`
`purpose.
`
`Because the Board overlooked the factual evidence in the Petition that
`
`O’Donovan could have been easily modified (if at all) to also accomplish these two
`
`minor additional elements, Petitioner respectfully requests that rehearing should be
`
`granted on this additional basis as well. See, e.g., In Re Kahn, 441 F.3d at 989-90.
`
`
`
`13
`
`
`
`IPR2016-01152
`Patent 8,221,381 B2
`Request for Rehearing and Reconsideration
`
`
`
`IV. CONCLUSION
`For the foregoing reasons, Petition respectfully requests that the Board
`
`institute inter partes review on the Grounds set forth in the Petition.
`
`
`
`Respectfully submitted,
`
`FENWICK & WEST LLP
`801 California Street
`Mountain View, CA 94041
`jbush-ptab@fenwick.com
`Telephone: 650-988-8500
`Facsimile: 650-938-5200
`
`By: /Jennifer R. Bush/
`
`Jennifer R. Bush (Reg. No. 50,784)
`
`
`
`Attorneys for Petitioner
`ANCESTRY.COM DNA, LLC
`
`14
`
`
`
`
`
`Dated: December 23, 2016
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2016-01152
`Patent 8,221,381 B2
`Request for Rehearing and Reconsideration
`
`
`
`CERTIFICATION OF SERVICE
`
`I, Jennifer R. Bush, hereby certify that on December 23, 2016, I caused the
`
`foregoing PETITIONER ANCESTRY.COM DNA, LLC’S REQUEST FOR
`
`REHEARING AND RECONSIDERATION UNDER 37 C.F.R. § 42.71(d) to be
`
`served by email on the following counsel of record for the Patent Owner:
`
`60414-381-IPR@mofo.com
`Brian M. Kramer
`Peng Chen
`Desmond P. O’Sullivan
`Morrison & Foerster LLP
`12531 High Bluff Drive, Suite 100
`San Diego, CA 92130
`
`
`
`FENWICK & WEST LLP
`801 California Street
`Mountain View, CA 94041
`jbush-ptab@fenwick.com
`Telephone: 650-988-8500
`Facsimile: 650-938-5200
`
`By: /Jennifer R. Bush/
`
`Jennifer R. Bush (Reg. No. 50,784)
`
`
`
`Attorneys for Petitioner
`ANCESTRY.COM DNA, LLC
`
`15
`
`
`
`
`
`Dated: December 23, 2016