Filed December 12, 2017
`
`
`On behalf of Chemgene Holding ApS
`By: Kerry S. Taylor
`Eric S. Furman
`Nathanael R. Luman
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2040 Main Street, 14th Floor
`Irvine, CA 92614
`Tel.: 858-707-4000
`Email: BoxChemgene@knobbe.com
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2017-01599
`Patent 8,168,381
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________
`
`NUEVOLUTION A/S,
`
`Petitioner
`
`v.
`
`CHEMGENE HOLDING APS,
`
`Patent Owner
`
`
`
`PATENT OWNER CHEMGENE’S SUR-REPLY TO
`PETITIONER NUEVOLUTION’S REPLY
`
`
`
`
`
`
`
`
`
`
`
`
`On behalf of Chemgene Holding ApS
`By: Kerry S. Taylor
`Eric S. Furman
`Nathanael R. Luman
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2040 Main Street, 14th Floor
`Irvine, CA 92614
`Tel.: 858-707-4000
`Email: BoxChemgene@knobbe.com
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2017-01599
`Patent 8,168,381
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________
`
`NUEVOLUTION A/S,
`
`Petitioner
`
`v.
`
`CHEMGENE HOLDING APS,
`
`Patent Owner
`
`
`
`PATENT OWNER CHEMGENE’S SUR-REPLY TO
`PETITIONER NUEVOLUTION’S REPLY
`
`
`
`
`
`
`
`
`
`
`
`TABLE OF CONTENTS
`
`
`Page No.
`
`
`
`I.
`
`The “Each of Said” Limitations Require the Same Reaction Well, and
`Nuevolution’s Claim Construction Arguments Ignore These
`Limitations ....................................................................................................... 1
`
`II. The Definition of “Well” Does Not Delete the “Each of Said”
`Limitations ....................................................................................................... 2
`
`III. Nuevolution Wrongly Asserts That Chemgene Adds Claim
`Limitations ....................................................................................................... 6
`
`IV. Conclusion ....................................................................................................... 7
`
`i
`
`
`
`TABLE OF AUTHORITIES
`
`
`Page No(s).
`
`
`
`Amgen Inc. v. Hoechst Marion Roussel, Inc.,
`314 F.3d 1313 (Fed. Cir. 2003) ............................................................................ 5
`
`Constant v. Advanced Micro-Devices, Inc.,
`848 F.2d 1560 (Fed. Cir. 1988) ............................................................................ 5
`
`PPC Broadband, Inc. v. Corning Optical Commc’ns RF, LLC,
`815 F.3d 747 (Fed. Cir. 2016) .............................................................................. 5
`
`Phillips v. AWH Corp.,
`415 F.3d 1303 (Fed. Cir. 2005) (en banc) ........................................................ 4, 7
`
`Resonate Inc. v. Alteon Websystems, Inc.,
`338 F.3d 1360 (Fed. Cir. 2003) ............................................................................ 6
`
`Straight Path IP Group v. Sipnet EU S.R.O.,
`806 F.3d 1356 (Fed. Cir. 2015) ............................................................................ 2
`
`Texas Instruments Inc. v. United States Int’l Trade Comm’n,
`988 F.2d 1165 (Fed. Cir. 1993) ............................................................................ 3
`
`Trivascular, Inc. v. Samuels,
`812 F.3d 1056 (Fed. Cir. 2016) ............................................................................ 3
`
`Wi-Lan, Inc. v. Apple, Inc.,
`811 F.3d 455 (Fed. Cir. 2016) .............................................................................. 2
`
`OTHER AUTHORITIES
`
`37 C.F.R. § 42.23 ....................................................................................................... 4
`
`
`
`ii
`
`
`
`IPR2017-01599
`Nuevolution v. Chemgene
`
`
`
`The Preliminary Response (“POPR”) highlighted numerous problems with
`
`the Petition. By seeking authorization for a Reply, Nuevolution apparently agrees
`
`that the Petition is seriously flawed. Nuevolution was given three chances to
`
`address the claim language (i.e., the Petition, the November 14 call with the Board,
`
`and its Reply). But Nuevolution still has not accounted for the “each of said”
`
`claim language in the “each of said reaction wells” limitations. Nuevolution’s
`
`Reply presents a nonsensical lexicographer argument concerning “wells” that is
`
`orthogonal to whether or not the cited references meet the “each of said” claim
`
`language. To date, Nuevolution has not taken the elementary step of explaining
`
`how the “each of said” claim language is met by its references. Nuevolution’s
`
`Reply does not fix this or any of the other problems with its Petition.
`
`I. The “Each of Said” Limitations Require the Same Reaction Well, and
`Nuevolution’s Claim Construction Arguments Ignore These Limitations
`
`Claim 1 is defined by eight steps (a) to (h), and eight additional wherein
`
`clauses. Ex-1001 at 135:34-136:52. Steps (a) to (c) recite:
`
`a) Adding a linker molecule L to one or more reaction wells;
`b) Adding a molecule fragment to each of said reaction wells;
`c) Adding an oligonucleotide identifier to each of said reaction wells;
`
`Id. at 135:36-49 (emphases added); see also id. at 137:43-48 (Claim 5).
`
`The Federal Circuit has explained the well-settled principle of claim
`
`construction that “[s]ubsequent use of the definite articles ‘the’ or ‘said’ in a claim
`
`1
`
`
`
`IPR2017-01599
`Nuevolution v. Chemgene
`
`refers back to the same term recited earlier in the claim.” Wi-Lan, Inc. v. Apple,
`
`Inc., 811 F.3d 455, 462 (Fed. Cir. 2016). Thus, the phrase “each of said reaction
`
`wells” recited in steps (b) and (c) refers back to the “one or more reaction wells” of
`
`step (a). Id. Thus, the construction of “each of said reaction wells”
`
`unambiguously means that the synthesis of any particular bifunctional
`
`molecule according to steps (a) to (c) is conducted within the same reaction
`
`well. The claims encompass the synthesis of multiple bifunctional molecules in
`
`different wells, so long as the same well is used in steps (a) to (c) for each
`
`particular bifunctional molecule. Ex-1001 at 59:30-46, Fig. 1; POPR at 7-10.
`
`The “each of said” recitation is clear on its face. “When claim language has
`
`as plain a meaning on an issue as the language does here, leaving no genuine
`
`uncertainties on interpretive questions relevant to the case, it is particularly
`
`difficult to conclude that the specification reasonably supports a different
`
`meaning.” Straight Path IP Group v. Sipnet EU S.R.O., 806 F.3d 1356, 1361 (Fed.
`
`Cir. 2015). Nuevolution failed to present any arguments construing the “each of
`
`said” limitations at any point in this proceeding, and Nuevolution has not
`
`demonstrated that a non-standard meaning should be applied to these limitations.
`
`II. The Definition of “Well” Does Not Delete the “Each of Said”
`Limitations
`
`Nuevolution’s claim construction position seeks to construe the claims by
`
`focusing on the specification’s definition of one term (“wells”) without any
`
`2
`
`
`
`IPR2017-01599
`Nuevolution v. Chemgene
`
`consideration for the “each of said” limitations. Reply at 1-6. This position is
`
`completely improper and does not comply with the broadest reasonable
`
`interpretation standard. See Trivascular, Inc. v. Samuels, 812 F.3d 1056, 1062
`
`(Fed. Cir. 2016) (“Construing individual words of a claim without considering the
`
`context in which those words appear is simply not ‘reasonable.’”). Nuevolution’s
`
`position should be rejected because it improperly seeks to broaden the claims by
`
`removing the “each of said” limitations. Texas Instruments Inc. v. United States
`
`Int’l Trade Comm’n, 988 F.2d 1165, 1171 (Fed. Cir. 1993) (“[T]o construe the
`
`claims in the manner suggested by [the party] would read an express limitation out
`
`of the claims. This, we will not do because courts can neither broaden nor narrow
`
`claims to give the patentee something different than what he has set forth.”).
`
`Nuevolution correctly recites the specification’s express definition of “well.”
`
`Reply at 3. This definition states “a physical containment of reagents, molecule
`
`fragments etc. in a localized space” that “include[s] the well of a microtiter plate,
`
`any container… a reagent tube, a bead to which the reagents and molecules to be
`
`kept separated are attached, and any other type of well that separates different
`
`compositions of reagents, molecule fragments etc. as desired.” Ex-1001 at 4:51-
`
`5:4. Nothing in the definition of “wells” eliminates or contradicts the “each of
`
`said” claim limitations. That is, nothing in this definition leads to a construction of
`
`“each of said reaction wells” where reactants for each bifunctional molecule are
`
`3
`
`
`
`IPR2017-01599
`Nuevolution v. Chemgene
`
`conveyed to different wells for each of steps (a) to (c) (such as by adding a linker
`
`molecule L and a molecule fragment to a first reaction well, then removing the
`
`reaction product from the first reaction well, and then placing the reaction product
`
`into a second well to react with an oligonucleotide identifier). See POPR at 7-10.
`
`Nuevolution’s
`
`lexicographer argument
`
`is confusing, unclear, and
`
`incomplete. Nuevolution cites the definition of “wells” from the specification, but
`
`never explains how that definition leads to a construction where, for example, steps
`
`(a) and (b) are conducted in one well, and step (c) is conducted in another well. If
`
`Nuevolution’s prior art theories were predicated on a “lexicographer” claim
`
`construction, such a construction should have been presented in the Petition. 37
`
`C.F.R. § 42.23(b). But this argument was not presented in the Petition or in the
`
`call with the Board. Instead, Nuevolution has presented a moving target of claim
`
`construction at every point in this proceeding, and these shifting-sand positions
`
`exemplify Nuevolution’s ongoing use of litigation tactics to harass Chemgene and
`
`waste the Board’s and Chemgene’s resources.
`
`Nuevolution alleges Examples 1 and 12 disclose reactions not conducted
`
`within the same well, and the claims must encompass these select embodiments.
`
`Reply at 4-5. Nuevolution’s argument commits “one of the cardinal sins of patent
`
`law—reading a limitation from the written description into the claims.” Phillips v.
`
`AWH Corp., 415 F.3d 1303, 1320 (Fed. Cir. 2005) (en banc). The Federal Circuit
`
`4
`
`
`
`IPR2017-01599
`Nuevolution v. Chemgene
`
`“precedent is clear that claims are not perforce limited to the embodiments
`
`disclosed in the specification.” Amgen Inc. v. Hoechst Marion Roussel, Inc., 314
`
`F.3d 1313, 1328 (Fed. Cir. 2003). “[P]articular embodiments and examples
`
`appearing in the specification will not generally be read into the claims.” Constant
`
`v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1571 (Fed. Cir. 1988).
`
`The ’381 patent contains 108 columns of text, along with 15 figures and 88
`
`sequence listings. This disclosure describes numerous embodiments. Some
`
`disclosed embodiments fall within the “each of said reaction wells” limitations,
`
`while others do not. The “each of said reaction wells” limitations are supported by
`
`numerous embodiments throughout the specification. See, e.g., Ex-1001 at
`
`Abstract (reciting “each of said reaction wells” twice); id. at 2:12-17 (providing
`
`ipsis verbis support for the claim language); id. at 8:23-28 (disclosing “each of
`
`said” limitations); id. at 59:30-46 (describing Figure 1); id. at Fig. 1 (showing
`
`addition of linker molecule L, molecule fragments R and oligonucleotide
`
`identifiers being added to the same reaction wells); id. at 53:4-8 (reciting “each of
`
`said m reaction wells”); POPR at 8-9 (discussing Fig. 1 and corresponding text).
`
` The claims encompass the embodiments of Figure 1. Nuevolution’s
`
`arguments that the claims must also encompass Examples 1 and 12 are meritless
`
`because “[t]he fact that one construction may cover more embodiments than
`
`another does not categorically render that construction reasonable.” PPC
`
`5
`
`
`
`IPR2017-01599
`Nuevolution v. Chemgene
`
`Broadband, Inc. v. Corning Optical Commc’ns RF, LLC, 815 F.3d 747, 755 (Fed.
`
`Cir. 2016). Nuevolution cannot use Examples 1 and 12 to try to eliminate the “each
`
`of said” requirement from the claims because “the written description is not a
`
`substitute for, nor can it be used to rewrite, the chosen claim language.” Resonate
`
`Inc. v. Alteon Websystems, Inc., 338 F.3d 1360, 1364 (Fed. Cir. 2003).
`
`
`
`III. Nuevolution Wrongly Asserts That Chemgene Adds Claim Limitations
`Nuevolution argues that Chemgene adds unrecited limitations to the claims.
`
`Reply at 6-7. This is not true. Chemgene identified the benefits of using the same
`
`reaction well for the synthesis of bifunctional molecules, and these benefits are
`
`missing from Nuevolution’s Petition. Nuevolution’s Petition relies on numerous
`
`examples of multi-step reactions that were conducted in different reaction wells to
`
`argue unpatentability of the claimed invention that conducts steps (a) to (c) within
`
`the same reaction well. Nuevolution’s Reply does not dispute that its references
`
`disclose reactions conducted in different reaction wells. Indeed, Nuevolution was
`
`unable to cite a single prior art example of a multi-step reaction conducted within
`
`the same reaction well.
`
`The prior art disclosures of multi-step reactions that conduct synthetic steps
`
`within different reaction wells use different concentrations, solvents, pH and
`
`scales. See, e.g., POPR at 22-26, 31-32, 37-41, 46-47, 52-54, 57-58, 60-61. The
`
`prior art purifies and isolates reaction intermediates to prevent left-over reactive
`
`6
`
`
`
`IPR2017-01599
`Nuevolution v. Chemgene
`
`species from being carried over into a subsequent reaction and causing unwanted
`
`cross-reactions. Id. The Petition provides no discussion for how these multi-step
`
`reactions (which occur in different reaction wells) could be modified to be
`
`conducted within the same reaction well. The processes recited in Claims 1 and 5
`
`that synthesize bifunctional molecules within the same reaction well are therefore
`
`novel and nonobvious over Nuevolution’s cited references.
`
`Nuevolution’s Reply points to some examples from the ’381 patent to
`
`reiterate its argument that the “each of said” limitation should be removed from the
`
`claim. Reply at 6-7. As previously discussed, Nuevolution’s argument improperly
`
`seeks to read limitations from the specification into the claims. Phillips, 415 F.3d
`
`at 1320; supra Section II. The claims are fully supported by the specification
`
`(supra Section II), and Nuevolution’s insistence that the claims encompass the
`
`embodiments disclosed in certain examples runs contrary to the claim language.
`
`IV. Conclusion
`Nuevolution’s Petition and Reply fail to take the elementary step of
`
`addressing the “each of said” claim limitations. Nuevolution’s failure to address
`
`the claim language itself is a per se failure to construe the claims. Thus,
`
`Nuevolution’s Reply repeats the same failure that is fatal to Nuevolution’s Petition.
`
`The Preliminary Response articulated numerous additional and independent
`
`reasons to deny the Petition. Nuevolution’s Petition should therefore be denied.
`
`7
`
`
`
`IPR2017-01599
`Nuevolution v. Chemgene
`
`
`
`
`
`Dated: December 12, 2017
`
`
`
`Respectfully submitted,
`
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`
`
`
`By: /Kerry Taylor/
`Kerry Taylor (Reg. No. 43,947)
`Eric S. Furman (Reg. No. 45,664)
`Nathanael R. Luman (Reg. No. 63,160)
`Attorneys for Patent Owner
`Chemgene Holding ApS
`
`
`
`8
`
`
`
`IPR2017-01599
`Nuevolution v. Chemgene
`
`CERTIFICATE OF SERVICE
`I hereby certify that, pursuant to 37 C.F.R. § 42.6(e)(1) and agreement of the
`
`
`
`parties, a true and correct copy of PATENT OWNER CHEMGENE’S SUR-
`
`REPLY TO PETITIONER NUEVOLUTION’S REPLY is being served via
`
`email on December 12, 2017, to counsel for Nuevolution A/S at the email
`
`addresses below:
`
`Andrew O. Larsen
`alarsen@merchantgould.com
`Christopher J. Sorenson
`csorenson@merchantgould.com
`Emily M. Wessels
`ewessels@merchantgould.com
`Benjamin H. Graf
`bgraf@merchantgould.com
`NuevolutionIPR@merchantgould.com
`
`MERCHANT & GOULD PC
`767 Third Ave., 23rd Floor
`New York, NY 10017
`
`By: /Kerry Taylor/
`Kerry Taylor (Reg. No. 43,947)
`Eric S. Furman (Reg. No. 45,664)
`Nathanael R. Luman (Reg. No. 63,160
`Attorneys for Patent Owner
`Chemgene Holding ApS
`
`
`
`
`
`
`Dated: December 12, 2017
`
`
`
`
`27209523
`
`
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
