`
`
`
`Appeal Nos. 2019-2302, -2303, -2304, -2305, -2452
`
`IN THE UNITED STATES COURT OF APPEALS
`FOR THE FEDERAL CIRCUIT
`
`THE TRUSTEES OF COLUMBIA UNIVERSITY
` IN THE CITY OF NEW YORK,
`
`v.
`
`ILLUMINA, INC.,
`
`Appellant,
`
`Appellee.
`
`Appeals from the United States Patent and Trademark Office, Patent Trial and
`Appeal Board in Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322,
`IPR2018-00385, and IPR2018-00797
`
`OPPOSITION TO APPELLANT’S MOTION FOR JUDICIAL NOTICE
`
`Edward R. Reines
`Derek C. Walter
`WEIL, GOTSHAL & MANGES LLP
`201 Redwood Shores Parkway
`Redwood Shores, CA 94065
`(650) 802-3000
`
`Brian G. Liegel
`WEIL, GOTSHAL & MANGES LLP
`1395 Brickell Avenue, Suite 1200
`Miami, FL 33131
`(305) 577-3100
`
`Counsel for Appellee Illumina, Inc.
`
`September 25, 2020
`
`
`Illumina Ex. 1165
`Illumina v. Columbia
`IPR2020-01177
`
`
`
`Case: 19-2302 Document: 53 Page: 2 Filed: 09/25/2020
`
`
`
`CERTIFICATE OF INTEREST
`
`Counsel for Appellee Illumina, Inc., certifies the following:
`
`1.
`
`The full name of every party or amicus represented by us is:
`
` Illumina, Inc.
`The name of the real party in interest represented by us is:
`
`2.
`
` Illumina, Inc.
`
`All parent corporations and any public companies that own 10 percent
`
`3.
`
`or more of the stock of the parties represented by us are:
`
` None
`The names of all law firms and the partners or associates that
`
`4.
`
`appeared for the parties now represented by us in the trial court or are expected to
`
`appear in this Court are:
`
` WEIL, GOTSHAL & MANGES, LLP: Edward R. Reines, Derek C.
`Walter, Brian G. Liegel
`
` KNOBBE, MARTENS, OLSON & BEAR, LLP: Kerry S. Taylor,
`Michael L. Fuller, William R. Zimmerman, Nathanael R. Luman
`
`The title and number of any case known to counsel to be pending in
`
`
`5.
`
`this or any other court or agency that will directly affect or be directly affected by
`
`this Court’s decision in the pending appeal:
`
`
`
`i
`
`
`
`
`Case: 19-2302 Document: 53 Page: 3 Filed: 09/25/2020
`
` The Trustees of Columbia University in the City of New York et al. v.
`Illumina, Inc., No. 17-cv-00973 (D. Del.).
`
` The Trustees of Columbia University in the City of New York et al. v.
`Illumina, Inc., No. 1:19-cv-01681 (D. Del.)
`
` Illumina, Inc. v. The Trustees of Columbia University in the City of
`New York, PTAB-IPR2020-01323
`
` Illumina, Inc. v. The Trustees of Columbia University in the City of
`New York, PTAB-IPR2020-01177
`
` Illumina, Inc. v. The Trustees of Columbia University in the City of
`New York, PTAB-IPR2020-01125
`
` Illumina, Inc. v. The Trustees of Columbia University in the City of
`New York, PTAB-IPR2020-01065
`
` Illumina, Inc. v. The Trustees of Columbia University in the City of
`New York, PTAB-IPR2020-00988
`
`Dated: September 25, 2020
`
`/s/ Edward R. Reines
`Edward R. Reines
`WEIL GOTSHAL & MANGES LLP
`201 Redwood Shores Parkway
`Redwood Shores, CA 94065
`Telephone: (650) 802-3000
`
`Counsel for Appellee
`
`ii
`
`
`
`Case: 19-2302 Document: 53 Page: 4 Filed: 09/25/2020
`
`
`
`Illumina, Inc. (“Illumina”) respectfully submits this Opposition to Appellant
`
`The Trustees of Columbia University in the City of New York’s (“Columbia”)
`
`Motion for Judicial Notice. (D.I. 51 in 19-2302) (the “Motion”).
`
`ARGUMENT
`
`I.
`
`COLUMBIA’S REQUEST FOR JUDICIAL NOTICE IS IMPROPER
`“[A]ppellate review in § 141 proceedings is confined to the record before the
`
`PTO.” Nantkwest, Inc. v. Iancu, 898 F.3d 1177, 1180 (Fed. Cir. 2018); see also 35
`
`U.S.C. § 144. Columbia nevertheless asks this Court to consider the merits of new
`
`“evidence” on appeal. But this Court’s “review of the Board’s decision is confined
`
`to the four corners of the record.” Novartis AG v. Torrent Pharm. Ltd., 853 F.3d
`
`1316, 1329 (Fed. Cir. 2017) (internal quotations and citations omitted).
`
`Courts have long rejected attempts to use judicial notice to circumvent these
`
`foundational principles. See Holmes v. Kelly, 586 F.2d 234, 237 (C.C.P.A. 1978)
`
`(“Since this court is bound by 35 U.S.C. § 144 to determine appeals ‘on the evidence
`
`produced before the Patent and Trademark Office,’ we decline to take judicial notice
`
`of the patents submitted by Holmes in his reply brief.”) (internal citation omitted);
`
`Application of Lemin, 408 F.2d 1045, 1049 (C.C.P.A. 1969) (rejecting request to
`
`“judicially notice and consider the technical publications presented with the request
`
`for reconsideration” because it is the “established practice of this court not to
`
`
`
`1
`
`
`
`Case: 19-2302 Document: 53 Page: 5 Filed: 09/25/2020
`
`
`
`consider evidence not considered by the tribunals below since we do not have the
`
`benefit of their views thereon”).
`
`Columbia’s motion relies on authority that establishes only that the Court may
`
`take judicial notice of the fact of agency filings at any stage of the proceeding. See
`
`Motion at 4 (“the fact of their filing cannot be reasonably questioned”) (emphasis
`
`added). Yet, Columbia’s request goes far beyond this. Columbia improperly asks
`
`this Court to evaluate new materials and make factual determinations about the
`
`substance of those materials.
`
`Rule 201 does not permit that. In Ultratec, Inc. v. CaptionCall, LLC, 872 F.3d
`
`1267, 1274 n.6 (Fed. Cir. 2017), this Court rejected an indistinguishable attempt to
`
`misuse judicial notice. There, also in an appeal from a PTAB decision, the appellee
`
`asked this Court to consider trial testimony from a parallel district court proceeding
`
`by taking judicial notice of it. Id. Like Columbia, the appellee encouraged this
`
`Court to “take judicial notice of the testimony and determine in the first instance
`
`whether it was consistent with [the declarant’s] IPR declarations.” Id. This Court
`
`squarely rejected the judicial notice request because it “does not have authority . . .
`
`to review evidence not considered by the agency and make factual determinations
`
`about the substance of that evidence.” Id.
`
`This Court has previously confirmed the importance of the “limits imposed
`
`by Rule 201(b)(2)” which permit it to consider “only the fact” that a filing was made,
`
`
`
`2
`
`
`
`Case: 19-2302 Document: 53 Page: 6 Filed: 09/25/2020
`
`
`
`not the substance of the argument. See VirtualAgility Inc. v. Salesforce.com, Inc.,
`
`759 F.3d 1307, 1312 (Fed. Cir. 2014) (“We consider only the fact that a Motion to
`
`Amend was filed – not the impact of the proposed amendments on the parties’ claim
`
`construction and infringement arguments. The latter cannot be ‘accurately and
`
`readily determined from sources whose accuracy cannot reasonably be
`
`questioned.’”) (quoting Fed. R. Evid. 201(b)(2)) (emphasis in original).1 Columbia
`
`elides this important distinction. Indeed, the Motion confesses that the entire
`
`purpose is to demonstrate that the substance of the statements purportedly “are
`
`incompatible with, and therefore undercut, Illumina’s arguments in the present
`
`appeals.” Motion at 1. This argument is wrong as a matter of fact, as discussed
`
`below. But, importantly, it is also wrong as a matter of procedure. This improper
`
`request should be denied.
`
`
`1 Columbia’s cases confirm this. For example, the complete quotation in Old
`Reliable Wholesale, Inc. v. Cornell Corp., 635 F.3d 539, 549 (Fed. Cir. 2011) reads:
`“Although the results of the PTO reexamination proceedings were not available to
`the district court, this court can take judicial notice of the fact that the PTO, after
`assessing the relevant prior art, issued a notice of intent to issue a reexamination
`certificate confirming the patentability of all claims of the ’950 patent.” Id.
`(emphasis added). And, like Old Reliable, Function Media and Los Angeles
`Biomedical each consider only undisputed legal acts established by docket filings.
`See Function Media, L.L.C. v. Google, Inc., 708 F.3d 1310, 1316 n.4 (Fed. Cir. 2013)
`(judicial notice of fact of examiners decision and Board’s affirmance); Los Angeles
`Biomedical Res. Inst. at Harbor-UCLA Med. Ctr. v. Eli Lilly & Co., 849 F.3d 1049,
`1061 n.6 (Fed. Cir. 2017) (judicial notice of infringement contentions in district
`court). And, in Uniloc USA, Inc. v. ADP, LLC, 772 F. App’x 890, 898, n.3 (Fed.
`Cir. 2019), this Court was clear that the prosecution history was part of the record.
`3
`
`
`
`
`
`Case: 19-2302 Document: 53 Page: 7 Filed: 09/25/2020
`
`
`
`II. THE “NEW” MATERIALS ARE MEANINGLESS TO THE ISSUES IN
`THIS APPEAL AND THUS THE MOTION SHOULD BE DENIED
`The materials that are the subject of this judicial notice request are
`
`meaningless to this appeal. This is an independent reason to deny Columbia’s
`
`motion.
`
`The PTAB correctly found Metzker teaches that “increasing concentration can
`
`resolve certain incorporation issues,” and, accordingly a skilled artisan following
`
`Metzker’s instruction to increase nucleotide concentrations would reasonably have
`
`expected to achieve complete termination and efficient incorporation. See Appx44,
`
`Illumina’s Response Brief D.I. 30 in 19-2302 (April 13, 2020) at 25-26. Beyond
`
`Metzker, the PTAB also relied on Canard – a paper cited by Columbia – as support
`
`for this proposition. See Appx113 (“Canard . . . indicates that higher concentration
`
`levels can reach high incorporation levels where a chain terminator is inefficient.”).
`
`Columbia’s own expert conceded this fact as well. Appx6812 at 6-11. So despite
`
`whatever Columbia now alleges about Metzker, Canard and Columbia’s own expert
`
`admission constitute ample evidence to support the IPR decision under review.
`
`But even on its own terms, Columbia’s attack on the teaching of Metzker is
`
`misleading because Columbia obfuscates incorporation and cleavage. Throughout
`
`this proceeding, Columbia has consistently (and correctly) recognized that
`
`incorporating a chemical group into a molecule fundamentally differs from cleaving
`
`
`
`4
`
`
`
`Case: 19-2302 Document: 53 Page: 8 Filed: 09/25/2020
`
`
`
`it off. See Appx2153; Appx2168. Yet, its Motion wrongly conflates these distinct
`
`concepts.
`
`First, Columbia relies on a statement Illumina made in IPR2020-00988, but
`
`via selective quotation, portrays it as relating to incorporation when it actually relates
`
`to cleavage. Illumina states in that IPR that the methoxy group in Metzker could not
`
`be effectively cleaved “under DNA-compatible conditions” as required for the
`
`cleavage step of sequencing-by-synthesis (SBS) method at issue. Appellants’
`
`ExhibitA_00068-ExhibitA_00069 (“cleavability concerns would have given a
`
`POSA a reason to avoid a methoxy group as a reversible 3’-capping group for SBS”).
`
`But Illumina never suggested that increasing the concentration of blocking groups
`
`such as methoxy (as Metzker encourages) would be unsuccessful to increase
`
`incorporation.
`
`Likewise, the portion of Dr. Romesberg’s opinion relied upon by Columbia
`
`was similarly discussing the inadequacy of a methoxy group for the cleavability
`
`required for SBS; he did not challenge that increasing the concentration of a blocking
`
`group would improve incorporation of that group. See Appellants’ ExhibitB_00112
`
`(discussing that another blocking group “would be more easily cleaved than a methyl
`
`ether”). Although Metzker suggests that methoxy is unsuitable for SBS because it
`
`is not cleavable, that has nothing to do with whether increasing the concentration of
`
`a blocking group would lead to effective incorporation.
`
`
`
`5
`
`
`
`Case: 19-2302 Document: 53 Page: 9 Filed: 09/25/2020
`
`
`
`Therefore, even weighing the “new” materials, the PTAB’s determination is
`
`comfortably supported by substantial evidence. Because these materials are
`
`irrelevant, the motion should be denied for this additional reason.
`
`CONCLUSION
`
`For the reasons stated, Appellant’s motion should be denied.
`
`
`
`
`
`Dated: September 25, 2020
`
`
`Respectfully submitted,
`
`/s/ Edward R. Reines
`Edward R. Reines
`Derek C. Walter
`WEIL, GOTSHAL & MANGES LLP
`201 Redwood Shores Parkway
`Redwood Shores, CA 94065
`(650) 802-3000
`
`Brian G. Liegel
`WEIL, GOTSHAL & MANGES LLP
`1395 Brickell Avenue, Suite 1200
`Miami, FL 33131
`(305) 577-3100
`
`Counsel for Appellee
`
`
`
`
`
`
`
`
`
`6
`
`
`
`Case: 19-2302 Document: 53 Page: 10 Filed: 09/25/2020
`
`
`
`CERTIFICATE OF COMPLIANCE
`
`The undersigned certifies that this brief complies with the type-volume
`
`limitations of Federal Rule of Appellate Procedure 27(d)(2) because it contains
`
`1,247 words.
`
`The undersigned further certifies that this brief complies with the typeface
`
`requirements of Fed. R. App. P. 32(a)(5) and the type style requirements of Fed. R.
`
`App. P. 32(a)(6). This brief has been prepared in a proportionally spaced typeface
`
`using Microsoft Word in Times New Roman 14-point font.
`
`Dated: September 25, 2020
`
`
`
`
`
`
`
`
`
`/s/ Edward R. Reines
`Edward R. Reines
`WEIL GOTSHAL & MANGES LLP
`201 Redwood Shores Parkway
`Redwood Shores, CA 94065
`Telephone: (650) 802-3000
`
`Counsel for Appellee
`
`7
`
`