Filed January 14, 2021
`
`On behalf of Illumina, Inc.
`By: Kerry S. Taylor
`
`Nathanael R. Luman
`Michael L. Fuller
`William R. Zimmerman (pro hac vice)
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2040 Main Street, 14th Floor
`Irvine, CA 92614
`Fax: (858) 707-4001
`Tel.: (858) 707-4000
`Email: BoxIllumina@knobbe.com
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________
`
`ILLUMINA, INC.
`Petitioner,
`
`v.
`
`TRUSTEES OF COLUMBIA UNIVERSITY
`IN THE CITY OF NEW YORK
`Patent Owner.
`
`
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`IPR2020-01177
`Patent 10,435,742
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`ILLUMINA’S OBJECTIONS TO ADMISSIBILITY OF
`COLUMBIA EVIDENCE SUBMITTED BEFORE TRIAL INSTITUTION
`
`
`
`
`
`On behalf of Illumina, Inc.
`By: Kerry S. Taylor
`
`Nathanael R. Luman
`Michael L. Fuller
`William R. Zimmerman (pro hac vice)
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2040 Main Street, 14th Floor
`Irvine, CA 92614
`Fax: (858) 707-4001
`Tel.: (858) 707-4000
`Email: BoxIllumina@knobbe.com
`
`
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________
`
`ILLUMINA, INC.
`Petitioner,
`
`v.
`
`TRUSTEES OF COLUMBIA UNIVERSITY
`IN THE CITY OF NEW YORK
`Patent Owner.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2020-01177
`Patent 10,435,742
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`ILLUMINA’S OBJECTIONS TO ADMISSIBILITY OF
`COLUMBIA EVIDENCE SUBMITTED BEFORE TRIAL INSTITUTION
`
`
`
`
`
`Illumina v. Columbia
`IPR2020-01177– Patent 10,435,742
`
`
`
`Pursuant to 37 C.F.R. § 42.64(b)(1), Petitioner Illumina, Inc., timely objects
`
`to the admissibility of evidence submitted by Patent Owner Trustees of Columbia
`
`University in the City of New York before institution of trial.
`
`Exhibit Number and
`Description
`Ex. 2001 - Defendant
`Illumina, Inc.’s Response to
`Plaintiffs’ Opening Claim
`Construction Brief
`
`Ex. 2009 - IPR2017-02172
`Preliminary Response of
`Patent Owner Illumina
`Cambridge Ltd.
`
`Ex. 2010 - IPR2017-02174
`Preliminary Response of
`Patent Owner Illumina
`Cambridge Ltd.
`
`Ex. 2011 - IPR2013-00517
`Illumina’s Patent Owner
`Response
`
`Objections
`
`Incomplete, Relevance, Misleading (FRE 106,
`401, 403):
`This document, when taken in isolation, provides
`an incomplete version of the district court claim
`construction briefings, hearing, and orders. In
`addition, Columbia’s citation to a selected
`portion of this document is taken out of context
`and misleading.
`Incomplete, Relevance, Misleading (FRE 106,
`401, 403):
`This document, when taken in isolation, provides
`an incomplete version of the previous IPR
`proceeding. In addition, Columbia’s citations to
`selected portions of this document are taken out
`of context and misleading.
`Incomplete, Relevance, Misleading (FRE 106,
`401, 403):
`This document, when taken in isolation, provides
`an incomplete version of the previous IPR
`proceeding. In addition, Columbia’s citations to
`selected portions of this document are taken out
`of context and misleading.
`Incomplete, Relevance, Misleading (FRE 106,
`401, 403):
`This document, when taken in isolation, provides
`an incomplete version of the previous IPR
`proceeding. In addition, Columbia’s citations to
`selected portions of this document are taken out
`of context and misleading.
`
`- 1 -
`
`
`
`Illumina v. Columbia
`IPR2020-01177– Patent 10,435,742
`
`Exhibit Number and
`Description
`Ex. 2013 - IPR2013-00517
`Deposition of Floyd
`Romesberg, Ph.D., July 8,
`2014
`
`Ex. 2023 - Brief of Patent
`Owner-Appellant Illumina
`Cambridge Ltd., Illumina
`Cambridge Ltd. v. Intelligent
`Bio-Systems, Inc., D.I. 27,
`2015-1123 (Fed. Cir.)
`
`Ex. 2030 - Exhibit 7 to
`Complaint for Patent
`Infringement, The Trustees of
`Columbia University in the
`City of New York and Qiagen
`Sciences, LLC v. Illumina,
`Inc., D.I. 1-7, 19-cv-01681
`(D. Del.)
`
`Objections
`
`Incomplete, Relevance, Misleading (FRE 106,
`401, 403):
`This document, when taken in isolation, provides
`an incomplete version of the previous IPR
`proceeding. In addition, Columbia’s citations to
`selected portions of this document are taken out
`of context and misleading.
`Incomplete, Relevance, Misleading (FRE 106,
`401, 403):
`This document, when taken in isolation, provides
`an incomplete version of the appellate
`proceeding. In addition, Columbia’s citation to a
`selected portion of this document is taken out of
`context and misleading.
`Incomplete, Relevance, Misleading (FRE 106,
`401, 403):
`This document, when taken in isolation, provides
`an incomplete version of the district court
`proceeding. Further, this document does not
`comply with the district court claim construction
`order, lacks factual basis, confuses issues, and is
`misleading.
`
`Hearsay (FRE 802):
`The exhibit includes out-of-court statements
`offered for the truth of the matter asserted.
`
`- 2 -
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`
`
`Illumina v. Columbia
`IPR2020-01177– Patent 10,435,742
`
`Exhibit Number and
`Description
`Ex. 2031 - Exhibit 8 to
`Complaint for Patent
`Infringement, The Trustees of
`Columbia University in the
`City of New York and Qiagen
`Sciences, LLC v. Illumina,
`Inc., D.I. 1-8, 19-cv-01681
`(D. Del.)
`
`Ex. 2034 - IPR2018-00291,
`Petition for Inter Partes
`Review of U.S. Patent No.
`9,718,852
`
`Ex. 2039 - IPR2012-00007
`Illumina Reply
`
`Ex. 2040 - IPR2012-00007
`Illumina Expert Declaration
`
`Ex. 2041 - IPR2012-00007
`Illumina Petition
`
`Objections
`
`Incomplete, Relevance, Misleading (FRE 106,
`401, 403):
`This document, when taken in isolation, provides
`an incomplete version of the district court
`proceeding. Further, this document does not
`comply with the district court claim construction
`order, lacks factual basis, confuses issues, and is
`misleading.
`
`Hearsay (FRE 802):
`The exhibit includes out-of-court statements
`offered for the truth of the matter asserted.
`Incomplete, Relevance, Misleading (FRE 106,
`401, 403):
`This document, when taken in isolation, provides
`an incomplete version of the previous IPR
`proceeding. In addition, Columbia’s citations to
`selected portions of this document are taken out
`of context and misleading.
`Incomplete, Relevance, Misleading (FRE 106,
`401, 403):
`This document, when taken in isolation, provides
`an incomplete version of the previous IPR
`proceeding. In addition, Columbia’s citation to a
`selected portion of this document is taken out of
`context and misleading.
`Incomplete, Relevance, Misleading (FRE 106,
`401, 403):
`This document, when taken in isolation, provides
`an incomplete version of the previous IPR
`proceeding. In addition, Columbia’s citations to
`selected portions of this document are taken out
`of context and misleading.
`Incomplete, Relevance, Misleading (FRE 106,
`401, 403):
`This document, when taken in isolation, provides
`an incomplete version of the previous IPR
`
`- 3 -
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`
`
`Illumina v. Columbia
`IPR2020-01177– Patent 10,435,742
`
`Exhibit Number and
`Description
`
`Objections
`
`proceeding. In addition, Columbia’s citations to
`selected portions of this document are taken out
`of context and misleading.
`Incomplete, Relevance, Misleading (FRE 106,
`401, 403):
`This document, when taken in isolation, provides
`an incomplete version of the district court
`proceeding. In addition, Columbia’s citations to
`selected portions of this document are taken out
`of context and misleading.
`Relevance, Misleading (FRE 106, 401, 402,
`403):
`¶¶ 26-27 are misleading, incomplete, and
`irrelevant because they lack support for the
`contentions for which they are cited and
`improperly mischaracterize the teachings of
`Tsien.
`
`¶¶ 29-30 are misleading, incomplete, and
`irrelevant because they lack support for the
`contentions for which they are cited and
`improperly mischaracterize the teachings of
`Tsien.
`
` ¶
`
` 32 is misleading, incomplete, and irrelevant
`because it lacks support for the contentions for
`which it is cited and improperly mischaracterize
`the teachings of Dower.
`
`¶¶ 34-36 are misleading, incomplete, and
`irrelevant because they lack support for the
`contentions for which they are cited and
`improperly mischaracterize the teachings of
`Dower as well as the prosecution history of the
`challenged patent and the size of 3’-caping
`groups.
`
`
`- 4 -
`
`Ex. 2044 - Defendant
`Illumina, Inc.’s Answer to
`Plaintiffs’ Motion for
`Reconsideration of the
`Court’s Claim Construction
`Order, D.I. 64, 19-cv-01681
`(D. Del.)
`Ex. 2048 - Declaration of
`Kenneth A. Johnson
`
`
`
`Illumina v. Columbia
`IPR2020-01177– Patent 10,435,742
`
`Exhibit Number and
`Description
`
`Objections
`
`¶¶ 40-42 are misleading, incomplete, and
`irrelevant because they lack support for the
`contentions for which they are cited and
`improperly mischaracterize the teachings of
`Hiatt.
`
` ¶
`
` 43 is misleading, incomplete, and irrelevant
`because it lacks support for the contentions for
`which it is cited and improperly mischaracterize
`the teachings of Tsien, Dower, and Hiatt.
`
`¶¶ 44-45 are misleading, incomplete, and
`irrelevant because they lack support for the
`contentions for which they are cited and
`improperly mischaracterize the teachings of
`Hiatt.
`
`¶¶ 54-55 are misleading, incomplete, and
`irrelevant because they lack support for the
`contentions for which they are cited and
`improperly mischaracterize the teachings of
`Hiatt.
`
`¶¶ 57-59 are misleading, incomplete, and
`irrelevant because they lack support for the
`contentions for which they are cited and
`improperly mischaracterize the teachings of
`Hovinen as well as Sanger sequencing.
`
`¶¶ 60-61 are misleading, incomplete, and
`irrelevant because they lack support for the
`contentions for which they are cited and
`improperly mischaracterize the teachings and
`state of the prior art.
`
`¶¶ 65-67 are misleading, incomplete, and
`irrelevant because they lack support for the
`
`- 5 -
`
`
`
`Illumina v. Columbia
`IPR2020-01177– Patent 10,435,742
`
`Exhibit Number and
`Description
`
`Objections
`
`contentions for which they are cited and
`improperly mischaracterize the teachings of
`Metzker.
`
`¶¶ 71-78 are misleading, incomplete, and
`irrelevant because they lack support for the
`contentions for which they are cited and
`improperly mischaracterize the challenged patent
`as well as the state of the prior art.
`
`Improper Testimony by Expert Witness (FRE
`702):
`¶¶ 26-27 are not based on sufficient facts and
`data, and do not reliably apply facts and data
`using scientific principles.
`
`¶¶ 29-30 are not based on sufficient facts and
`data, and do not reliably apply facts and data
`using scientific principles.
`
` ¶
`
` 32 is not based on sufficient facts and data, and
`does not reliably apply facts and data using
`scientific principles.
`
`¶¶ 34-36 are not based on sufficient facts and
`data, and do not reliably apply facts and data
`using scientific principles.
`
`¶¶ 40-42 are not based on sufficient facts and
`data, and do not reliably apply facts and data
`using scientific principles.
`
` ¶
`
` 43 is not based on sufficient facts and data, and
`does not reliably apply facts and data using
`scientific principles.
`
`¶¶ 44-45 are not based on sufficient facts and
`
`- 6 -
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`
`
`Illumina v. Columbia
`IPR2020-01177– Patent 10,435,742
`
`Exhibit Number and
`Description
`
`Objections
`
`data, and do not reliably apply facts and data
`using scientific principles.
`
`¶¶ 54-55 are not based on sufficient facts and
`data, and do not reliably apply facts and data
`using scientific principles.
`
`¶¶ 57-59 are not based on sufficient facts and
`data, and do not reliably apply facts and data
`using scientific principles.
`
`¶¶ 60-61 are not based on sufficient facts and
`data, and do not reliably apply facts and data
`using scientific principles.
`
`¶¶ 65-67 are not based on sufficient facts and
`data, and do not reliably apply facts and data
`using scientific principles.
`
`¶¶ 71-78 are not based on sufficient facts and
`data, and do not reliably apply facts and data
`using scientific principles.
`
`Respectfully submitted,
`
`
`
`By: /Kerry Taylor/
`Kerry Taylor (Reg. No. 43,947)
`Nathanael R. Luman (Reg. No. 63,160)
`Michael L. Fuller (Reg. No. 36,516)
`William R. Zimmerman (pro hac vice)
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`Attorneys for Petitioner
`ILLUMINA, INC.
`
`- 7 -
`
`
`
`
`Dated: January 14, 2021
`
`
`
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`
`
`
`Illumina v. Columbia
`IPR2020-01177– Patent 10,435,742
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that a true and correct copy of the foregoing ILLUMINA’S
`
`OBJECTIONS TO ADMISSIBILITY OF COLUMBIA EVIDENCE
`
`SUBMITTED BEFORE TRIAL INSTITUTION is being served on January 14,
`
`2021, via email, pursuant to agreement of the parties, to counsel for the Trustees of
`
`Columbia University in the City of New York, at the email addresses below:
`
`John P. White
`jwhite@cooperdunham.com
`Gary J. Gershik
`ggershik@cooperdunham.com
`ColumbiaIPR@cooperdunham.com
`Cooper & Dunham, LLP
`30 Rockefeller Plaza, 20th Floor
`New York, NY 10112
`
`John D. Murnane
`VENABLE LLP
`jmurnane@venable.com
`1290 Avenue of the Americas
`New York, NY 10104
`
`Justin J. Oliver
`VENABLE LLP
`joliver@venable.com
`600 Massachusetts Ave.
`Washington, D.C. 20001
`
`
`
`By: /Kerry Taylor/
`Kerry Taylor (Reg. No. 43,947)
`Nathanael R. Luman (Reg. No. 63,160)
`Michael L. Fuller (Reg. No. 36,516)
`William R. Zimmerman (pro hac vice)
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`Attorneys for Petitioner
`ILLUMINA, INC.
`
`
`
`Dated: January 14, 2021
`
`
`
`34139863
`
`
`
`
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