On behalf of Illumina, Inc.
`By:
`Kerry Taylor (Reg. No. 43,947)
`Michael L. Fuller (Reg. No. 36,516)
`William R. Zimmerman (pro hac vice)
`Nathanael R. Luman (Reg. No. 63,160)
`KNOBBE, MARTENS, OLSON
`
`& BEAR, LLP
`2040 Main Street, 14th Floor
`Irvine, CA 92614
`Telephone: 949-760-0404
`Facsimile: 949-760-9502
`Email: BoxIllumina@knobbe.com
`
`Filed: February 26, 2019
`
`Derek Walter (Reg. No. 74,656)
`Derek.walter@weil.com
`Edward R. Reines (pro hac vice)
`Edward.reines@weil.com
`Illumina.Columbia@weil.com
`WEIL, GOTSHAL & MANGES LLP
`201 Redwood Shores Parkway
`Redwood Shores, CA 94065
`Telephone: 650-802-3000
`Facsimile: 650-802-3100
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________
`
`ILLUMINA, INC.
`Petitioner
`
`v.
`
`THE TRUSTEES OF COLUMBIA UNIVERSITY
`IN THE CITY OF NEW YORK
`Patent Owner
`
`
`
`
`
`
`IPR2018-00291 Patent 9,718,852
`IPR2018-00318 Patent 9,719,139
`IPR2018-00322 Patent 9,708,358
` IPR2018-00385
` Patent 9,725,480*
`
`
`
`
`
`
`
`
`
`
`
`
`ILLUMINA’S REPLY TO PATENT OWNER’S OPPOSITION TO
`MOTION TO EXCLUDE
`
`
`*This identical paper is being filed in each of these four IPRs.
`
`Columbia Ex. 2018
`Illumina, Inc. v. The Trustees
`of Columbia University
`in the City of New York
`IPR2020-01177
`
`
`By:
`Kerry Taylor (Reg. No. 43,947)
`Michael L. Fuller (Reg. No. 36,516)
`William R. Zimmerman (pro hac vice)
`Nathanael R. Luman (Reg. No. 63,160)
`KNOBBE, MARTENS, OLSON
`
`& BEAR, LLP
`2040 Main Street, 14th Floor
`Irvine, CA 92614
`Telephone: 949-760-0404
`Facsimile: 949-760-9502
`Email: BoxIllumina@knobbe.com
`
`Filed: February 26, 2019
`
`Derek Walter (Reg. No. 74,656)
`Derek.walter@weil.com
`Edward R. Reines (pro hac vice)
`Edward.reines@weil.com
`Illumina.Columbia@weil.com
`WEIL, GOTSHAL & MANGES LLP
`201 Redwood Shores Parkway
`Redwood Shores, CA 94065
`Telephone: 650-802-3000
`Facsimile: 650-802-3100
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________
`
`ILLUMINA, INC.
`Petitioner
`
`v.
`
`THE TRUSTEES OF COLUMBIA UNIVERSITY
`IN THE CITY OF NEW YORK
`Patent Owner
`
`
`
`
`
`
`IPR2018-00291 Patent 9,718,852
`IPR2018-00318 Patent 9,719,139
`IPR2018-00322 Patent 9,708,358
` IPR2018-00385
` Patent 9,725,480*
`
`
`
`
`
`
`
`
`
`
`
`
`ILLUMINA’S REPLY TO PATENT OWNER’S OPPOSITION TO
`MOTION TO EXCLUDE
`
`
`*This identical paper is being filed in each of these four IPRs.
`
`Columbia Ex. 2018
`Illumina, Inc. v. The Trustees
`of Columbia University
`in the City of New York
`IPR2020-01177
`
`
`
`On behalf of Illumina, Inc.
`By:
`Kerry Taylor (Reg. No. 43,947)
`Michael L. Fuller (Reg. No. 36,516)
`William R. Zimmerman (pro hac vice)
`Nathanael R. Luman (Reg. No. 63,160)
`KNOBBE, MARTENS, OLSON
`
`& BEAR, LLP
`2040 Main Street, 14th Floor
`Irvine, CA 92614
`Telephone: 949-760-0404
`Facsimile: 949-760-9502
`Email: BoxIllumina@knobbe.com
`
`Filed: February 26, 2019
`
`Derek Walter (Reg. No. 74,656)
`Derek.walter@weil.com
`Edward R. Reines (pro hac vice)
`Edward.reines@weil.com
`Illumina.Columbia@weil.com
`WEIL, GOTSHAL & MANGES LLP
`201 Redwood Shores Parkway
`Redwood Shores, CA 94065
`Telephone: 650-802-3000
`Facsimile: 650-802-3100
`
`
`
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`__________________________________
`
`ILLUMINA, INC.
`Petitioner
`
`v.
`
`THE TRUSTEES OF COLUMBIA UNIVERSITY
`IN THE CITY OF NEW YORK
`Patent Owner
`
`
`
`
`
`
`IPR2018-00291 Patent 9,718,852
`IPR2018-00318 Patent 9,719,139
`IPR2018-00322 Patent 9,708,358
` IPR2018-00385
` Patent 9,725,480*
`
`
`
`
`
`
`
`
`
`
`
`
`ILLUMINA’S REPLY TO PATENT OWNER’S OPPOSITION TO
`MOTION TO EXCLUDE
`
`
`*This identical paper is being filed in each of these four IPRs.
`
`
`
`TABLE OF AUTHORITIES
`
`Page No(s).
`
`ClassCo, Inc. v. Apple, Inc.,
`838 F.3d 1214 (Fed. Cir. 2016) ............................................................................ 5
`ePlus Inc. v. Lawson Software, Inc.,
`700 F.3d 509 (Fed. Cir. 2012) .............................................................................. 1
`In re Ethicon, Inc.,
`844 F.3d 1344 (Fed. Cir. 2017) ............................................................................ 4
`Sport Dimension, Inc. v. Coleman Co.,
`820 F.3d 1316 (Fed. Cir. 2016) ............................................................................ 4
`
`
`
`
`i
`
`
`
`IPR2018-00291, -00318, -00322, & -00385
`Illumina v. Columbia
`
`Illumina’s motion to exclude is based upon, and consistent with, its timely
`
`objections to Ex. 2116 (Paper 35, 5-9)1 and Ex. 2140 (Paper 54, 1). Illumina’s
`
`previous papers addressed most of the arguments raised in Columbia’s Opposition,
`
`and therefore Illumina will not repeat those points herein.
`
`Dr. Menchen’s Declaration (Ex. 2116) should be excluded
`
`Columbia opposes the exclusion of Dr. Menchen’s declaration by asserting it
`
`appropriately shielded Dr. Menchen from understanding the challenged claims and
`
`fundamental factual matters to insulate him from accountability during cross-
`
`examination. Columbia’s cynical attempt to undermine the Board’s Routine
`
`Discovery policies should be penalized by excluding Dr. Menchen’s testimony.
`
`See ePlus Inc. v. Lawson Software, Inc., 700 F.3d 509, 523 (Fed. Cir. 2012)
`
`(affirming exclusion of testimony from a purported expert whose “analytical
`
`method was flawed and unreliable” and selectively “ignored” evidence of record).
`
`Dr. Menchen testified that Columbia narrowly focused his attention on three
`
`portions of the challenged claims—(1) the chemically cleavability of ‘R,’ (2)
`
`whether an ‘R’ group is accepted as a polymerase substrate, and (3) the Y linker:
`
`Q. I was asking you, did you make sure you understood Claim 1?
`A. I made sure I understood Claim 1 in terms of the chemically
`cleavable part of it and in terms of the, acting as a substrate.
`Q. Anything else?
`
`1 All citations to papers from IPR2018-00291. Any emphases have been supplied.
`
`1
`
`
`
`IPR2018-00291, -00318, -00322, & -00385
`Illumina v. Columbia
`
`A. Those are the two things that I was supposed to focus on.
`Q. Did you put in any effort into understanding the rest of the claim?
`A. I have read it.
`Q. Other than just reading it?
`A. Yeah, the why [Y].
`Q. Anything else?
`A. Yeah, I mean the rest of it is pretty obvious.
`Ex. 1112, 173:22-174:15. He avoided understanding the claimed “small” group:
`
`Q. Okay. If you turn to column 35 [of Columbia’s patent], please. Do
`you see where it says "Wherein, R" and then "A represents a small
`chemically cleavable chemical group"? Do you see that?
`A. I see that.
`Q. And do you understand what small means there?
`A. That wasn't something that -- that I really prepared for this.
`Q. Do you have any idea what would qualify as small?
`A. Yeah, I -- I can't answer that.
`Id., 171:15-172:10;
`id., 171:15-173:10, 176:14-177:10, 240:22-241:9. Dr.
`
`Menchen did not consider whether the allyl capping group meets the claims:
`
`Q. And based on all the work you've done in this case and your
`expertise in the field, do you have any reason to contest that
`statements of counsel that allyl would be an example of a capping
`group that meets the limitations of Claim 1 of the '985 patent?
`A. Yeah. . . . I can't form an opinion on that.
`Q. Do you have any information inconsistent with that or any basis to
`challenge it?
`A. Yeah, I can't form an opinion on it.
`
`2
`
`
`
`IPR2018-00291, -00318, -00322, & -00385
`Illumina v. Columbia
`
`Q. Why not?
`A. Because it's not something that I was told to look at or review.
`Ex. 1112, 248:13-249:14. Dr. Menchen avoided studying polymerases, and was
`
`unable to identify any polymerase for use with Columbia’s claims:
`
`Q. Can you identify any polymerase that fits in -- that meets the
`requirement of the claims of the Ju patents in any system?
`A. In any system. I wasn't asked to study polymerases.
`Q. But based on your work in this case do you know of any?
`A. I don't know of any.
`Ex. 1112, 178:22-179:6. Dr. Menchen testified that the extensive preparations
`
`with Columbia’s attorneys avoided looking into whether any linker Y would meet
`
`the challenged claim, and he was unable to identify any such linker:
`
`Q. In the Ju claims. And in terms of why [Y] in the Ju claims do you
`know of any linker that would actually satisfy the requirements of the
`Ju claims?
`A. I wasn't asked -- I was only asked to determine what the -- what the
`scope of why [Y] is.
`Q. Do you know of any though?
`A. I wasn't asked to -- to look into that. I didn't study that.
`Q. And, therefore, you don't know of any?
`A. I don't know of any right now.
`Q. When you say right now, you just spent eight or nine days
`preparing for the deposition. Today you don't know of any, correct?
`A. I spent eight or nine days preparing for a deposition that didn't
`include looking into that.
`
`3
`
`
`
`IPR2018-00291, -00318, -00322, & -00385
`Illumina v. Columbia
`
`Ex. 1112, 179:11-180:9. Dr. Menchen repeatedly admitted he was unable to
`
`answer basic questions about the scope and content of the claims. Paper 53, 1-2.
`
`On redirect, Columbia brazenly asked Dr. Menchen to confirm that he deliberately
`
`avoided forming opinions on the claims and contested factual matters. Ex. 1113,
`
`394:12-397:25. Columbia’s litigation tactics are especially problematic because
`
`Dr. Menchen admitted he is “not an expert on polymerases” (Ex. 1112, 270:2-16),
`
`which are the very polymerase incorporation reactions at issue. Dr. Menchen
`
`“admitted inexperience and unfamiliarity with the very subject on which [patent
`
`owner] sought to rely,” and his declaration should be excluded. Sport Dimension,
`
`Inc. v. Coleman Co., 820 F.3d 1316, 1323 (Fed. Cir. 2016).
`
`¶¶31, 33-34, 38-39, 43, 51, 94-97, 109 of Ex. 1116 should be excluded
`
`Columbia opposes exclusion of these paragraphs, which contain Dr.
`
`Menchen’s opinion that a POSA would not be able to arrive at efficient polymerase
`
`incorporation or appropriate cleavage conditions. This testimony ignores that
`
`“[t]he normal desire of artisans to improve upon what is already generally known
`
`can provide the motivation to optimize variables.” In re Ethicon, Inc., 844 F.3d
`
`1344, 1351 (Fed. Cir. 2017). The teachings of the prior art, such as Metzker, Dr.
`
`Menchen’s patents, Hiatt, Qian, Boss, and Genet fit together to reinforce Tsien’s
`
`disclosed advantages of the 3’-O-allyl capping group. Despite this, Dr. Menchen
`
`treats every reference individually as if a POSA would only apply its teachings
`
`4
`
`
`
`IPR2018-00291, -00318, -00322, & -00385
`Illumina v. Columbia
`
`exactly as written. That is not realistic, nor does it address the legal standard:
`
`KSR teaches that a person of ordinary skill is also a person of
`ordinary creativity, not an automaton. And it explains that the
`ordinary artisan recognizes that familiar items may have obvious uses
`beyond their primary purposes, and in many cases a person of
`ordinary skill will be able to fit the teachings of multiple patents
`together like pieces of a puzzle.
`ClassCo, Inc. v. Apple, Inc., 838 F.3d 1214, 1219 (Fed. Cir. 2016). As such, his
`
`testimony is confusing and irrelevant. It should be excluded.
`
`¶¶100-106 of Ex. 1116 should be excluded
`
`Columbia opposes exclusion of ¶¶100-106 by asserting that Gigg teaches a
`
`genus of allyl ethers. Gigg uses “the allyl ether” to refer to the –CH2-CH=CH2
`
`group, which conforms with IUPAC nomenclature. Ex. 1046, 1903, 1905, 1906,
`
`1907. Gigg refers to substituted allyl ethers with other appropriate nomenclature,
`
`such as “2-methylallyl ether” and “3-methylallyl (crotyl) ether.” Id., 1907.
`
`Dr. Romesberg’s testimony from Exhibit 2140
`
`Columbia’s incomplete and misleading distortions of Dr. Romesberg’s
`
`testimony forced Illumina to move under FRE 106 and 401-403 to have the
`
`testimony considered within its full context or excluded. Columbia’s Opposition
`
`does not even attempt to harmonize its incomplete and misleading distortions of
`
`Dr. Romesberg’s testimony with his complete testimony, and therefore fails to
`
`rectify the numerous distortions identified in Illumina’s motion.
`
`5
`
`
`
`IPR2018-00291, -00318, -00322, & -00385
`Illumina v. Columbia
`
`
`Dated: February 26, 2019
`
`
`
`
`
`
`
`Respectfully submitted,
`By: /Kerry Taylor/
`Kerry Taylor (Reg. No. 43,947)
`Michael L. Fuller (Reg. No. 36,516)
`William R. Zimmerman (pro hac vice)
`Nathanael R. Luman (Reg. No. 63,160)
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`
`Derek Walter (Reg. No. 74,656)
`Edward R. Reines (pro hac vice)
`WEIL, GOTSHAL & MANGES LLP
`
`Attorneys for Petitioner
`ILLUMINA, INC.
`
`6
`
`
`
`IPR2018-00291, -00318, -00322, & -00385
`Illumina v. Columbia
`
`CERTIFICATE OF SERVICE
`I hereby certify that a true and correct copy of the foregoing ILLUMINA
`REPY TO OPPOSITION TO MOTION TO EXCLUDE COLUMBIA
`EVIDENCE is being served on February 26, 2019, via e-mail to counsel for the
`Trustees of Columbia University, 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
`Robert S. Schwartz
`Zachary L. Garrett
`VENABLE | FITZPATRICK
`VENABLE LLP
`jmurnane@venable.com
`rschwartz@venable.com
`zgarrett@venable.com
`1290 Avenue of the Americas
`New York, NY 10104
`
`
`Justin J. Oliver
`VENABLE | FITZPATRICK
`VENABLE LLP
`joliver@venable.com
`600 Massachusetts Ave.
`Washington, D.C. 20001
`
`
`Dated: February 26, 2019
`
`
`
`30009759
`
`
`
`
`
`Respectfully submitted,
`By: /Kerry Taylor/
`Kerry Taylor (Reg. No. 43,947)
`Michael L. Fuller (Reg. No. 36,516)
`William R. Zimmerman (pro hac vice)
`Nathanael R. Luman (Reg. No. 63,160)
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`
`Derek Walter (Reg. No. 74,656)
`Edward R. Reines (pro hac vice)
`WEIL, GOTSHAL & MANGES LLP
`
`Attorneys for Petitioner
`ILLUMINA, INC.
`
`
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