Trials@uspto.gov
`571-272-7822
`
`
`Paper: 13
`Date: November 5, 2020
`
`
`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.
`____________
`
`IPR2020-01065, Patent 10,407,459 B2
`IPR2020-01125, Patent 10,457,984 B2
`IPR2020-01177, Patent 10,435,742 B2
`
`____________
`
`
`
`Before ZHENYU YANG, JAMES A. WORTH, and
`DEVON ZASTROW NEWMAN, Administrative Patent Judges.
`
`NEWMAN, Administrative Patent Judge.
`
`
`
`ORDER1
`
`
`
`Conduct of the Proceedings
`Authorizing Reply and Sur-Reply
`to Patent Owner’s Preliminary Response
`37 C.F.R. § 42.5
`
`
`1 This single Order is filed jointly for convenience in related cases IPR2020-01065,
`IPR2020-01125, and IPR2020-01177. The parties are not authorized to file single
`documents in this manner absent express authorization.
`
`

`

`IPR2020-01065, Patent 10,407,459 B2; IPR2020-01125, Patent 10,457,984 B2;
`IPR2020-01177, Patent 10,435,742 B2
`
`
`By email dated October 30, 2020, Petitioner requests authorization to file a
`Reply to the Patent Owner Preliminary Response to address arguments raised in
`Patent Owner’s Preliminary Response concerning “discretionary denial under
`314(a) and 325(d), as well as claim construction of the term ‘chemical linker.’”
`Ex. 3001. Petitioner avers “[g]ood cause exists for Petitioner to address Patent
`Owner’s arguments concerning 314(a) and the state of the parallel district court
`litigation, as well as Patent Owner’s theories under 325(d) and its characterizations
`of Sanger sequencing and Hiatt.” Id.
`Petitioner also seeks authorization to submit “non-testimonial exhibits in the
`same manner that the Board authorized in IPR2020-00988.”2 Id. Petitioner avers
`that “[g]ood cause also exists for Petitioner to address the statements raised in
`Patent Owner’s Preliminary Response concerning whether the term ‘chemical
`linker’ requires construction in view of the District Court’s Markman Order.” Id.
`According to Petitioner, Patent Owner opposes the above requests. Id.
`Although Board rules do not specifically authorize a reply to a patent
`owner’s Preliminary Response, a Petitioner may seek leave to file such a reply, and
`any such request must make a showing of good cause. 37 C.F.R. § 42.108(c). In
`light of the above, we determine that good cause exists supporting Petitioner’s
`request to file non-testimonial exhibits related to the parallel litigation and to file a
`Reply to the Preliminary Response. We also determine that good cause exists for
`Patent Owner to file a Sur-reply to Petitioner’s Reply. Such additional briefing
`may be useful in determining whether to institute trial. The parties may file
`additional non-testimonial evidence to support any facts asserted in the Reply and
`
`
`2 In IPR2020-00988, the non-testimonial exhibits comprised documents filed in the
`parallel district court litigation, such as the District Court’s Markman Order and the
`parties’ associated briefing. See, e.g., Exs. 1146–1166 of IPR2020-00988.
`
`

`

`IPR2020-01065, Patent 10,407,459 B2; IPR2020-01125, Patent 10,457,984 B2;
`IPR2020-01177, Patent 10,435,742 B2
`
`Sur-Reply as to the Board’s discretion under §§ 314(a) and 325(d), but may not file
`additional declaration testimony.
`Accordingly, it is
`ORDERED that Petitioner shall file non-testimonial exhibits related to the
`parallel litigation, such as the District Court’s Markman Order and the parties’
`associated briefing, in this proceeding on or before November 12, 2020;
`FURTHER ORDERED that Petitioner may file a Reply to the Preliminary
`Response addressing only those issues outlined in its email of October 30, 2020,
`such Reply not exceeding five pages and received by the close of business on
`November 12, 2020;
`FURTHER ORDERED that Patent Owner may file a responsive Sur-reply
`not exceeding five pages and received by the close of business on November 19,
`2020; and
`FURTHER ORDERED that, in connection with any Reply and Sur-reply,
`neither party is authorized to submit evidence beyond that stated above.
`
`
`
`
`
`
`
`

`

`IPR2020-01065, Patent 10,407,459 B2; IPR2020-01125, Patent 10,457,984 B2;
`IPR2020-01177, Patent 10,435,742 B2
`
`PETITIONER:
`
`Kerry Taylor
`Nathanael R. Luman
`Michael L. Fuller
`William R. Zimmerman
`KNOBBE, MARTENS, OLSON, & BEAR, LLP
`2KST@knobbe.com
`2NRL@knobbe.com
`2MLF@knobbe.com
`2wrz@knobbe.com
`
`PATENT OWNER:
`
`John P. White
`Gary J. Gershik
`COOPER & DUNHAM LLP
`jwhite@cooperdunham.com
`ggershik@cooperdunham.com
`
`John D. Murnane
`Justin J. Oliver
`VENABLE LLP
`jdmurnane@venable.com
`joliver@venable.com
`
`
`