Case: 19-2302 Document: 51 Page: 1 Filed: 09/16/2020
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`
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`No. 2019-2302, 2019-2303, 2019-2304, 2019-2305, 2019-2452
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`UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT
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`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
`
`
`MOTION FOR JUDICIAL NOTICE
`
`John D. Murnane
`Robert S. Schwartz
`Justin J. Oliver
`Zachary L. Garrett
`VENABLE LLP
`1290 Avenue of the Americas
`New York, NY 10104
`212-218-2100
`
`John P. White
`COOPER & DUNHAM LLP
`30 Rockefeller Plaza, 20th Floor
`New York, NY 10112
`212-278-0400
`
`
`
`Illumina Ex. 1164
`Illumina v. Columbia
`IPR2020-01177
`
`
`
`
`
`No. 2019-2302, 2019-2303, 2019-2304, 2019-2305, 2019-2452
`
`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
`
`
`MOTION FOR JUDICIAL NOTICE
`
`John D. Murnane
`Robert S. Schwartz
`Justin J. Oliver
`Zachary L. Garrett
`VENABLE LLP
`1290 Avenue of the Americas
`New York, NY 10104
`212-218-2100
`
`John P. White
`COOPER & DUNHAM LLP
`30 Rockefeller Plaza, 20th Floor
`New York, NY 10112
`212-278-0400
`
`
`
`Illumina Ex. 1164
`Illumina v. Columbia
`IPR2020-01177
`
`
`
`Case: 19-2302 Document: 51 Page: 2 Filed: 09/16/2020
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`
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`CERTIFICATE OF INTEREST
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`Counsel for The Trustees of Columbia University in the City of New York
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`certifies the following:
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`1. The full name of every party or amicus represented by me is:
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`• The Trustees of Columbia University in the City of New York.
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`2. The real party in interest is:
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`• The Trustees of Columbia University in the City of New York.
`
`3. All parent corporations and any publicly held companies that own 10% or
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`more of the stock of the parties I represent are:
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`• None.
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`4. The names of all law firms and the partners or associates that appeared for
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`the parties now represented by me in the trial court or are expected to appear in this
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`court (and who have not or will not enter an appearance in this case) are:
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`• Cooper & Dunham: Gary J. Gershik;
`
`• Morris, Nichols, Arsht & Tunnell: Jack B. Blumenfeld; Maryellen
`Noreika (now Judge Maryellen Noreika).
`
`5. The title and number of any case known to counsel to be pending in this or
`
`any other court or agency that will directly affect or be directly affected by this
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`Court’s decision in the pending appeal:
`
`• The Trustees of Columbia University in the City of New York et al. v.
`Illumina, Inc., 17-cv-00973 (D. Del.)
`
`
`
`i
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`
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`Case: 19-2302 Document: 51 Page: 3 Filed: 09/16/2020
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`
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`I.
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`INTRODUCTION
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`Pursuant to Federal Circuit Rule 27 and Federal Rule of Evidence 201,
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`Appellant The Trustees of Columbia University in the City of New York
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`(“Columbia”) moves the Court to take judicial notice of two documents filed by
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`Appellee Illumina, Inc. (“Illumina”) in an Inter Partes Review proceeding.
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`Specifically, the documents are Illumina’s Petition and Expert Declaration filed in
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`IPR2020-00988, which are attached hereto as Exhibits A and B to the Declaration
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`of John D. Murnane (the “IPR2020-00988 documents”). IPR2020-00988 involves
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`Columbia’s U.S. Patent No. 10,407,458, which is in the same patent family and
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`shares the same specification and priority date as the patents at issue in the present
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`appeal.
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`Judicial notice of the IPR2020-00988 documents is needed so that Columbia
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`can demonstrate that Illumina’s statements therein are incompatible with, and
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`therefore undercut, Illumina’s arguments in the present appeals. Columbia was
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`unable to raise this issue in the course of the briefs submitted to the Court in this
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`appeal because Illumina filed the IPR2020-00988 documents after the filing of
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`Columbia’s Reply Brief in the present appeals. 1 While briefing is complete,
`
`
`1 Subsequently, Illumina made similar statements in related Petitions and Expert
`Declarations in IPR2020-01065 (filed June 9, 2020), IPR2020-01125 (filed June
`19, 2020), IPR2020-01177 (filed June 26, 2020), and IPR2020-01323 (filed July
`20, 2020).
`
`
`
`
`1
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`
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`Case: 19-2302 Document: 51 Page: 4 Filed: 09/16/2020
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`
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`Columbia plans to address Illumina’s inconsistencies during the upcoming Oral
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`Argument.
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`II. BACKGROUND AND RELEVANCE OF
`ILLUMINA’S STATEMENTS
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`In the present appeal, Illumina contends that it was obvious that a 3’-O-allyl
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`nucleotide would work for Sequencing by Synthesis (“SBS”). The parties agree that
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`for a nucleotide to work for SBS, the nucleotide must be efficiently incorporated by
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`a polymerase. Thus, a central issue in these appeals is whether a POSA would have
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`believed that a 3’-O-allyl nucleotide would be efficiently incorporated, and therefore
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`work for SBS. On appeal, Illumina concedes that the prior art evidenced that such
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`nucleotides were not efficiently incorporated, but alleges that a POSA could
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`nonetheless achieve efficient incorporation with the 3’-O-allyl nucleotide by
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`increasing the concentration of that nucleotide. See Illumina’s Response Brief, D.I.
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`30 in 19-2302 (April 13, 2020) (“Response Br.”) at 25-26, 29-30, 36, 48-50.
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`To support its theory, Illumina relies on data reported in Metzker 1994
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`regarding a different nucleotide, namely a 3’-O-methyl nucleotide (also referred to
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`as a “methoxy” nucleotide). Whereas Metzker examined the 3’-O-allyl nucleotide
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`at a maximum concentration of 250 μM, he examined the 3’-O-methyl nucleotide at
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`concentrations up to 500 μM. Illumina alleges that the 3’-O-methyl nucleotide
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`achieved high incorporation rates at these higher concentrations, and concludes that
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`
`
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`2
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`Case: 19-2302 Document: 51 Page: 5 Filed: 09/16/2020
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`
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`a POSA would extrapolate this data to conclude that the 3’-O-allyl nucleotide would
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`work for SBS at high concentrations. See Response Br. at 26, 29-30, 49-50.
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`Columbia wishes the Court to take judicial notice of Illumina’s statements in
`
`its IPR2020-00988 that report that the 3’-O-methyl nucleotide data referenced above
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`pertain to Sanger sequencing, not SBS. Specifically, Columbia wishes the Court to
`
`take judicial notice of the following statements from Illumina’s petition and expert
`
`declaration:
`
`Metzker evaluated a methoxy capping group, recommended it for
`Sanger sequencing, and provided a contrasting discussion of this group
`against “labile” terminators for SBS. . . . This suggests that Metzker
`considered a methoxy group to be unsuitable for SBS.
`
`Petition in IPR2020-00988 (attached hereto as Exhibit A to the Declaration of
`
`John D. Murnane) at ExhibitA_00068 – ExhibitA_00069 (emphasis added).
`
`Upon evaluating a methyl ether blocked nucleotide [i.e., a 3’-O-methyl
`nucleotide], Metzker commented that “[i]n Sanger sequencing, the 3′-
`O-methyl analogs generated clean
`terminating
`ladders,
`thus
`demonstrating their possible role as alternative terminators to ddNTPs.”
`Id. at 4265; see also id. at 4266 (referring to “[t]he eventual utility of
`the 3′-O-methyl terminators in Sanger sequencing”). Metzker did not
`recommend that this analog would be useful in sequencing-by-
`synthesis, which Metzker referred to as “BASS DNA sequencing.”
`
`Declaration of Floyd Romesberg, Ph.D. in IPR2020-00988 (attached hereto
`
`as Exhibit B to the Declaration of John D. Murnane) at Exhibit B_00112 –
`
`Exhibit B_00113 (emphasis added).
`
`
`
`
`3
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`
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`Case: 19-2302 Document: 51 Page: 6 Filed: 09/16/2020
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`
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`Columbia seeks judicial notice of Illumina’s foregoing statements (that
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`Metzker’s 3’-O-methyl experiments pertain to Sanger, not SBS) to be able to refute
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`at oral argument the substance and credibility of Illumina’s argument in this appeal
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`that a POSA would extrapolate data regarding the 3’-O-methyl nucleotide in order
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`to draw conclusions regarding the 3’-O-allyl nucleotide’s usefulness for SBS.
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`Noteworthy is that Illumina’s recent statements in IPR2020-00988 are consistent
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`with the dissent’s recognition of the inapplicability of Metzker’s 3’-O-methyl
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`experiments for SBS.
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`III. JUDICIAL NOTICE IS APPROPRIATE
`
`
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`Judicial notice is appropriate for adjudicative facts that “can be accurately
`
`and readily determined from sources whose accuracy cannot reasonably be
`
`questioned.” Fed. R. Evid. 201(b)(2). The IPR2020-00988 documents are public
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`documents filed with the Patent Trial and Appeal Board, and as such, the fact of
`
`their filing cannot reasonably be questioned. This Court has held that it can
`
`properly take judicial notice of records of related court proceedings, including
`
`Patent Office proceedings. Uniloc USA, Inc. v. ADP, LLC, 772 F. App’x 890, 898
`
`n.3 (Fed. Cir. 2019) (prosecution history is “subject to judicial notice and may be
`
`considered”); Los Angeles Biomedical Res. Inst. at Harbor-UCLA Med. Ctr. v. Eli
`
`Lilly & Co., 849 F.3d 1049, 1061 n.6 (Fed. Cir. 2017) (taking judicial notice of a
`
`document from a related proceeding). The Court’s ability to take judicial notice
`
`
`
`
`4
`
`
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`Case: 19-2302 Document: 51 Page: 7 Filed: 09/16/2020
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`applies “at any stage of the proceeding, even if it was not available to the lower
`
`court.” Function Media, L.L.C. v. Google, Inc., 708 F.3d 1310, 1316 n.4 (Fed. Cir.
`
`2013); see also Old Reliable Wholesale, Inc. v. Cornell Corp., 635 F.3d 539, 549
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`(Fed. Cir. 2011) (“Although the results of the PTO reexamination proceedings
`
`were not available to the district court, this court can take judicial notice [of
`
`them].”). As such, judicial notice of the IPR2020-00988 documents is appropriate.
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`IV. CONCLUSION
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`For the aforementioned reasons, Columbia respectfully requests that the
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`Court take judicial notice of the IPR2020-00988 documents, attached hereto as
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`Exhibits A and B to the Declaration of John D. Murnane.
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`The parties have conferred and Illumina has stated that it will oppose the
`
`motion.
`
`Dated: September 16, 2020
`
`Respectfully submitted,
`
`/s/ John D. Murnane
`John D. Murnane
`VENABLE LLP
`1290 Avenue of the Americas
`New York, New York 10104
`(212) 218-2527
`JDMurnane@Venable.com
`
`Counsel for Appellant
`
`5
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`
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`Case: 19-2302 Document: 51 Page: 8 Filed: 09/16/2020
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`CERTIFICATE OF COMPLIANCE
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`This motion complies with the type-volume limitation of Federal Rule of
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`Appellate Procedure 27(d)(2) because it contains 1007 words. This motion
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`complies with typeface requirements of Federal Rule of Appellate Procedure
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`32(a)(5) and the typestyle requirements of Federal Rule of Appellate Procedure
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`32(a)(6). This motion has been prepared using Microsoft Word in 14-point Times
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`New Roman, a proportionally spaced typeface.
`
`Dated: September 16, 2020
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`Respectfully submitted,
`
`/s/ John D. Murnane
`John D. Murnane
`VENABLE LLP
`1290 Avenue of the Americas
`New York, New York 10104
`(212) 218-2527
`JDMurnane@Venable.com
`
`Counsel for Appellant
`
`i
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`
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`Case: 19-2302 Document: 51 Page: 9 Filed: 09/16/2020
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`CERTIFICATE OF SERVICE
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`I hereby certify that on September 16, 2020, the foregoing Motion for
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`Judicial Notice was served on counsel of record by electronic means (e-mail and
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`CM/ECF).
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`Dated: September 16, 2020
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`Respectfully submitted,
`
`/s/ John D. Murnane
`John D. Murnane
`VENABLE LLP
`1290 Avenue of the Americas
`New York, New York 10104
`(212) 218-2527
`JDMurnane@Venable.com
`
`Counsel for Appellant
`
`ii
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`
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`Case: 19-2302 Document: 51 Page: 10 Filed: 09/16/2020
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`No. 2019-2302, 2019-2303, 2019-2304, 2019-2305, 2019-2452
`
`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
`
`
`DECLARATION OF JOHN D. MURNANE
`
`
`
`
`
`
`
`
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`Case: 19-2302 Document: 51 Page: 11 Filed: 09/16/2020
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`I, John D. Murnane, declare as follows:
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`1.
`
`I am an attorney at the law firm of Venable LLP. I represent The
`
`Trustees of Columbia University in the City of New York (“Columbia”) in No.
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`2019-2302, 2019-2303, 2019-2304, 2019-2305, and 2019-2452. I have personal
`
`knowledge of the facts set forth in this declaration and, if called upon to do so,
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`could and would testify competently as to those facts.
`
`2.
`
`Attached hereto as Exhibit A is a true and correct copy of the Petition
`
`filed by Illumina, Inc. in IPR2020-00988.
`
`3.
`
`Attached hereto as Exhibit B is a true and correct copy of the
`
`Declaration of Floyd Romesberg, Ph.D. filed by Illumina, Inc. in IPR2020-00988.
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`I declare under penalty of perjury under 28 U.S.C. § 1746 that the foregoing is true
`
`and correct.
`
`Dated: September 16, 2020
`
`Respectfully submitted,
`
`/s/ John D. Murnane
`John D. Murnane
`VENABLE LLP
`1290 Avenue of the Americas
`New York, New York 10104
`(212) 218-2527
`JDMurnane@Venable.com
`
`Counsel for Appellant
`
`
`
`Case: 19-2302 Document: 51 Page: 12 Filed: 09/16/2020
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`Exhibit
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`Description
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`Pagination
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`Table of Contents
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`Exhibit A
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`Petition, IPR2020-00988 ExhibitA_00001 - ExhibitA_00097
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`ExhibitB_00001 - ExhibitB_00154
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`Exhibit B
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`
`
`Declaration of Floyd
`Romesberg, Ph.D.,
`IPR2020-00988
`
`
`
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