Case: 19-2302 Document: 54 Page: 1 Filed: 10/02/2020
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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,
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`v.
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`Illumina, Inc.,
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`Appellant,
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`Appellee.
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`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
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`REPLY IN SUPPORT OF APPELLANT’S
`MOTION FOR JUDICIAL NOTICE
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`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
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`John P. White
`COOPER & DUNHAM LLP
`30 Rockefeller Plaza, 20th Floor
`New York, NY 10112
`212-278-0400
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`
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`Illumina Ex. 1166
`Illumina v. Columbia
`IPR2020-01177
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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,
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`v.
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`Illumina, Inc.,
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`Appellant,
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`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
`
`
`REPLY IN SUPPORT OF APPELLANT’S
`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. 1166
`Illumina v. Columbia
`IPR2020-01177
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`Case: 19-2302 Document: 54 Page: 2 Filed: 10/02/2020
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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.
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`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;
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`• Morris, Nichols, Arsht & Tunnell: Jack B. Blumenfeld; Maryellen
`Noreika (now Judge Maryellen Noreika).
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`5. The title and number of any case known to counsel to be pending in this or
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`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:
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`• The Trustees of Columbia University in the City of New York et al. v.
`Illumina, Inc., 17-cv-00973 (D. Del.)
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`i
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`Case: 19-2302 Document: 54 Page: 3 Filed: 10/02/2020
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`I.
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`ARGUMENT
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`Illumina waited until the briefing period in these appeals was over before
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`filing the IPR2020-00988 documents, toward the end of its 1-year filing window.
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`Illumina’s statements in those documents are relevant to these appeals, and
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`Columbia should be permitted to address those statements at the upcoming oral
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`argument.
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`Illumina opposes Columbia’s request by mischaracterizing the law in a
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`manner that would all but negate this Court’s ability to take judicial notice.
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`Illumina contends that while this Court can take judicial notice of the fact that a
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`document was filed, it cannot further notice the contents of the filed document.
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`That is wrong. Federal Rule of Evidence 201 permits judicial notice to be taken of
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`any fact “that is not subject to reasonable dispute because” it “can be accurately
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`and readily determined from sources whose accuracy cannot reasonably be
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`questioned.” In IPR2020-00988, Illumina filed with the Patent Trial and Appeal
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`Board (“PTAB”) a Petition and Expert Declaration. The indisputable fact is that
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`Illumina and its expert made the statements in those documents, including the
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`statements that Columbia wishes to bring to this Court’s attention. See Columbia’s
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`Motion, D.I. 51 at 3 (quoting statements). Anyone can go the PTAB’s website,
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`download the documents in question, which were submitted by Illumina, and
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`confirm the existence of those statements.
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`1
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`Case: 19-2302 Document: 54 Page: 4 Filed: 10/02/2020
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`It is well within this Court’s ability to take judicial notice of statements
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`made in documents filed in district court and Patent Office proceedings. In LA
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`Biomed, this Court took judicial notice of the contents of infringement contentions
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`filed in a district court litigation. Los Angeles Biomedical Res. Inst. at Harbor-
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`UCLA Med. Ctr. v. Eli Lilly & Co., 849 F.3d 1049, 1061, 1061 n.6 (Fed. Cir.
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`2017). Illumina contends that the Court in LA Biomed noticed only that the
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`contentions were filed, as opposed to noticing statements found therein. D.I. 53 at
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`3 n.1. That is wrong. After taking judicial notice, this Court explicitly considered,
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`and even quoted, statements in the contentions:
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`Nor do LAB’s infringement contentions in the ongoing district court
`case render the “arresting or regressing” limitation irrelevant…. LAB
`alleged that the “[l]ong-term administration of Cialis on a once daily
`basis for the treatment of [erectile dysfunction] results in the arrest or
`regression of penile tunical fibrosis (i.e., [Peyronie’s disease]) and
`corporal tissue fibrosis (i.e., [CVOD]).” [LAB]’s Disclosure of
`Asserted Claims and Preliminary Infringement Contentions, Ex. A at
`5, Los Angeles Biomed. Research Inst. v. Eli Lilly & Co., No. 2:13-cv-
`08567-JAK-JCG (C.D. Cal. filed May 19, 2014).
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`849 F.3d at 1061-1062 (brackets in original); see also St. Clair Intellectual Prop.
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`Consultants, Inc. v. Canon Inc., 412 F. App’x 270, 275-276, 275 n.1 (Fed. Cir.
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`2011) (considering remarks made in documents before the Patent and Trademark
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`Office after taking judicial notice of those documents).
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`Illumina also mischaracterizes Uniloc, a case in which this Court took
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`judicial notice of a patent’s prosecution history and then cited the contents of that
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`2
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`Case: 19-2302 Document: 54 Page: 5 Filed: 10/02/2020
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`history. Uniloc USA, Inc. v. ADP, LLC, 772 F. App’x 890, 897-898, 898 n.3 (Fed.
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`Cir. 2019). Illumina alleges that the Uniloc “Court was clear that the prosecution
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`history was part of the record[,]” D.I. 53 at 3 n.1, but that is wrong and illogical. If
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`the prosecution history were part of the record being appealed, there would have
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`been no need for the Court to take judicial notice of it. Instead, this Court stated
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`that the prosecution history was “a matter of public record,” not that it was part of
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`the record being appealed. 772 F. App’x at 898 n.3 (internal quotations and
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`brackets omitted, emphasis added). Likewise, the IPR2020-00988 documents at
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`issue here are a matter of public record, verifiable by anyone who wishes to
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`download the documents from the PTAB’s website.
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`Beyond mischaracterizing the law, Illumina attempts to obfuscate issues by
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`alleging that Columbia’s motion requests this Court take judicial notice of the fact
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`that the methyl capping group is unsuitable for SBS. D.I. 53 at 2 (“Columbia
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`improperly asks this Court to evaluate new materials and make factual
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`determinations about the substance of those materials.”). Columbia makes no such
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`request, and Illumina’s cited case law is thus inapposite. Instead, Columbia’s
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`motion merely requests this Court take notice of Illumina’s IPR2020-00988
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`Petition and Expert Declaration. Judicial notice of these documents is necessary to
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`allow consideration during the upcoming oral argument of Illumina’s statements
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`3
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`Case: 19-2302 Document: 54 Page: 6 Filed: 10/02/2020
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`therein regarding the incompatibility of the methyl capping group for SBS, as
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`compared to Illumina’s positions in this appeal regarding the same issue.
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`II. CONCLUSION
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`For the aforementioned reasons and those set forth in Columbia’s motion,
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`Columbia respectfully requests that the Court take judicial notice of the IPR2020-
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`00988 documents, which were attached to Columbia’s motion as Exhibits A and B
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`to the Declaration of John D. Murnane.
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`Dated: October 2, 2020
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`Respectfully submitted,
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`
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`/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
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`Counsel for Appellant
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`Case: 19-2302 Document: 54 Page: 7 Filed: 10/02/2020
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`CERTIFICATE OF COMPLIANCE
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`This reply complies with the type-volume limitation of Federal Rule of
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`Appellate Procedure 27(d)(2) because it contains 790 words. This reply complies
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`with typeface requirements of Federal Rule of Appellate Procedure 32(a)(5) and
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`the typestyle requirements of Federal Rule of Appellate Procedure 32(a)(6). This
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`reply has been prepared using Microsoft Word in 14-point Times New Roman.
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`Dated: October 2, 2020
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`Respectfully submitted,
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`
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`/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
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`Counsel for Appellant
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`Case: 19-2302 Document: 54 Page: 8 Filed: 10/02/2020
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`CERTIFICATE OF SERVICE
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`I hereby certify that on October 2, 2020, the foregoing Reply in Support of
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`Appellant’s Motion for Judicial Notice was served on counsel of record by
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`electronic means (e-mail and CM/ECF).
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`Dated: October 2, 2020
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`Respectfully submitted,
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`/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
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`Counsel for Appellant
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