`Krause, Andrew
`~Walter, Derek; adrian.percer@weil.com; Personalis.Foresight@weil.com; #ForesightIPRs; ~Naini, Amir; Trials
`RE: IPR2023-00224/IPR2023-00317 - Petitioner"s request for authorization to Reply to POPRs
`Friday, April 7, 2023 3:09:18 PM
`
`From:
`To:
`Cc:
`Subject:
`Date:
`
`Counsel,
`
`From the Board –
`
`Petitioner is authorized to submit a Reply of no more than 6 pages to the Patent Owner Preliminary
`Response (“POPR”) filed in IPR2023-00224, and a Reply of no more than 4 pages to the POPR filed in
`IPR2023-00317. Petitioner’s briefs are due no later than COB on Friday, April 14. Patent Owner may
`file responsive Sur-replies having the same page limits and due no later than COB on Friday, April 28.
`
`Regards,
`
`Esther Goldschlager
`Supervisory Paralegal Specialist
`Patent Trial & Appeal Board
`U.S. Patent & Trademark Office
`
`From: Krause, Andrew <AKrause@irell.com>
`Sent: Friday, April 7, 2023 1:54 PM
`To: Trials <Trials@USPTO.GOV>
`Cc: ~Walter, Derek <derek.walter@weil.com>; adrian.percer@weil.com;
`Personalis.Foresight@weil.com; #ForesightIPRs <ForesightIPRs@irell.com>; ~Naini, Amir
`<amir@nainipc.com>
`Subject: IPR2023-00224/IPR2023-00317 - Petitioner's request for authorization to Reply to POPRs
`
`CAUTION: This email has originated from a source outside of USPTO. PLEASE CONSIDER THE SOURCE before
`responding, clicking on links, or opening attachments.
`
`Your Honors,
`
`Petitioner respectfully requests authorization from the Board to file a 6-page reply to the Patent
`Owner Preliminary Response (“POPR”) filed in IPR2023-00224 (U.S. Patent No. 11,384,394) and a 4-
`page reply to the POPR filed in IPR2023-00317 (U.S. Patent No. 11,408,033). Petitioner could file
`such replies within 5 business days of receiving the Board’s authorization.
`
`Petitioner’s replies would address the following issues:
`
`1. Claim construction of the term “whole genome sequencing.” [-00224 IPR only]
`2. Claim construction of the term “capture probe.” [both IPRs]
`3.
`Patent Owner’s contentions regarding secondary considerations. [both IPRs]
`
`Exhibit 3001
`
`
`
`Good cause exists for Petitioner’s proposed replies for at least the following reasons. On issue (1),
`Patent Owner’s claim construction position and accompanying new testimonial evidence (Ex. 2007)
`were not foreseeable and additional briefing will clarify the record and aid the Board’s deliberations.
`On issue (2), while the Petitions preemptively address aspects of Patent Owner’s arguments,
`Petitioner could not have predicted all of Patent Owner’s arguments, particularly those based on
`Patent Owner’s characterization of the intrinsic record, which Petitioner disputes. Thus, additional
`briefing will clarify the record and aid the Board’s deliberations. On issue (3), Patent Owner relies on
`allegations of “nexus” that were produced contemporaneously with the POPRs (-00224 IPR, Ex.
`2012; -00317 IPR, Ex. 2008) and thus were unforeseeable.
`
`Petitioner conferred with Patent Owner, and Patent Owner opposes this request. The parties are
`conferring on available times should the Board wish to convene a conference call to discuss this
`matter.
`
`Respectfully,
`Andrew Krause
`Counsel for Petitioner Foresight Diagnostics Inc.
`
`
`PLEASE NOTE: This message, including any attachments, may include privileged, confidential and/or
`inside information. Any distribution or use of this communication by anyone other than the intended
`recipient(s) is strictly prohibited and may be unlawful. If you are not the intended recipient, please
`notify the sender by replying to this message and then delete it from your system. Thank you.
`
`
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