UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________
`
`DEXCOM, INC.,
`Petitioner,
`
`v.
`
`ABBOTT DIABETES CARE INC.,
`Patent Owner.
`
`IPR2023-01251
`IPR2023-01252
`U.S. Patent No.: 11,298,056
`Issued: April 12, 2022
`
`Title: METHODS AND SYSTEMS FOR EARLY SIGNAL ATTENUATION
`DETECTION AND PROCESSING
`_________________
`
`PETITIONER’S EXPLANATION OF
`MATERIAL DIFFERENCES BETWEEN PETITIONS
`
`
`
`
`
`_________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________
`
`DEXCOM, INC.,
`Petitioner,
`
`v.
`
`ABBOTT DIABETES CARE INC.,
`Patent Owner.
`
`IPR2023-01251
`IPR2023-01252
`U.S. Patent No.: 11,298,056
`Issued: April 12, 2022
`
`Title: METHODS AND SYSTEMS FOR EARLY SIGNAL ATTENUATION
`DETECTION AND PROCESSING
`_________________
`
`PETITIONER’S EXPLANATION OF
`MATERIAL DIFFERENCES BETWEEN PETITIONS
`
`
`
`
`
`IPR2023-01251
`Patent 11,298,056
`Petitioner concurrently is filing two petitions for inter partes review of U.S.
`
`Patent No. 11,298,056 (the ’056 patent). Petition 1 (IPR2023-01251) assumes that
`
`all claims have an effective filing date in 2009, while Petition 2 (IPR2023-01252)
`
`argues that no claim has an effective filing date before 2021. Pursuant to the PTAB
`
`Consolidated Trial Practice Guide November 2019 (“TPG”), Petitioner submits this
`
`explanation of the material differences between these two Petitions and why both
`
`should be instituted. See TPG, 59-60. Petitioner ranks Petition 1 first.
`
`While mostly challenging
`
`the same claims,
`
`the
`
`two petitions are
`
`fundamentally different because they are based on different presumed effective
`
`filing dates of the claims: April 2009 for Petition 1 and April 2021 for Petition 2.
`
`This difference justifies two petitions. See TPG at 59 (“[T]he Board recognizes that
`
`there may be circumstances in which more than one petition may be necessary,
`
`including, for example, … when there is a dispute about priority date requiring
`
`arguments under multiple prior art references.”). Thus, even if the Board institutes
`
`IPR on Petition 1, it should also consider and institute on Petition 2.
`
`Petitioner expects Patent Owner to argue that the claims are entitled to an
`
`effective filing date in 2009 not 2021 as asserted in Petition 2. If, in its Institution
`
`analysis, the Board agrees with Patent Owner that each claim is entitled to be
`
`backdated before 2021, then no IPR will be instituted on Petition 2, in which case
`
`there will not be parallel IPR proceedings and no added burden on Patent Owner or
`
`Petitioner’s Explanation Of Material Differences Between Petitions
`
`Page 1
`
`
`
`IPR2023-01251
`Patent 11,298,056
`the Board after the Institution Decision. On the other hand, if the Board finds at the
`
`Institution stage that Patent Owner fails to satisfy its burden of production to show
`
`an effective filing date earlier than 2021 and thus institutes IPR, it is possible that
`
`the Board at the Final Written Decision stage, or the Board’s reviewing Court on
`
`appeal, later may find otherwise. In that case, at least the primary reference asserted
`
`in Petition 2, published July 2019, would not qualify as prior art and Petition 2 would
`
`fail. In that case, without Petition 1, Petitioner would have forfeited the opportunity
`
`to have the Board and its reviewing Court evaluate the patentability of the ’056
`
`claims assuming a 2009 effective filing date.
`
`Petition 2 adds little burden to Patent Owner because all four prior art
`
`references asserted therein are Patent Owner’s references and, more importantly,
`
`Patent Owner is highly unlikely to deny unpatentability over those references of any
`
`claim that it cannot backdate before 2021. In short, Patent Owner is not expected to
`
`argue that the ’056 patent’s claims are non-obvious over what is essentially the
`
`content of the patent’s specification (with the exception of the as-filed claims being
`
`different). Thus, the only added burden on Patent Owner is to meet its burden of
`
`production to backdate the claims before 2021. Presumably Patent Owner has
`
`already compared the claims of the ’056 patent to the disclosures of the ancestor
`
`applications when it asserted the benefit of the filing dates of those ancestor
`
`applications. While the Board will need to compare the Petition 2 prior art to the
`
`Petitioner’s Explanation Of Material Differences Between Petitions
`
`Page 2
`
`
`
`IPR2023-01251
`Patent 11,298,056
`claims, the burden of doing this should be less than normal because the prior art
`
`includes essentially the substance of the written description and drawings of the ’056
`
`patent. Therefore often the prior art has a verbatim disclosure of a claim element,
`
`and the Board will most likely not need to evaluate arguments by the Patent Owner
`
`attempting to distinguish the claims from the asserted references.
`
`While the effective filing date of the claims is a dispositive threshold issue in
`
`Petition 2, it is immaterial to Petition 1, which relies exclusively on publications that
`
`qualify as prior art even if the claims are backdated to April 2009.
`
`It was not practical to combine these two petitions into one. Being based on
`
`different effective filing dates, they are based on entirely different combinations of
`
`prior art. Also, Petition 2 reasonably includes a thorough discussion of the governing
`
`law on written description and enablement, which informs the Patent Owner’s
`
`burdens of production to show entitlement to an earlier filing date—none of this
`
`matters in Petition 1. Petition 2 also reasonably includes a discussion of the claims’
`
`“full scope” and a comparison of that full scope to the disclosures of the 2018
`
`ancestor patent application—neither of which matters in Petition 1.
`
`
`
`Moreover, the length and number of claims further warrants multiple
`
`petitions. For example, independent claim 1 alone of the ’056 patent includes 487
`
`words and numerous features presented across several clauses, which presents a
`
`difficulty in covering both non-ancestral-based prior art grounds (Petition 1) and
`
`Petitioner’s Explanation Of Material Differences Between Petitions
`
`Page 3
`
`
`
`IPR2023-01251
`Patent 11,298,056
`arguments regarding a lack of full-scope written description and enablement support,
`
`and associated ancestral-based prior art grounds (Petition 2), within a single petition.
`
`In district court, Patent Owner’s complaint expressly asserts infringement of “at least
`
`claim 1” and discusses claims 3-11 and 13-17 and 19. Patent Owner has not limited
`
`the asserted claims and thus currently is presumed to assert all 30 claims.
`
`For at least these reasons, the Board therefore should exercise its discretion to
`
`institute both Petitions. The burden on the Board to address Petition 2 in addition to
`
`Petition 1 is not great, and Petition 2 addresses a lack of full-scope written
`
`description and enablement support not addressed by Petition 1. The Board has
`
`instituted trial on multiple parallel petitions in similar situations. See, e.g., Google
`
`LLC v. Hafeman, IPR2022-01190, Paper No. 16 at 11-12 (P.T.A.B. Jan. 31, 2023)
`
`(instituting IPR proceedings on two petitions asserting, as here, different prior art
`
`combinations, one petition assuming the earliest possible effective filing date for the
`
`claims and one challenging that effective filing date and asserting intervening prior
`
`art); Pacific Biosciences of Cal., Inc., v. Personal Genomics Taiwan, Inc., No.
`
`IPR2020-01200, Paper No. 15 at 8-10 (P.T.A.B. Jan. 19, 2021) (permitting two
`
`petitions despite some claim overlap between the petitions); Medtronic Inc. et al. v.
`
`Teleflex Innovations S.A.R.L., No. IPR2020-00136, Paper No. 20 at 37-40 (P.T.A.B.
`
`June 26, 2020); Microsoft Corp. v. IPA Techs, Inc., No. IPR2019-00835, Paper No.
`
`9 at 21 (P.T.A.B. Oct. 23, 2019) (three petitions).
`
`Petitioner’s Explanation Of Material Differences Between Petitions
`
`Page 4
`
`
`
`IPR2023-01251
`Patent 11,298,056
`Pursuant to the guidance of the TPG, Petitioner provides the following table
`
`illustrating the primary differences between first-ranked Petition 1 and second-
`
`ranked Petition 2:
`
`
`
`Earliest Possible Effective Filing Date
`of Any Challenged Claim
`Explains lack of entitlement to priority
`date based on failure to support full
`scope of claims under Section 112, and
`related case law.
`Relies on third party prior art
`publications
`Relies on Patent Owner’s own
`publications.
`Relies on patent publications to which
`the challenged claims allege priority
`Challenged Claims
`
`Petition 1
`(IPR2023-01251)
`April 29, 2009
`
`Petition 2
`(IPR2023-01252)
`April 30, 2021
`
`No
`
`Yes
`
`No
`
`No
`
`Yes
`
`No
`
`Yes
`
`Yes
`
`1-12, 14-28, and 30 1-30
`
`
`
`August 1, 2023
`
`Respectfully submitted,
`
`
`
`By: /John D. Vandenberg /
`John D. Vandenberg, Reg. No. 31,312
`john.vandenberg@klarquist.com
`Andrew M. Mason, Reg. No. 64,034
`andrew.mason@klarquist.com
`Amy C. Haspel, Reg. No. 78,385
`amy.haspel@klarquist.com
`KLARQUIST SPARKMAN, LLP
`One World Trade Center, Suite 1600
`121 S.W. Salmon Street
`Portland, Oregon 97204
`
`Petitioner’s Explanation Of Material Differences Between Petitions
`
`Page 5
`
`
`
`IPR2023-01251
`Patent 11,298,056
`
`Tel: 503-595-5300
`Fax: 503-595-5301
`
`Counsel for Petitioner
`
`Petitioner’s Explanation Of Material Differences Between Petitions
`
`Page 6
`
`
`
`IPR2023-01251
`Patent 11,298,056
`
`CERTIFICATE OF SERVICE
`IN COMPLIANCE WITH 37 C.F.R. § 42.6(e)(4)
`The undersigned certifies that the Petitioner’s Explanation Of Material
`
`Differences Between Petitions was served on August 1, 2023, via Federal
`
`Express on the Patent Owner at the following address of record as listed on the
`
`USPTO Patent Center:
`
`One LLP - ADC
`Alana Fredericks
`23 Corporate Plaza, Suite 150
`Newport Beach, CA 92660
`
`
`
`
`
`
`By: /John D. Vandenberg /
`Andrew M. Mason, Reg. No. 64,034
`andrew.mason@klarquist.com
`KLARQUIST SPARKMAN, LLP
`One World Trade Center, Suite 1600
`121 S.W. Salmon Street
`Portland, Oregon 97204
`Tel: 503-595-5300
`Fax: 503-595-5301
`
`Counsel for Petitioner
`
`
`
`
`
`
`
`
`Certificate Of Service
`
`
`
`Page 7
`
`
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