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Roche Molecular Systems, Inc. v. Illumina, Inc.

Docket IPR2015-01091, Patent Trial and Appeal Board (Apr. 24, 2015)
Lora Green, Tina Hulse, Zhenyu Yang, presiding
Case TypeInter Partes Review
Patent
7955794
Petitioner Roche Molecular Systems, Inc.
Patent Owner Illumina, Inc.
Assignee NATIONAL INSTITUTES OF HEALTH (NIH), U.S. DEPT. OF HEALTH AND HUMAN SERVICES (DHHS), U.S. GOVERNMENT
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Ariosa Diagnostics, Inc. v. Illumina, Inc.

Docket IPR2014-01093, Patent Trial and Appeal Board (July 2, 2014)
Lora Green, Tina Hulse, Toni Scheiner, Zhenyu Yang, presiding
Case TypeInter Partes Review
Patent
7955794
Petitioner Ariosa Diagnostics, Inc.
Patent Owner Illumina, Inc.
Assignee NATIONAL INSTITUTES OF HEALTH (NIH), U.S. DEPT. OF HEALTH AND HUMAN SERVICES (DHHS), U.S. GOVERNMENT
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83 Order: Decision Denying Petitioners Request for Rehearing

Document IPR2014-01093, No. 83 Order - Decision Denying Petitioners Request for Rehearing (P.T.A.B. Sep. 29, 2016)
Indeed, in view of the Board’s new application of Dynamic Drinkware, good cause exists for the Board to consider evidence that Ariosa meets its newly articulated legal requirement.
Petitioner asserts that it identified for the Board multiple cases and legislative history expressly finding that Wertheim does not apply to published patent applications.
In Appendix A to Petitioner’s Request for Rehearing, Petitioner’s declarant, Dr. Cantor, points to where support for claim 1 of the Fan published patent application may be found in the ’810 provisional.
p. 21(47): (1) Although we have not yet determined the minimal amount of total RNA required for each experiment, this method has the potential to detect alternative splicing events from a single cell because of signal amplification of annealed oligos after poly(A)+ selection ... (4) The poly(A)+ selection step eliminates excess oligos as well as those that are nonspecifically hybridized to RNA (in the presence of fRNAs and tRNAs as competitors) or stick to the container surface.
We will then carry out the ligation reaction at room temperature (or higher) using T4 DNA ligase to link the upstream and the downstream oligos that are bridged together through spliced mRNA.
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20 Notice: Notice of Refund

Document IPR2015-01091, No. 20 Notice - Notice of Refund (P.T.A.B. May. 18, 2016)
Petitioner’s request for a refund of certain post-institution fees paid on 04/24/2015 in the above proceeding is hereby granted.
The amount of $16,800 has been refunded to the Petitioner’s deposit account.
Case IPR2015-01091 Patent 7,955,794 The parties are reminded that unless otherwise permitted by 37 C.F.R. § 42.6(b)(2), all filings in this proceeding must be made electronically in the Patent Review Processing System (PRPS), accessible from the Board Web site at http://www.uspto.gov/PTAB.
For the PATENT OWNER:
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81 Order: Decision PO Motion to Terminate Reexamination

Document IPR2014-01093, No. 81 Order - Decision PO Motion to Terminate Reexamination (P.T.A.B. May. 24, 2016)
Patent Owner also cites to the legislative history of the AIA,11 noting: Congress intended for serial invalidity attacks that unduly multiply the proceedings to be terminated under §§ 315(d) & 325(d) and 37 C.F.R. § 42.122(a).
Petitioner asserts further that Roche acquired Ariosa after this proceeding was instituted, and, thus, on April 24, 2015, filed a petition in IPR2015-01091 that included grounds over Straus, as well as over a new reference, Shuber.
The statute expressly contemplates denial of review when the art applied in two petitions is different, but the arguments are “substantially the same.” Id. Petitioner raised patentability over the work of Straus initially in the instant proceeding, and then again in IPR2015-01091.
Petitioner does not appear to have provided an explanation as to why it could not have presented its invalidity grounds challenging the ’794 patent in its requests for ex parte reexamination in the petition filed in the instant proceeding.
Petitioner has provided no reason why it waited until December 2015 and January 2016 to file its requests for ex parte reexamination, using variations of art it cited in both the instant proceeding, and IPR2015-01091.
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18 Decision Denying Institution: Decision Denying Motion for Joinder and Denying Institution of Inter Partes Review

Document IPR2015-01091, No. 18 Decision Denying Institution - Decision Denying Motion for Joinder and Denying Institution of Inter Partes Review (P.T.A.B. Oct. 30, 2015)
We have jurisdiction under 35 U.S.C. § 314, which provides that an inter partes review may not be instituted “unless ... there is a reasonable likelihood that the petitioner would prevail with respect to at least 1 of the claims challenged in the petition.” 35 U.S.C. § 314(a).
The ’794 patent provides “a number of methods directed to the multiplexing amplification and/or genotyping reactions of target sequences to create amplicons that can subsequently be detected on an array.” Id. at 1:54–57.
Specifically, Petitioner contends that joinder is appropriate because: (1) it obviates the concern that Roche may unjustly face estoppel based on a final written decision in the Ariosa IPR despite the fact that Roche had no input on the grounds presented in that proceeding, (2) the petitions address the same claims in the ’794 patent, and (3) joinder simplifies the issues by addressing the validity of the ’794 patent in one proceeding.
Petitioner notes that it cited the parent to correct the failure of the Petition in IPR2014-01093 to demonstrate that the Straus reference relied upon in that proceeding was prior art.
On this record, we are persuaded that our resources are better spent addressing matters other than Petitioner’s belated, and essentially, second attempt to raise a plurality of duplicative grounds against the same patent claims.
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69 Final Decision: Final Written Decision 35 USC 318a and 37 CFR 4273

Document IPR2014-01093, No. 69 Final Decision - Final Written Decision 35 USC 318a and 37 CFR 4273 (P.T.A.B. Jan. 7, 2016)
We determined that the information presented in the Petition and the Preliminary Response demonstrated that there was a reasonable likelihood that Petitioner would prevail in challenging claims 1–22 as unpatentable under 35 U.S.C. § 102.
According to Patent Owner, “[c]onclusory assertions that the ’810 application discloses certain claim elements is not the same as showing that the disclosures made in the Fan Pub are supported by the ’810 application.” Id. at 12.
The Court of Appeals for the Federal Circuit affirmed the Board’s determination that the petitioner had failed to demonstrate that the ’555 patent was entitled to the filing date of the ’490 provisional.
In doing so, the court noted that the Board properly placed the burden on the petitioner “to prove that the prior art [’555] patent was entitled to the filing date of its provisional application.” Id. at 1379.
Thus, as Dynamic Drinkware makes clear, the claims of the patent document must be supported by the earlier filed application to which priority is being sought, in compliance with 35 U.S.C. § 112, first paragraph.
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68 Order: Order Conduct of the Proceeding

Document IPR2014-01093, No. 68 Order - Order Conduct of the Proceeding (P.T.A.B. Jan. 7, 2016)
A conference was held on Tuesday, January 5, 2016, among counsel for the parties and Judges Green, Yang, and Hulse.
Patent Owner argued that Petitioner was engaging in gamesmanship by waiting until a few weeks before the final decision in this proceeding needed to be issued before filing its requests for ex parte reexamination.
For example, Petitioner noted that one of the reexaminations raised obviousness over the combination of Fan and Lizardi, upon which we declined to institute trial in the instant proceeding.
Petitioner stated also that it was not engaging in improper gamesmanship as we declined to institute trial in IPR2015-01091 in November, and it took a certain amount of time to prepare the requests for ex parte reexamination.
In view of the complexity of this issue, we authorize Petitioner to file a motion to terminate the ex parte reexaminations challenging the ’794 patent.
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