`571.272.7822
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` Paper No. 18
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` Entered: October 30, 2015
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ROCHE MOLECULAR SYSTEMS INC.,
`Petitioner,
`
`v.
`
`ILLUMINA, INC.,
`Patent Owner.
`____________
`
`Case IPR2015-01091
`Patent 7,955,794 B2
`____________
`
`
`
`Before LORA M. GREEN, ZHENYU YANG, and TINA E. HULSE,
`Administrative Patent Judges.
`
`
`
`GREEN, Administrative Patent Judge.
`
`
`
`
`
`
`DECISION
`Denying Motion for Joinder
`and Denying Institution of Inter Partes Review
`37 C.F.R. § 42.108; 37 C.F.R. § 42.122(b)
`
`
`
`
`
`
`IPR2015-01091
`Patent 7,955,794 B2
`
`
`INTRODUCTION
`
`
`I.
`
`On April 24, 2015, Roche Molecular Systems, Inc. (“Roche,”
`
`“Petitioner”) filed a Petition requesting an inter partes review of claims
`
`1–22 of U.S. Patent No. 7,955,794 B2 (Ex. 1001, “the ’794 patent”). Paper
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`3 (“Pet.”). Petitioner filed a Motion for Joinder concurrently with the
`
`Petition. Paper 2 (“Mot. Joinder”). Illumina, Inc. (“Illumina,” “Patent
`
`Owner”) filed a Preliminary Response to the Petition (Paper 13, “Prelim.
`
`Resp.”), as well as an Opposition to the Motion for Joinder (Paper 9, “Opp.
`
`Mot. Joinder”). Upon request from the panel, Petitioner filed a Reply to
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`Patent Owner’s Preliminary Response. Paper 15 (“Reply”).
`
`We have jurisdiction under 35 U.S.C. § 314, which provides that an
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`inter partes review may not be instituted “unless . . . there is a reasonable
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`likelihood that the petitioner would prevail with respect to at least 1 of the
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`claims challenged in the petition.” 35 U.S.C. § 314(a).
`
`The statute grants the Board discretion to deny a petition, even when
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`the conditions for review may have been met. See id. (stating only that the
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`Director may not institute review unless certain conditions are met). For the
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`reasons that follow, in light of the totality of circumstances presented in this
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`case, we deny the Petition. 35 U.S.C. §§ 314(a), 325(d); see also 35 U.S.C.
`
`§ 316(b) (noting that the rules for inter partes review proceedings shall take
`
`into account the “regulation on the economy, the integrity of the patent
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`system, the efficient administration of the Office, and the ability of the
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`Office to timely complete proceedings”), 37 C.F.R. § 42.108(b) (“At any
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`time prior to institution of inter partes review, the Board may deny some or
`
`all of the grounds for unpatentability.”).
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`2
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`
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`IPR2015-01091
`Patent 7,955,794 B2
`
`A.
`
`Related Proceedings
`
`Petitioner states that the ’794 patent is the subject of the copending
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`district court case, Illumina, Inc. v. Ariosa Diagnostics, Inc., Case No. 3:14-
`
`cv-01921 (N. D. Cal.), which has been consolidated with Verinata Health,
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`Inc. v. Ariosa Diagnostics, Case No. 3:12-cv-05501-SI (N.D. Cal.). Pet. 2.
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`In addition, this IPR is related to IPR2014-01093, to which Petitioner
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`is seeking joinder. Specifically, we instituted an inter partes review in
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`IPR2014-01093 on January 8, 2015, on the ground that claims 1–22 are
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`anticipated by Fan.1 Ariosa Diagnostics, Inc. (“Ariosa”) is the nominal
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`Petitioner in IPR2014-01093, while Roche is the nominal Petitioner in the
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`instant proceeding. Roche, however, was added as a real party-in-interest in
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`IPR2014-01093 (IPR2014-01093, Paper 35), and Ariosa was named as a real
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`party-in-interest in the instant proceeding (Paper 4).
`
`B.
`
`The ’794 Patent
`
`The ’794 patent issued on June 7, 2011, with Mun-Jui Richard Shen,
`
`Arnold Oliphant, Scott L. Butler, John E. Stuelpnagel, Mark S. Chee,
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`Kenneth M. Kuhn, and Jian-Bing Fan as listed co-inventors. Ex. 1001. The
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`’794 patent provides “a number of methods directed to the multiplexing
`
`amplification and/or genotyping reactions of target sequences to create
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`amplicons that can subsequently be detected on an array.” Id. at 1:54–57.
`
`
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`Specifically, the ’794 patent discloses “a variety of compositions and
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`methods directed to multiplexed analysis of nucleic acids.” Id. at 5:32–34.
`
`The ’794 patent states “[a]s used herein, the phrase ‘multiplex’ or
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`grammatical equivalents refers to the detection, analysis or amplification of
`
`
`1 Fan et al. (“Fan”), Pub. No. US 2002/0172946 A1, published Nov. 21,
`2002 (IPR2014-01093, Ex. 1004).
`
`3
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`
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`IPR2015-01091
`Patent 7,955,794 B2
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`more than one target sequence of interest.” Id. at 5:61–64. As taught by the
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`’794 patent, the methods generally include steps of complexity reduction,
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`specificity, and amplification. Id. at 5:47–49. The nucleic acid to be
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`detected, that is, the target sequence, may be DNA or RNA. Id. at 8:9–17.
`
`C.
`
`Illustrative Claim
`
`Petitioner challenges claims 1–22 of the ’794 patent. Claim 1, the
`
`only independent claim, is illustrative, and is reproduced below:
`
`1. A multiplex method for determining whether a sample
`contains at least 100 different target sequences, comprising:
`
`a. providing a sample which may contain at least 100
`different single-stranded target sequences attached to a first
`solid support;
`
`b. contacting said target sequences with a probe set
`comprising more than 100 different single-stranded probes,
`wherein each of said more than 100 different probes
`comprises:
`
`i) a first universal priming site, wherein each of said more
`than 100 different probes has identical universal priming
`sites, and
`
`ii) a target specific domain, such that different double
`stranded hybridization complexes are formed, each of the
`different hybridization complexes comprising one of said
`more than 100 different single-stranded probes and one of
`the different single-stranded target sequences from the
`sample;
`
`c. removing unhybridized probes;
`
`d) contacting said probes of the hybridization complexes
`with a first enzyme and forming different modified probes;
`
`e. contacting said modified probes with:
`
`i) at least a first primer that hybridizes to said universal
`priming site;
`
`4
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`
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`IPR2015-01091
`Patent 7,955,794 B2
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`ii) NTPs; and
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`iii) an extension enzyme;
`
`wherein said different modified probes are amplified
`and forming different amplicons;
`
`f. immobilizing said different amplicons to a second solid
`support, and
`
`g. detecting said different amplicons immobilized to said
`second solid support, thereby determining whether the
`sample contains at least 100 different target sequences.
`
`D.
`
`The Asserted Grounds of Unpatentability
`
`Petitioner challenges the patentability of claims 1–22 of the ’794
`
`patent on the following grounds:
`
`Reference(s)
`
`Shuber2
`
`Shuber
`
`Straus3
`
`Shuber and Fodor4
`
`Strauss and Fodor
`
`Shuber and Backman5
`
`Shuber and Straus
`
`Basis
`
`§ 102
`
`§ 103
`
`§ 102
`
`§ 103
`
`§ 103
`
`§ 103
`
`§ 103
`
`Claim(s) challenged
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`1–3, 5–8, 14, 15, 17
`
`1–3, 5–8
`
`1–3, 5–9, 11, 13–15, 17,
`21
`4
`
`4
`
`9–11, 13–15, 17
`
`9–11, 13–15, 17
`
`
`2 Shuber, US 5,834,181, issued Nov. 10, 1998 (Ex. 1003).
`3 Straus, Pub. No. US 2002/0086289 A1, published Jul. 4, 2002 (Ex. 1004).
`4 Fodor et al. (“Fodor”), US 6,197,506 B1, issued Mar. 6, 2001 (Ex. 1005).
`5 Backman et al. (“Backman”), US 5,792,607, issued Aug. 11, 1998
`(Ex. 1006).
`
`5
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`IPR2015-01091
`Patent 7,955,794 B2
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`Reference(s)
`
`Shuber and Diamandis6
`
`Basis
`
`§ 103
`
`Shuber, Backman, and
`Diamandis
`Shuber, Straus, and Diamandis § 103
`
`§ 103
`
`Claim(s) challenged
`
`12
`
`12
`
`12
`
`Shuber and Walt7
`
`Straus and Walt
`
`§ 103
`
`§ 103
`
`15–18
`
`15–18, 21, 22
`
`Shuber, Backman, and Walt
`
`§ 103
`
`15–18, 21, 22
`
`Shuber, Straus, and Walt
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`Shuber and Backman
`
`Straus and Backman
`
`§ 103
`
`§ 103
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`§ 103
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`15–18, 21, 22
`
`19 and 20
`
`19 and 20
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`Shuber, Straus, and Backman
`
`§ 103
`
`19 and 20
`
`
`
`
`II.
`
`MOTION FOR JOINDER
`
`An inter partes review may be joined with another inter partes
`
`review, subject to the provisions of 35 U.S.C. § 315(c), which governs
`
`joinder of inter partes review proceedings:
`
`(c) JOINDER.—If the Director institutes an inter partes review,
`the Director, in his or her discretion, may join as a party to that
`inter partes review any person who properly files a petition
`under section 311
`that
`the Director, after receiving a
`preliminary response under section 313 or the expiration of the
`time for filing such a response, determines warrants the
`institution of an inter parties review under section 314.
`
`
`6 Eleftherios P, Diamandis and Theodore K. Christopoulos (“Diamandis”),
`The Biotin—(Strept)Avidin System: Principles and Applications in
`Biotechnology, 37 CLIN. CHEM. 625–636 (1991) (Ex. 1008)
`7 Walt et al. (“Walt”), US 6,327,410 B1, issued Dec. 4, 2001 (Ex. 1007).
`
`6
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`IPR2015-01091
`Patent 7,955,794 B2
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`As the moving party, Petitioner bears the burden of proving that it is
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`entitled to the requested relief. 37 C.F.R. § 42.20(c). A motion for joinder
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`should: (1) set forth the reasons joinder is appropriate; (2) identify any new
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`grounds of unpatentability asserted in the petition; and (3) explain what
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`impact (if any) joinder would have on the trial schedule for the existing
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`review. See Kyocera Corp. v. Softview LLC, IPR2013-00004, slip op. at 4
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`(PTAB April 24, 2013) (Paper 15); Frequently Asked Question (“FAQ”) H5
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`on the Board’s website at http://www.uspto.gov/ip/boards/bpai/prps.jsp.
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`The Petition in this proceeding has been accorded a filing date of
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`April 24, 2015. Paper 5. IPR2014-01093 was instituted on January 8, 2015.
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`IPR2014-01093, Paper 14. The Petition and Motion for Joinder in the
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`instant proceeding, therefore, fail to satisfy the joinder requirement of being
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`filed within one month of our instituting a trial in IPR2014-01093.
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`37 C.F.R. § 42.122 (“Any request for joinder must be filed . . . no later than
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`one month after the institution date of any inter partes review for which
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`joinder is requested.”).
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`
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`Petitioner contends that the Board should exercise its discretion, and
`
`waive the one month requirement for filing the Motion for Joinder. Mot.
`
`Joinder 1 (citing Sony Corp. of Am. v. Network-1 Sec. Solutions, Inc.,
`
`IPR2013-00495, slip. op. at 4 (PTAB Sept. 16, 2013) (Paper 13) (exercising
`
`discretion to waive the one-month requirement under 37 C.F.R.
`
`§ 42.122(b)). Specifically, Roche argues that it announced its acquisition of
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`Ariosa on December 2, 2014, which acquisition was not complete until
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`January 12, 2015. Id. at 1, 4. Thus, Roche argues, it had no input as to the
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`challenges that were filed in IPR2014-01093, as it had no interest in Ariosa
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`when the Petition in that IPR was filed. Id. at 1–2.
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`7
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`
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`Petitioner notes that once it had completed acquisition of Ariosa, it
`
`conducted its own assessment of the validity of the ’794 patent. Id. at 4.
`
`Petitioner states that even though the Petition in the instant proceeding is not
`
`barred under 35 U.S.C. § 315(b), it is seeking joinder in order to avoid the
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`possibility of estoppel under 35 U.S.C. § 315(e) if a final decision were to be
`
`issued in IPR2014-01093 before the conclusion of the instant proceeding.
`
`Id. at 5.
`
`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.
`
`Id. at 3. Petitioner notes that it “is willing [to] work with Illumina to arrive
`
`at a mutually agreeable schedule that reduces any prejudice due to delays in
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`[IPR2014-01093].” Id. at 7–8. Petitioner suggests a schedule that would
`
`allow for completion of IPR2014-01093 within eighteen months, which
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`would be permitted in the case of joinder. Id. at 8.
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`
`
`Patent Owner opposes joinder. Opp. Mot. Joinder. According to
`
`Patent Owner, trial was instituted in IPR2014-01093 on January 8, 2015, and
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`on January 20, 2015, Ariosa informed the District Court that Roche is an
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`entity interested in the outcome of the litigation. Id. at 3 (citing Ex. 2008).
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`On February 2, 2015, the District Court stayed the pending litigation
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`pending the outcome of IPR2014-01093. Id. (citing Ex. 2010). Petitioner,
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`Patent Owner argues, then waited until after it cross-examined Patent
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`Owner’s experts in IPR2014-01093 to file the Petition in the instant
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`proceeding on April 24, 2015. Id. at 4.
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`8
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`Patent 7,955,794 B2
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`
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`Patent Owner asserts further that before Ariosa ever filed its Petition
`
`in IPR2014-01093, Ariosa and Petitioner were already in acquisition
`
`discussions. Id. Specifically, the Petition in IPR2014-01093 was filed on
`
`July 2, 2014, while Petitioner and Ariosa were in discussion as of June 6,
`
`2014. Id. (citing Ex. 2014). Moreover, according to Patent Owner,
`
`Dr. John Stuelpnagel, one of the inventors of the ’794 patent, represented
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`Ariosa in the acquisition discussions. Id. Roche announced it was acquiring
`
`Ariosa on December 2, 2014, which was before trial was instituted in
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`IPR2014-01093. Id. (citing Ex. 2016). Petitioner’s acquisition of Ariosa
`
`was completed on January 12, 2015. Id. (citing Paper 2, 4).
`
`
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`Patent Owner argues that IPR2014-01093 is at an advanced stage. Id.
`
`at 3. Thus, Patent Owner argues, joinder would significantly affect the
`
`schedule in IPR2014-01093. Id. at 5. In fact, Patent Owner asserts, the
`
`institution decision in the instant proceeding would be due more than two
`
`months after oral argument was held in IPR2014-01093. Id.
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`Patent Owner argues further that Petitioner’s Motion for Joinder is
`
`untimely, as it was filed nearly four months after trial was instituted in
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`IPR2014-01093. Id. Patent Owner asserts that any special circumstances
`
`that would justify waiving the one month time limit for the filing of the
`
`Motion for Joinder were of Petitioner’s own making. Id. at 6.
`
`Mr. Dan Zambrowski, head of Roche Tissue Diagnostics and Roche
`
`Sequencing Unit, “acknowledged that Roche knew about Ariosa’s litigation
`
`with Illumina, stating that Roche ‘went into this agreement with our eyes
`
`wide open.’” Id. at 7 (citing Ex. 2017, 3). In addition, Petitioner completed
`
`its acquisition of Ariosa on January 12, 2015, only four days after trial was
`
`instituted in IPR2014-01093, which would have left Petitioner a month to
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`prepare and file its petition and motion for joinder. Id. at 7–8. Rather,
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`9
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`Patent Owner argues, Petitioner waited nearly three and half months before
`
`filing. Id. at 8.
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`
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`Petitioner responds that the Petition in IPR2014-01093 was filed on
`
`July 2, 2014, which was more than 6 months before its acquisition of Ariosa
`
`was completed. Paper 11, 3. Specifically, Petitioner argues:
`
`Although Roche was aware of Ariosa’s litigation with Illumina,
`Roche was not in a position to develop invalidity positions or to
`influence the grounds selected in Ariosa’s petition, and indeed,
`the Ariosa transaction could have fallen through at any time
`before the deal closed on January 12, 2015. Illumina’s view as
`to what Roche should have done during the negotiations before
`the deal closed, and before Roche and Ariosa had any
`substantive relationship, would impose an unworkable burden
`on parties engaged in business discussions.
`
`Id. at 3–4.
`
`
`
`Joinder is not automatic, but is discretionary based on the particular
`
`circumstances of each proceeding. See Unified Patents, Inc. v. Personalweb
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`Techs., LLC and Level 3 Commc’ns, LLC, Case IPR2014-00702, slip. op. at
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`4 (PTAB Jan. 13, 2015) (Paper 12). In the instant proceeding, we agree with
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`Patent Owner that joinder with IPR2014-01093 would not promote the
`
`efficient resolution of those proceedings.
`
`
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`After carefully considering both Petitioner’s and Patent Owner’s
`
`evidence and argument, we deny Petitioner’s Motion for Joinder. As noted
`
`by Patent Owner, Roche announced the acquisition of Ariosa at least as early
`
`as December 2, 2014. Ex. 2017. And as also noted by Patent Owner, at that
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`time, Roche was aware that “Ariosa . . . [was] embroiled in a number of
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`patent infringement lawsuits, including with . . . Illumina[ ] and Illumina’s
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`Verinata Health business, and Roche will continue to defend the company in
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`court, Zambrowski said, adding that Roche ‘went into this agreement with
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`10
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`IPR2015-01091
`Patent 7,955,794 B2
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`our eyes wide open.’” Id. Given that Petitioner had announced the
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`acquisition of Ariosa as early as December 2, 2014, noting that it went into
`
`the agreement to acquire Ariosa with its eyes wide open, Petitioner has not
`
`provided a persuasive reason as to why it waited until April 24, 2015, to file
`
`the instant Petition.
`
`Moreover, Patent Owner has provided evidence that “Roche acquiring
`
`Ariosa was first raised on or around June 6, 2014,” with the “primary people
`
`involved in these discussions were Dr. Ken Song, Dr. John Stuelpnagel [a
`
`listed inventor on the ’794 patent], and Mr. Dan Pickett from Ariosa and Dr.
`
`Dan Zabrowski and Mr. Jonathan Seaton from Roche.” Ex. 2014, 7.
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`Petitioner has not provided any persuasive reasons as to why one month was
`
`not sufficient time for Roche to file the instant Petition after trial was
`
`instituted in IPR2014-01093, because Roche already was well aware of the
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`litigation between Ariosa and Illumina from its discussions over acquiring
`
`Ariosa, which began as early as June of 2014. Petitioner could have also
`
`filed its own petition at any time, as there is no standing requirement to file a
`
`petition for inter partes review. See 35 U.S.C. § 311(a) (noting that “a
`
`person who is not the owner of a patent may file with the Office a petition to
`
`institute an inter partes review”); see also Coalition for Affordable Drugs VI,
`
`LLC v. Celgene Corp., IPR2015-01092, slip. op. at 3–4 (PTAB Sept. 25,
`
`2015) (Paper 19) (noting that in contrast to covered business method
`
`reviews, which require a party or privy to have been sued or charged with
`
`infringement of the patent, any person who is not the owner of the patent
`
`may file a petition for inter partes review of a patent).
`
`
`
`Petitioner’s reliance on Sony Corp. of America v. Network-1 Security
`
`Solutions, Inc., IPR2013-00495, slip. op. at 4 (PTAB Sept. 16, 2013) (Paper
`
`13), does not convince us otherwise. In that proceeding, the petitioner
`
`11
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`IPR2015-01091
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`asserted grounds that were identical to those on which the Board had already
`
`instituted trial, and, thus, joinder did not require any change to the trial
`
`schedule and added no burden to the existing parties. Id. at 9. Those
`
`circumstances are not present in the instant case, as Petitioner has presented
`
`eighteen new challenges, none of which are the challenge on which review
`
`was instituted in IPR2014-01093.
`
`
`III.
`
`INSTITUTION OF INTER PARTES REVIEW
`
`The Board has discretion to deny a petition, even when the conditions
`
`for review may have been met. See 35 U.S.C. §§ 314(a), 316(b); 37 C.F.R.
`
`§ 42.108(b). One factor the Board may take into account when exercising
`
`that discretion is whether “the same or substantially the same prior art or
`
`arguments previously were presented to the Office.” 35 U.S.C. § 325(d)
`
`(“[i]n determining whether to institute or order a proceeding” for inter partes
`
`review, “the Director may take into account” that factor, and “reject the
`
`petition” on that basis).
`
`
`
`Petitioner seeks inter partes review of claims 1–22 of the ’794 patent
`
`for, what is, essentially, a second time. Pet. 1. Petitioner notes that a
`
`separate petition for inter partes review of the ’794 patent was filed by
`
`Ariosa in IPR2014-01093, but contends that it had no control over the
`
`content of that petition. Id. at 1–2. Although that may be technically true,
`
`both the Petitioner in this case, Roche, and the Petitioner in IPR2014-01093,
`
`Ariosa, are both designated as real parties-in-interest in both proceedings.
`
`And, as discussed above, while Petitioner in the instant proceeding may have
`
`made a calculated business decision to wait to file the instant petition, it
`
`knew as early as June 2014 that it may acquire Ariosa, and it could have
`
`filed its own petition at any time, as there is no standing requirement to file a
`
`petition for inter partes review. Thus, there was no need for Roche to wait
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`12
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`to file its petition, as there was no bar to the filing of its petition within a
`
`month of institution of trial in IPR2014-01093.
`
`
`
`Patent Owner contends that the petition should be denied as it raises
`
`the same or substantially the same arguments presented in the IPR2014-
`
`01093 Petition. Prelim. Resp. 15. Specifically, as to the challenges that rely
`
`on Straus, Patent Owner argues that the Straus reference is “substantively
`
`identical” to the Straus reference relied upon by Ariosa in IPR2014-01093.
`
`Id. at 15–16. According to Patent Owner, the Straus reference relied upon in
`
`the instant proceeding “is the parent application of, and is substantively
`
`identical” to the Straus references cited in IPR2014-01093, arguing that
`
`Petitioner has not provided a meaningful explanation as to the differences
`
`between the two references. Id. at 16–17. As to the reliance on Shuber in
`
`the instant Petition, Patent Owner argues that Petitioner presents no
`
`argument that it was not aware of Shuber when the IPR2014-01093 Petition
`
`was filed. Id. at 18–19.
`
`
`
`Patent Owner argues further that Petitioner is using the instant Petition
`
`as a means to remedy the deficiencies of the IPR2014-01093 Petition. Id. at
`
`19–21. In particular, Patent Owner argues that Petitioner waited until after
`
`Patent Owner had filed its Response, and after it had the opportunity to
`
`cross-examine Patent Owner’s experts in IPR2014-01093, before filing the
`
`instant Petition. Id. at 20. According to Patent Owner, “Petitioners have
`
`gained an unfair advantage in the present IPR by delaying until Illumina and
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`Petitioners’ experts have taken specific positions in the ’093 IPR as part of
`
`the ‘feedback loop’ to remedy the defects of the ’093 IPR.” Id. at 20–21
`
`(citing Travelocity.com L.P. v. Chronos Techs., LLC., CBM2015-00047,
`
`slip. op. at 13 (PTAB June 15, 2015) (Paper 7) (stating that the Board’s
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`13
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`IPR2015-01091
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`decisions “are not simply part of a feedback loop by which a petitioner may
`
`perfect its challenges through a subsequent filing.”)).
`
`
`
`Petitioner responds that “it is objectively unreasonable to suggest that
`
`Ariosa could have raised the Shuber patent in its Petition [in IPR2014-
`
`01093].” Paper 16, 3. Specifically, Petitioner asserts that the field is
`
`crowded, with over 300 references cited on the face of the ’794 patent,
`
`which did not include a listing of the Shuber patent. Id. Moreover,
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`Petitioner asserts that Shuber uses unorthodox language, and, thus, “[t]he
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`fact that three interested participants failed to find the Shuber patent in this
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`crowded field demonstrates, if anything, it would be unreasonable to suggest
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`that Ariosa could have raised it in its Petition.” Id. at 3–4.
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`We approach our discretion to deny a petition on a case-by-case basis.
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`As explained above, one factor that favors denial of the instant Petition is
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`that it raises “substantially the same” arguments as the Petition in IPR2014-
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`01093. 35 U.S.C. § 325(d). We have compared the prior art and arguments
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`raised in the instant Petition to those raised in the Petition filed in IPR2014-
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`01093. Based on the information presented, we are persuaded that the
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`instant Petition raises, at minimum, “substantially the same . . . arguments”
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`that “previously were presented to the Office” in the Petition filed in
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`IPR2014-01093. 35 U.S.C. § 325(d). That is one factor, contributing to the
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`totality of circumstances in this case, that informs our decision to exercise
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`our discretion to deny the Petition.
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`On that point, Patent Owner observes that the Straus reference cited
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`by Petitioner in the instant proceeding is the parent of Straus cited in the
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`Petition in IPR2014-01093. Petitioner notes that it cited the parent to correct
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`the failure of the Petition in IPR2014-01093 to demonstrate that the Straus
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`reference relied upon in that proceeding was prior art. Pet. 18 n.4.
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`Petitioner does not explain, however, why the Straus reference cited in the
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`instant Petition could not have been relied upon in the IPR2014-01093
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`Petition.
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`As to Shuber, Petitioner notes that it is prior art under 35 U.S.C.
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`§ 102(b), and “provides an actual example of detection of more than 100
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`different target nucleic acids.” Pet. 59. Other than those statements,
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`Petitioner does not point specifically to differences between the teaching of
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`Shuber and Fan, on which trial was instituted in IPR2014-01093. Moreover,
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`although Petitioner explains why Shuber may have been difficult for Ariosa,
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`Illumina, and the Examiner to locate, that does not obviate the fact that the
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`instant Petition, is in effect, a second chance for Ariosa to perfect the
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`Petition it filed in IPR2014-01093. Paper 16, 3–4. In addition, Petitioner,
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`other than as to the Shuber reference, does not argue that any of the
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`additionally cited references relied upon by the instant Petition were
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`unknown or unavailable at the time of filing the Petition in IPR2014-01093.
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`That fact supports a reasonable inference that those references were known
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`and available to Ariosa when review was requested the first time. On this
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`record, interests of fairness, economy, and efficiency tip the balance in favor
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`of denial.
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`Another factor that tips the balance in favor of denying institution of
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`inter partes review is the timing of the filing of the instant Petition. As
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`noted by Patent Owner, Petitioner had the advantage of the Patent Owner’s
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`response in IPR2014-01093 (Prelim. Resp. 20), as well the depositions of
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`Patent Owner’s expert in that proceeding, which were conducted by counsel
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`for Roche (id. at 8). Essentially, the only reason that Petitioner has provided
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`for waiting until April of 2015 to file the instant Petition is that it did not
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`complete its acquisition of Ariosa until January 12, 2015. However, as
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`discussed above, Petitioner was aware of the possibility of acquiring Ariosa
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`as early as June of 2014, and announced its acquisition as early as December
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`of 2014. Petitioner has not provided any persuasive reason as to why it
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`could not have filed the Petition earlier, much less why the Petition could
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`not have been filed within one month of institution of IPR2014-01093.
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`On this record, we are persuaded that our resources are better spent
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`addressing matters other than Petitioner’s belated, and essentially, second
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`attempt to raise a plurality of duplicative grounds against the same patent
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`claims. See Heckler v. Chaney, 470 U.S. 821, 831 (1985) (when deciding
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`whether to take action in a particular matter, an agency must determine
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`whether its resources are best spent on one matter or another). Petitioner
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`provides no persuasive reason why we should institute inter partes review in
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`light of the above facts. Based on the totality of circumstances before us, we
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`exercise our discretion and deny institution of inter partes review.
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`35 U.S.C. §§ 314(a), 316(b), 325(d); 37 C.F.R. § 42.108(b).
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`IV. ORDER
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`In consideration of the foregoing, it is hereby
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`OREDERED that Petitioner’s Motion for Joinder is denied; and
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`FURTHER ORDERED that the Petition is denied.
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`For PETITIONER:
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`David Cavanaugh
`Owen Allen
`William Kim
`Wilmer Cutler Pickering Hale and Dorr LLP
`David.cavanaugh@wilmerhale.com
`Owen.allen@wilmerhale.com
`William.kim@wilmerhale.com
`
`For PATENT OWNER:
`
`Kerry Taylor
`Michael L. Fuller
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2KST@knobbe.com
`2MLF@knobbe.com
`
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