throbber
Trials@uspto.gov
`571.272.7822
`
`
`
`
`
` Paper No. 18
`
` Entered: October 30, 2015
`
`
`
`
`
`
`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
`
`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
`
`Patent Owner’s Preliminary Response. Paper 15 (“Reply”).
`
`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 statute grants the Board discretion to deny a petition, even when
`
`the conditions for review may have been met. See id. (stating only that the
`
`Director may not institute review unless certain conditions are met). For the
`
`reasons that follow, in light of the totality of circumstances presented in this
`
`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
`
`system, the efficient administration of the Office, and the ability of the
`
`Office to timely complete proceedings”), 37 C.F.R. § 42.108(b) (“At any
`
`time prior to institution of inter partes review, the Board may deny some or
`
`all of the grounds for unpatentability.”).
`
`2
`
`

`

`IPR2015-01091
`Patent 7,955,794 B2
`
`A.
`
`Related Proceedings
`
`Petitioner states that the ’794 patent is the subject of the copending
`
`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,
`
`Inc. v. Ariosa Diagnostics, Case No. 3:12-cv-05501-SI (N.D. Cal.). Pet. 2.
`
`In addition, this IPR is related to IPR2014-01093, to which Petitioner
`
`is seeking joinder. Specifically, we instituted an inter partes review in
`
`IPR2014-01093 on January 8, 2015, on the ground that claims 1–22 are
`
`anticipated by Fan.1 Ariosa Diagnostics, Inc. (“Ariosa”) is the nominal
`
`Petitioner in IPR2014-01093, while Roche is the nominal Petitioner in the
`
`instant proceeding. Roche, however, was added as a real party-in-interest in
`
`IPR2014-01093 (IPR2014-01093, Paper 35), and Ariosa was named as a real
`
`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,
`
`Kenneth M. Kuhn, and Jian-Bing Fan as listed co-inventors. Ex. 1001. 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, the ’794 patent discloses “a variety of compositions and
`
`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
`
`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
`
`

`

`IPR2015-01091
`Patent 7,955,794 B2
`
`more than one target sequence of interest.” Id. at 5:61–64. As taught by the
`
`’794 patent, the methods generally include steps of complexity reduction,
`
`specificity, and amplification. Id. at 5:47–49. The nucleic acid to be
`
`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
`
`

`

`IPR2015-01091
`Patent 7,955,794 B2
`
`ii) NTPs; and
`
`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
`
`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
`
`

`

`IPR2015-01091
`Patent 7,955,794 B2
`
`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
`
`Shuber and Backman
`
`Straus and Backman
`
`§ 103
`
`§ 103
`
`§ 103
`
`15–18, 21, 22
`
`19 and 20
`
`19 and 20
`
`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
`
`

`

`IPR2015-01091
`Patent 7,955,794 B2
`
`As the moving party, Petitioner bears the burden of proving that it is
`
`entitled to the requested relief. 37 C.F.R. § 42.20(c). A motion for joinder
`
`should: (1) set forth the reasons joinder is appropriate; (2) identify any new
`
`grounds of unpatentability asserted in the petition; and (3) explain what
`
`impact (if any) joinder would have on the trial schedule for the existing
`
`review. See Kyocera Corp. v. Softview LLC, IPR2013-00004, slip op. at 4
`
`(PTAB April 24, 2013) (Paper 15); Frequently Asked Question (“FAQ”) H5
`
`on the Board’s website at http://www.uspto.gov/ip/boards/bpai/prps.jsp.
`
`The Petition in this proceeding has been accorded a filing date of
`
`April 24, 2015. Paper 5. IPR2014-01093 was instituted on January 8, 2015.
`
`IPR2014-01093, Paper 14. The Petition and Motion for Joinder in the
`
`instant proceeding, therefore, fail to satisfy the joinder requirement of being
`
`filed within one month of our instituting a trial in IPR2014-01093.
`
`37 C.F.R. § 42.122 (“Any request for joinder must be filed . . . no later than
`
`one month after the institution date of any inter partes review for which
`
`joinder is requested.”).
`
`
`
`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
`
`Ariosa on December 2, 2014, which acquisition was not complete until
`
`January 12, 2015. Id. at 1, 4. Thus, Roche argues, it had no input as to the
`
`challenges that were filed in IPR2014-01093, as it had no interest in Ariosa
`
`when the Petition in that IPR was filed. Id. at 1–2.
`
`7
`
`

`

`IPR2015-01091
`Patent 7,955,794 B2
`
`
`
`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
`
`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
`
`[IPR2014-01093].” Id. at 7–8. Petitioner suggests a schedule that would
`
`allow for completion of IPR2014-01093 within eighteen months, which
`
`would be permitted in the case of joinder. Id. at 8.
`
`
`
`Patent Owner opposes joinder. Opp. Mot. Joinder. According to
`
`Patent Owner, trial was instituted in IPR2014-01093 on January 8, 2015, and
`
`on January 20, 2015, Ariosa informed the District Court that Roche is an
`
`entity interested in the outcome of the litigation. Id. at 3 (citing Ex. 2008).
`
`On February 2, 2015, the District Court stayed the pending litigation
`
`pending the outcome of IPR2014-01093. Id. (citing Ex. 2010). Petitioner,
`
`Patent Owner argues, then waited until after it cross-examined Patent
`
`Owner’s experts in IPR2014-01093 to file the Petition in the instant
`
`proceeding on April 24, 2015. Id. at 4.
`
`8
`
`

`

`IPR2015-01091
`Patent 7,955,794 B2
`
`
`
`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
`
`Ariosa in the acquisition discussions. Id. Roche announced it was acquiring
`
`Ariosa on December 2, 2014, which was before trial was instituted in
`
`IPR2014-01093. Id. (citing Ex. 2016). Petitioner’s acquisition of Ariosa
`
`was completed on January 12, 2015. Id. (citing Paper 2, 4).
`
`
`
`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.
`
`Patent Owner argues further that Petitioner’s Motion for Joinder is
`
`untimely, as it was filed nearly four months after trial was instituted in
`
`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
`
`prepare and file its petition and motion for joinder. Id. at 7–8. Rather,
`
`9
`
`

`

`IPR2015-01091
`Patent 7,955,794 B2
`
`Patent Owner argues, Petitioner waited nearly three and half months before
`
`filing. Id. at 8.
`
`
`
`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
`
`Techs., LLC and Level 3 Commc’ns, LLC, Case IPR2014-00702, slip. op. at
`
`4 (PTAB Jan. 13, 2015) (Paper 12). In the instant proceeding, we agree with
`
`Patent Owner that joinder with IPR2014-01093 would not promote the
`
`efficient resolution of those proceedings.
`
`
`
`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
`
`time, Roche was aware that “Ariosa . . . [was] embroiled in a number of
`
`patent infringement lawsuits, including with . . . Illumina[ ] and Illumina’s
`
`Verinata Health business, and Roche will continue to defend the company in
`
`court, Zambrowski said, adding that Roche ‘went into this agreement with
`
`10
`
`

`

`IPR2015-01091
`Patent 7,955,794 B2
`
`our eyes wide open.’” Id. Given that Petitioner had announced the
`
`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.
`
`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
`
`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
`
`

`

`IPR2015-01091
`Patent 7,955,794 B2
`
`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
`
`12
`
`

`

`IPR2015-01091
`Patent 7,955,794 B2
`
`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
`
`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
`
`13
`
`

`

`IPR2015-01091
`Patent 7,955,794 B2
`
`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,
`
`Petitioner asserts that Shuber uses unorthodox language, and, thus, “[t]he
`
`fact that three interested participants failed to find the Shuber patent in this
`
`crowded field demonstrates, if anything, it would be unreasonable to suggest
`
`that Ariosa could have raised it in its Petition.” Id. at 3–4.
`
`We approach our discretion to deny a petition on a case-by-case basis.
`
`As explained above, one factor that favors denial of the instant Petition is
`
`that it raises “substantially the same” arguments as the Petition in IPR2014-
`
`01093. 35 U.S.C. § 325(d). We have compared the prior art and arguments
`
`raised in the instant Petition to those raised in the Petition filed in IPR2014-
`
`01093. Based on the information presented, we are persuaded that the
`
`instant Petition raises, at minimum, “substantially the same . . . arguments”
`
`that “previously were presented to the Office” in the Petition filed in
`
`IPR2014-01093. 35 U.S.C. § 325(d). That is one factor, contributing to the
`
`totality of circumstances in this case, that informs our decision to exercise
`
`our discretion to deny the Petition.
`
`On that point, Patent Owner observes that the Straus reference cited
`
`by Petitioner in the instant proceeding is the parent of Straus cited in the
`
`Petition in IPR2014-01093. 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. Pet. 18 n.4.
`
`14
`
`

`

`IPR2015-01091
`Patent 7,955,794 B2
`
`Petitioner does not explain, however, why the Straus reference cited in the
`
`instant Petition could not have been relied upon in the IPR2014-01093
`
`Petition.
`
`As to Shuber, Petitioner notes that it is prior art under 35 U.S.C.
`
`§ 102(b), and “provides an actual example of detection of more than 100
`
`different target nucleic acids.” Pet. 59. Other than those statements,
`
`Petitioner does not point specifically to differences between the teaching of
`
`Shuber and Fan, on which trial was instituted in IPR2014-01093. Moreover,
`
`although Petitioner explains why Shuber may have been difficult for Ariosa,
`
`Illumina, and the Examiner to locate, that does not obviate the fact that the
`
`instant Petition, is in effect, a second chance for Ariosa to perfect the
`
`Petition it filed in IPR2014-01093. Paper 16, 3–4. In addition, Petitioner,
`
`other than as to the Shuber reference, does not argue that any of the
`
`additionally cited references relied upon by the instant Petition were
`
`unknown or unavailable at the time of filing the Petition in IPR2014-01093.
`
`That fact supports a reasonable inference that those references were known
`
`and available to Ariosa when review was requested the first time. On this
`
`record, interests of fairness, economy, and efficiency tip the balance in favor
`
`of denial.
`
`Another factor that tips the balance in favor of denying institution of
`
`inter partes review is the timing of the filing of the instant Petition. As
`
`noted by Patent Owner, Petitioner had the advantage of the Patent Owner’s
`
`response in IPR2014-01093 (Prelim. Resp. 20), as well the depositions of
`
`Patent Owner’s expert in that proceeding, which were conducted by counsel
`
`for Roche (id. at 8). Essentially, the only reason that Petitioner has provided
`
`for waiting until April of 2015 to file the instant Petition is that it did not
`
`complete its acquisition of Ariosa until January 12, 2015. However, as
`
`15
`
`

`

`IPR2015-01091
`Patent 7,955,794 B2
`
`discussed above, Petitioner was aware of the possibility of acquiring Ariosa
`
`as early as June of 2014, and announced its acquisition as early as December
`
`of 2014. Petitioner has not provided any persuasive reason as to why it
`
`could not have filed the Petition earlier, much less why the Petition could
`
`not have been filed within one month of institution of IPR2014-01093.
`
`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. See Heckler v. Chaney, 470 U.S. 821, 831 (1985) (when deciding
`
`whether to take action in a particular matter, an agency must determine
`
`whether its resources are best spent on one matter or another). Petitioner
`
`provides no persuasive reason why we should institute inter partes review in
`
`light of the above facts. Based on the totality of circumstances before us, we
`
`exercise our discretion and deny institution of inter partes review.
`
`35 U.S.C. §§ 314(a), 316(b), 325(d); 37 C.F.R. § 42.108(b).
`
`IV. ORDER
`
`In consideration of the foregoing, it is hereby
`
`OREDERED that Petitioner’s Motion for Joinder is denied; and
`
`FURTHER ORDERED that the Petition is denied.
`
`
`
`
`
`
`
`16
`
`

`

`IPR2015-01091
`Patent 7,955,794 B2
`
`For PETITIONER:
`
`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
`
`
`17
`
`

This document is available on Docket Alarm but you must sign up to view it.


Or .

Accessing this document will incur an additional charge of $.

After purchase, you can access this document again without charge.

Accept $ Charge
throbber

Still Working On It

This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.

Give it another minute or two to complete, and then try the refresh button.

throbber

A few More Minutes ... Still Working

It can take up to 5 minutes for us to download a document if the court servers are running slowly.

Thank you for your continued patience.

This document could not be displayed.

We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.

Your account does not support viewing this document.

You need a Paid Account to view this document. Click here to change your account type.

Your account does not support viewing this document.

Set your membership status to view this document.

With a Docket Alarm membership, you'll get a whole lot more, including:

  • Up-to-date information for this case.
  • Email alerts whenever there is an update.
  • Full text search for other cases.
  • Get email alerts whenever a new case matches your search.

Become a Member

One Moment Please

The filing “” is large (MB) and is being downloaded.

Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.

Your document is on its way!

If you do not receive the document in five minutes, contact support at support@docketalarm.com.

Sealed Document

We are unable to display this document, it may be under a court ordered seal.

If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.


Access Government Site

We are redirecting you
to a mobile optimized page.





Document Unreadable or Corrupt

Refresh this Document
Go to the Docket

We are unable to display this document.

Refresh this Document
Go to the Docket