throbber
Paper 8 (IPR2019-00636)
`Trials@uspto.gov
`Paper 8 (IPR2019-00637)
`Tel: 571-272-7822
` Entered: July 22, 2019
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`FOUNDATION MEDICINE, INC.,
`Petitioner,
`
`v.
`
`GUARDANT HEALTH, INC.,
`Patent Owner.
`____________
`
`Case IPR2019-00636
`Case IPR2019-00637
`Patent 9,902,992 B21
`____________
`
`
`Before TINA E. HULSE, JOHN E. SCHNEIDER, KRISTI L. R. SAWERT,
`Administrative Patent Judges.
`
`HULSE, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`1 This order addresses issues that are common to both cases. We, therefore,
`issue a single order that has been entered in each case. Paper numbers refer
`to those filed in IPR2019-00636. The parties may use this style caption
`when filing a single paper in multiple proceedings, provided that such
`caption includes a footnote attesting that “the word-for-word identical paper
`is filed in each proceeding identified in the caption.”
`
`

`

`IPR2019-00636; IPR2019-00637
`Patent 9,902,992 B2
`
`
`A conference call was held on July 19, 2019, among counsel for Petitioner,
`
`counsel for Patent Owner, and Judges Hulse, Schneider, and Sawert. Petitioner
`
`retained a court reporter for the call.2
`
`On July 1, 2019, Patent Owner sent an email correspondence to the Board
`
`requesting authorization to file a corrected Preliminary Response in both
`
`proceedings. Ex. 3001. Patent Owner contends that the correction was necessary
`
`to “correct an inadvertent error [because] to the extent the POPR . . . suggests
`
`that the challenged ’992 patent is entitled priority to an application filed
`
`September 4, 2012 – that is incorrect.” Id. at 1. Patent Owner also attached
`
`proposed mark-ups for the correction in each proceeding, indicating it would only
`
`delete the identified content. Id. at 2 (IPR2019-00636), 3–4 (IPR2019-00637).
`
`In response, Petitioner requested a conference call with the Board, indicating
`
`it opposes Patent Owner’s request.
`
`During the call, Patent Owner stated that filing the corrected Preliminary
`
`Responses would ensure there is no confusion as to whether Patent Owner is
`
`asserting the ’992 patent is entitled to the benefit of the September 4, 2012, priority
`
`date. Patent Owner also stated that the identified priority date in the co-pending
`
`district court litigation is March 5, 2014, and that it was litigation counsel who
`
`brought this issue to Patent Owner’s attention. Patent Owner confirmed that no
`
`other changes to the arguments in the Preliminary Responses would be necessary
`
`and that it does not believe the change affects any issues or arguments in the
`
`proceedings.
`
`
`2 Petitioner indicated it would file a copy of the transcript as an exhibit when it is
`available. We summarize the call briefly in this order, as the transcript provides
`further details of the call.
`
` 2
`
`
`
`
`
`

`

`IPR2019-00636; IPR2019-00637
`Patent 9,902,992 B2
`
`
`Petitioner argued that the requested edit does not correct an inadvertent
`
`error, as the inventors have represented to the Office in application data
`
`sheets during prosecution of the ’992 patent that the earliest priority date is
`
`September 4, 2012. Petitioner noted that Patent Owner had not affirmatively
`
`indicated what priority date it is asserting. Given the change, Petitioner argued
`
`that the ’992 patent should not be entitled to a priority date earlier than the
`
`March 21, 2016, filing date of the ’992 patent application itself. Petitioner
`
`contends that the priority date of the ’992 patent affects what Petitioner needs to
`
`show to prove the Schmitt reference is prior art (i.e., whether Petitioner needs to
`
`show Schmitt is entitled to the benefit of the priority date of its provisional
`
`application). Petitioner conceded, however, that the arguments have all been made
`
`in the Petition and that its arguments in the Petition would not change if the
`
`correction is entered.
`
`Having considered the parties’ respective arguments, we find good cause
`
`exists to allow Patent Owner to file a corrected Preliminary Response in each
`
`proceeding to delete the indicated subject matter. Although Patent Owner could
`
`correct the error in the Patent Owner Response if we institute trial, we agree with
`
`Patent Owner that doing so now would create a clearer record, which would be
`
`beneficial to the public. We also note there is no prejudice to Petitioner to allow
`
`Patent Owner to clarify its assertion that it is not entitled to an earlier effective
`
`filing date.
`
` 3
`
`
`
`
`
`

`

`IPR2019-00636; IPR2019-00637
`Patent 9,902,992 B2
`
`
`Accordingly, it is
`
`ORDERED that Patent Owner’s request for authorization to file a corrected
`
`Patent Owner Preliminary Response in both proceedings is granted; and
`
`FURTHER ORDERED that Patent Owner may file the corrected papers by
`
`the end of the day on July 19, 2019; and
`
`FURTHER ORDERED that once the corrected papers are filed, the Board
`
`will expunge the originally filed Patent Owner Preliminary Responses in each
`
`proceeding.
`
`
`
`
`PETITIONER:
`
`Rolando Medina
`rmedina@choate.com
`
`Eric Marandett
`emarandett@choate.com
`
`Stephanie Schonewald
`sschonewald@choate.com
`
`PATENT OWNER:
`
`Michael Rosato
`mrosato@wsgr.com
`
`Steven Parmelee
`sparmelee@wsgr.com
`
`Sonja Gerrard
`sgerrard@wsgr.com
`
`
` 4
`
`
`
`
`
`

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