`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
`
`
`
`
`
`