Case 1:20-cv-01644-RGA Document 1-65 Filed 12/03/20 Page 1 of 12 PageID #: 1792
`Case 1:20-cv-01644-RGA Document 1-65 Filed 12/03/20 Page 1 of 12 PageID #: 1792
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`EXHIBIT 65
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`EXHIBIT 65
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`Case 1:20-cv-01644-RGA Document 1-65 Filed 12/03/20 Page 1 of 12 PageID #: 1792
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`EXHIBIT 65
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`EXHIBIT 65
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`Case 1:20-cv-01644-RGA Document 1-65 Filed 12/03/20 Page 2 of 12 PageID #: 1793
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`Paper No. __
`Filed: February 2, 2016
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`__________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`___________________________
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`ARIOSA DIAGNOSTICS
`
`Petitioner,
`
`v.
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`VERINATA HEALTH, INC.
`
`Patent Owner.
`
`___________________________
`
`IPR2013-00276
`U.S. Patent 8,318,430
`___________________________
`
`PATENT OWNER VERINATA HEALTH, INC.’S MOTION TO
`TERMINATE REEXAMINATIONS
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`Case 1:20-cv-01644-RGA Document 1-65 Filed 12/03/20 Page 3 of 12 PageID #: 1794
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`TABLE OF CONTENTS
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`Page
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`THE BOARD HAS THE POWER TO PREVENT THE UNDUE
`MULTIPLICATION OF PATENT OFFICE PROCEEDINGS ............................... 2
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`ARIOSA’S LATEST REEXAMINATION REQUEST SHOULD BE
`TERMINATED BECAUSE IT WOULD UNDULY MULTIPLY THE
`PROCEEDINGS ........................................................................................ 4
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`ARIOSA IS ESTOPPED FROM FILING AN EX PARTE
`REEXAMINATION ................................................................................... 6
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`CONCLUSION ......................................................................................... 7
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`I.
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`II.
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`III.
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`IV.
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`i
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`Case 1:20-cv-01644-RGA Document 1-65 Filed 12/03/20 Page 4 of 12 PageID #: 1795
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`TABLE OF AUTHORITIES
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`Page
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`Statutes
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`35 U.S.C. § 315(d) .............................................................................................. 1, 2
`35 U.S.C. § 325(d) .............................................................................................. 1, 2
`37 C.F.R. § 42.1(b) ................................................................................................ 2
`37 C.F.R. § 42.122(a) .......................................................................................... 1, 3
`37 C.F.R. § 42.3(a) .............................................................................................. 1, 3
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`ii
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`Case 1:20-cv-01644-RGA Document 1-65 Filed 12/03/20 Page 5 of 12 PageID #: 1796
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`Pursuant to 35 U.S.C. §§ 315(d), 325(d), 325(e) and 37 C.F.R. §§ 42.3(a) and
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`42.122(a), Verinata requests that the Board terminate Ariosa’s ex parte request for
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`reexamination of U.S. Patent No. 8,318,430 (“the ’430 patent”). This latest
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`reexamination request comes more than three years after Verinata filed suit in
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`District Court to stop Ariosa’s infringement of its patents. That case remains
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`stayed.
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`Ariosa’s latest reexamination request is redundant of this proceeding. It
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`relies on two of the three references that it relies upon in this proceeding and a very
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`similar obviousness theory. Ariosa’s reexamination request is part of a campaign
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`that would unduly multiply proceedings if tolerated. This is not an isolated
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`instance. Ariosa has filed two IPR petitions and three reexamination requests for
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`U.S. Patent No. 7,955,794 (“the ’794 patent”), an Illumina patent Ariosa infringes.
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`See Paper No. 72 in IPR2014-01093. As the Federal Circuit explained when
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`remanding this matter, the Board’s “statutes, regulations, and practices embody
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`expedition-and efficiency-based policies.” Ariosa Diagnostics v. Verinata Health,
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`Inc., 805 F.3d 1359, 1367 (Fed. Cir. 2015); see also id. (explaining that the PTO
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`has established rules with the aim of meeting a “statutory goal of providing a
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`relatively quick and low-cost alternative to litigation over validity” and that “require
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`that the parties make their cases in a very small number of filings”). Ariosa’s
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`repetitive filings, however, are inefficient, inflate expense, complicate the
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`proceedings, and invite delay.
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`Confidence in the new AIA system is undermined by the type of misuse of
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`the Patent Office embodied by Ariosa’s reexamination request. To protect that
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`Case 1:20-cv-01644-RGA Document 1-65 Filed 12/03/20 Page 6 of 12 PageID #: 1797
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`confidence, and to promote the inexpensive, just, and speedy resolution of this
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`dispute, the Board should terminate Ariosa’s reexamination request for the ’430
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`patent. See id.
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`I.
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`THE BOARD HAS THE POWER TO PREVENT THE UNDUE MULTIPLICATION
`OF PATENT OFFICE PROCEEDINGS
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`To the extent Ariosa questions the authority of the Board to terminate any of
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`the many duplicative proceedings it is pursuing, this ignores that IPRs were
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`intended to create an inexpensive substitute for district court litigation that secures a
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`just and speedy resolution of every proceeding. See 37 C.F.R. § 42.1(b). And, as
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`an integral part of keeping the system in balance, the Board was given the
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`discretion by Congress to terminate proceedings under 35 U.S.C. §§ 315(d) and §
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`325(d) when they threaten to unduly duplicate effort, inflate expense, complicate
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`the proceedings and cause delay:
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`Section 315(d) Multiple Proceedings - Notwithstanding sections
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`135(a), 251, and 252, and chapter 30, during the pendency of an inter
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`partes review, if another proceeding or matter involving the patent is
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`before the Office, the Director may determine the manner in which the
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`inter partes review or other proceeding or matter may proceed,
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`including providing for stay, transfer, consolidation, or termination of
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`any such matter or proceeding.
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`Section 325(d) Multiple Proceedings - Notwithstanding sections
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`135(a), 251, and 252, and chapter 30, during the pendency of any
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`post-grant review under this chapter, if another proceeding or matter
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`involving the patent is before the Office, the Director may determine
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`the manner in which the post-grant review or other proceeding or
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`2
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`Case 1:20-cv-01644-RGA Document 1-65 Filed 12/03/20 Page 7 of 12 PageID #: 1798
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`matter may proceed, including providing for the stay, transfer,
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`consolidation, or termination of any such matter or proceeding. In
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`determining whether to institute or order a proceeding under this
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`chapter, chapter 30, or chapter 31, the Director may take into account
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`whether, and reject the petition or request because, the same or
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`substantially the same prior art or arguments previously were
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`presented to the Office.
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`See also 37 C.F.R. §42.122(a); §42.3(a) (permitting the Board to exercise exclusive
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`jurisdiction within the Office over an involved patent during a proceeding).
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`The AIA legislative history explains that in “the second sentence of section
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`325(d), the present bill also authorizes the Director to reject any request for ex parte
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`reexamination or petition for post-grant or inter partes review on the basis that the
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`same or substantially the same prior art or arguments previously were presented to
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`the Office. This will prevent parties from mounting attacks on patents that raise
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`issues that are substantially the same as issues that were already before the Office
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`with respect to the patent.” 157 Cong. Rec. S1376 (Statement of Sen. Kyl)
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`(emphasis added). “Under section 325(d), second sentence, however, the Office
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`could nevertheless refuse a subsequent request for ex parte reexamination with
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`respect to such an issue, even if it raises a substantial new question of
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`patentability, because the issue previously was presented to the Office in the
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`petition for inter partes or post-grant review.” Id. (emphases added).
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`Rule 122(a) states: “Where another matter involving the patent is before the
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`Office, the Board may during the pendency of the inter partes review enter any
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`appropriate order regarding the additional matter including providing for the stay,
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`3
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`Case 1:20-cv-01644-RGA Document 1-65 Filed 12/03/20 Page 8 of 12 PageID #: 1799
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`transfer, consolidation, or termination of any such matter” (emphasis added).
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`Section 325(d) authorizes this action even for proceedings that have not yet started.
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`It states that “[i]n determining whether to institute or order a proceeding under …
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`chapter 30 [reexamination] … the Board may take into account whether, and reject
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`the petition or request because, the same or substantially the same prior art or
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`arguments previously were presented to the Office.” (emphasis added).
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`In this case, the Board is best positioned to evaluate whether Ariosa’s latest
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`reexamination attempt would unduly multiply the Patent Office proceedings. This
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`is because the Board has already considered the printed publications that are the
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`bases for Ariosa’s new reexamination requests on the ’430 patent and is familiar
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`with Ariosa’s arguments in this proceeding.
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`II. ARIOSA’S LATEST REEXAMINATION REQUEST SHOULD BE TERMINATED
`BECAUSE IT WOULD UNDULY MULTIPLY THE PROCEEDINGS
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`Ariosa’s ex parte reexamination request for the ’430 patent was filed on
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`January 8, 2016, roughly two and a half years after Ariosa first requested IPR of the
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`’430 patent. Arisoa’s reexamination request presents three proposed grounds of
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`invalidity, all of which are based on the Dhallan reference that the Board already
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`considered here.1 While Ariosa adds a few secondary references—which it
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`undoubtedly could have submitted with its original IPR request—Ariosa further
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`relies on the Binladen, Craig, and Illumina references that the Board already
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`1 Ariosa relies on two different closely related versions of the Dhallan reference,
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`but does not explain the substantive difference between the two versions.
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`4
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`Case 1:20-cv-01644-RGA Document 1-65 Filed 12/03/20 Page 9 of 12 PageID #: 1800
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`considered.
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`Ariosa’s reexamination even presents an obviousness argument based on the
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`combination of the Dhallan and Binladen references, which the Board previously
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`found to be redundant to the Dhallan/Binladen/Shoemaker combination that was the
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`subject of this IPR. See Paper No. 10 at 20-21. Ariosa, in a separate IPR
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`proceeding, has already taken the position that there is no difference between two
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`obviousness arguments where one argument relies on just a subset of the art that is
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`relied upon for another obviousness argument. See Paper No. 165 in IPR2012-
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`00022 at 80:25-81:2 (Ariosa argues that “a Petitioner is free to argue an
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`obviousness combination by arguing just a subset of the references listed in the
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`obviousness combination”). In addition, Ariosa previously admitted that Binladen
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`does not add anything that could not already be found in Shoemaker. See Paper 42
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`at 67:23-68:2 (“So with regard to Binladen, the first point here, and this is
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`important, is that Shoemaker teaches fundamentally the same techniques. So one
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`need not rely upon Binladen in the proposed combination unless one wants to,
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`essentially.”). Requiring the Office to again review a ground that is no better than
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`the ground already considered by the Board in this IPR would be a waste of Office
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`resources.
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`Just like Ariosa’s three reexamination requests on the ’794 patent, Ariosa’s
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`reexamination request on the ’430 patent is an attempt to repackage the same art
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`and arguments previously rejected by the Board. The new reexamination request
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`should be terminated because, if it were allowed to proceed, it would duplicate
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`effort, complicate the proceedings, inflate expense and invite delay.
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`5
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`Case 1:20-cv-01644-RGA Document 1-65 Filed 12/03/20 Page 10 of 12 PageID #: 1801
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`Even if the latest reexamination were to present a different question of
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`patentability—even a substantial new question of patentability—based on similar
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`art, it should be terminated. Ariosa has had a full opportunity to present its
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`invalidity arguments based on these prior art references in this proceeding. It would
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`frustrate the policies of the AIA, and could breed cynicism in the patent
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`community, if Ariosa were permitted a second opportunity to challenge the ’430
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`patent based on this prior art.
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`III. ARIOSA IS ESTOPPED FROM FILING AN EX PARTE REEXAMINATION
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`“The petitioner in an inter partes review of a claim in a patent under this
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`chapter that results in a final written decision under section 318(a), or the real
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`party in interest or privy of the petitioner, may not request or maintain a
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`proceeding before the Office with respect to that claim on any ground that the
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`petitioner raised or reasonably could have raised during that inter partes review.”
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`35 U.S.C. § 315(e) (emphasis added). It is undisputed that this IPR resulted in a
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`final written decision. It is also undisputed that Ariosa’s reexamination request
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`relies on art that was either raised in this IPR or that could have been raised. The
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`estoppel of § 315(e) applies regardless of the result in an IPR. Having chosen inter
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`partes review as the forum to have the patentability of the claims of the ’430 patent
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`considered, and having pursued inter partes review to a final written decision,
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`Ariosa is now estopped from selecting an alternative venue for this purpose - even
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`if it is dissatisfied with the result of the inter partes review. Moreover, Ariosa’s
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`attempt to circumvent the estoppel provisions underscores the need for the Board
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`6
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`Case 1:20-cv-01644-RGA Document 1-65 Filed 12/03/20 Page 11 of 12 PageID #: 1802
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`to exercise the discretion given by Congress to terminate proceedings under 35
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`U.S.C. §§ 315(d) and § 325(d).
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`IV. CONCLUSION
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`For the foregoing reasons, Verinata requests that the Board terminate
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`Ariosa’s reexamination request.
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`Dated: February 2, 2016
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`Respectfully submitted,
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`/ Michael T. Rosato /
`By:
` Michael T. Rosato
`Reg. No. 52,182
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`7
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`Case 1:20-cv-01644-RGA Document 1-65 Filed 12/03/20 Page 12 of 12 PageID #: 1803
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`CERTIFICATE OF SERVICE
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`Pursuant to 37 C.F.R. §§ 42.6(e) and 42.105(a), this is to certify that I
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`caused to be served a true and correct copy of the foregoing Patent Owner Verinata
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`Health, Inc.’s Motion to Terminate Reexaminations, on this 2nd day of February
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`2016, on the Petitioner at the correspondence address of the Petitioner as follows:
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`
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`Greg H. Gardella
`Scott A. McKeown
`OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
`1940 Duke Street
`Alexandria, VA 22314
`cpdocketgardella@oblon.com
`cpdocketmckeown@oblon.com
`
`Dianna L. DeVore
`Sarah Brashears
`CONVERGENT LAW GROUP LLP
`475 N. Whisman Road, Suite 400
`Mountain View, CA 94043
`ddevore@convergentlaw.com
`sbrashears@convergentlaw.com
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`Date: February 2, 2016
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`Respectfully submitted,
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`By: / Michael T. Rosato /
` Michael T. Rosato, Lead Counsel
` Reg. No. 52,182
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`8
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