Trials@uspto.gov
`572-272-7822
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` Paper 125
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`Entered: February 27, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ILLUMINA, INC.
`Petitioner,
`V.
`
`THE TRUSTEES OF COLUMBIA UNIVERSITY IN THE CITY OF
`NEW YORK
`Patent Owner.
`
`Case IPR2012-00006
`U.S. Patent 7,713,698
`_________
`
`
`Before SALLY G. LANE, RICHARD M. LEBOVITZ, and DEBORAH KATZ,
`Administrative Patent Judges.
`
`LANE, Administrative Patent Judge.
`
`
`DECISION
`Miscellaneous Motion
`37 C.F.R. § 42.20
`
`
`
`
`
`
`
`

`

`Case IPR2012-00006
`U.S. Patent 7,713,698
`
`
`I. Introduction
`On 25 February 2013, Columbia requested, via email communication to the
`Board, authorization under 37 CFR 42.20(b) to file a motion to submit
`supplemental information. 37 CFR 42.123(b). (Request, copy attached).
`Columbia indicates that Illumina opposes the Request. The Request is DENIED.
`
`II. Background
`Trial was instituted on 12 March 2013 (Decision on Petition, Paper 28). As
`the pendency before the Board after institution of trial normally should not exceed
`one year, the Board intends to issue a Final Decision no later than 11 March 2014.
`See 35 USC § 316 (a)(11); 37 CFR § 42.100(c).
`The supplemental information that is the subject of the Columbia Request is
`the deposition testimony of Dr. David Barker, said to have been taken during
`parallel District Court litigation on 7 February 2014. Columbia indicates that
`“February 7 was the earliest date on which Dr. Barker’s deposition could have
`been taken.” Columbia further indicates that “the deposition record contains
`evidence that directly rebuts Illumina’s prima facie obviousness case, and strongly
`supports Columbia’s objective indicia evidence of Illumina’s efforts to license
`Columbia’s patented technology.” (Request).
`Recognizing the time for Final Decision is close at hand, Columbia argues
`that “its motion papers will amply show good cause for extension of the due date
`[up to 6 months under 35 USC 316 (a) (11) and 42.100(c)] to permit evaluation of
`the supplemental information.” (Request).
`
`
`
`2
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`

`

`Case IPR2012-00006
`U.S. Patent 7,713,698
`
`
`
`III. Discussion
`The Board administers each trial such that pendency before the Board is
`normally no more than one year. 35 USC § 316 (a)(11); 37 CFR § 42.100(c). In
`accordance with this aim, our rules require that a party seek relief promptly after
`the need for the relief is identified. A delay in seeking the relief may justify denial
`of the relief sought. 37 CFR § 42.25(b). We construe our rules “to secure the just,
`speedy, and inexpensive resolution of every proceeding.” 37 CFR § 42.1(b).
`
`In the situation before us, Columbia requests to file a late submission of
`supplemental information, two weeks before Final Decision and, more
`significantly, nineteen days after the deposition of Dr. Barker is said to have
`occurred. Under these particular circumstances, Columbia’s delay of nineteen days
`in seeking relief, especially given its proximity to the time for Final Decision,
`justifies denial of the relief sought. Given this denial, we need not and do not
`address Columbia’s argument that it could show good cause to extend the
`pendency of the trial past one year.
`
`IV. Order
`
`It is
`ORDERED the Columbia Request is DENIED.
`
`
`
`
`
`
`
`3
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`

`

`Case IPR2012-00006
`U.S. Patent 7,713,698
`
`
`PETITIONER:
`
`Robert Lawler
`illuminaiprs@reinhartlaw.com
`
`James Morrow
`illuminaiprs@reinhartlaw.com
`
`PATENT OWNER:
`
`John White
`jwhite@cooperhunham.com
`
`Anthony Zupcic
`clombiaipr@fchs.com
`
`
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`4
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`

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`Baker, Patrick
`
`Subject:
`
`FW: email communication attachment for IPR2012-00006, IPR2012-00007, and
`IPR2013-00011 - teleconference re motion under Rule 42.123(b)
`
`From: Zupcic,Anthony [mailto:AZupcic@fchs.com]
`Sent: Tuesday, February 25, 2014 5:31 PM
`To: Trials
`Cc: A Selikson; ColumbiaIPR; G Gershik; Illumina; J. Costakos; John White
`Subject: IPR2012-00006, IPR2012-00007, and IPR2013-00011 - teleconference re motion under Rule 42.123(b)
`
` P
`
`atent Owner Columbia University requests a teleconference to seek the Board’s permission to file a motion
`under Rule 42.123(b) to submit supplemental information in the above referenced proceedings. Both
`requirements of the rule are met.
`
`Columbia has conferred with counsel for Petitioner Illumina, and Illumina opposes Columbia’s request for
`permission to the file a motion.
`
`1. The supplemental information reasonably could not have been obtained earlier.
`
`On February 7, 2014, Columbia took the deposition of Dr. David Barker in the parallel district court
`litigation. Dr. Barker was the Chief Scientific Officer of Illumina from 2000-07 and is currently on Illumina’s
`Scientific Advisory Board. February 7 was the earliest reasonable date on which Dr. Barker’s deposition could
`have been taken, as Columbia can explain on the teleconference.
`
`2. Consideration of the supplemental information would be in the interests of justice.
`
`Dr. Barker’s deposition transcript and its exhibits are currently designated “Highly Confidential – Attorneys
`Eyes Only” under the proposed protective order in the litigation, so the specifics of the supplemental
`information Columbia cannot be disclosed here. The fundamental point, however, is that the deposition record
`contains evidence that directly rebuts Illumina’s prima facie obviousness case, and strongly supports
`Columbia’s objective indicia evidence of Illumina’s efforts to license Columbia’s patented
`technology. Columbia will be severely prejudiced if it is not permitted to submit this supplemental information
`for the Board’s consideration in deciding the merits of these IPRs.
`
`Although Columbia wishes to submit the entire Barker transcript for the sake of completeness, Columbia
`anticipates that the supplemental information to be considered by the Board would be about 30 pages (or
`portions thereof) of testimony and no more than 5 exhibits, and Columbia’s motion will highlight the specific
`relevant testimony.
`
`* * * * *
`
`Columbia recognizes that the Board’s decision in these IPRs is close at hand and due no later than March 12,
`2014. Should consideration of this supplemental information affect that due date, Columbia believes that any
`extension would be insubstantial relative to the 6 month extension that is authorized by statute. 35 U.S.C.
`§316(a)(11). Columbia believes that its motion papers will amply show good cause for extension of the due
`date to permit evaluation of the supplemental information.
`
`Respectfully submitted,
`
`1
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`

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`Anthony M. Zupcic
`Back-Up Counsel for Columbia University
`
`Anthony M. Zupcic
`FITZPATRICK, CELLA, HARPER & SCINTO
`1290 Avenue of the Americas
`New York, NY 10104-3800
`T 212-218-2240
`F 212-218-2200
`AZupcic@fchs.com
`http://www.fitzpatrickcella.com
`Bio
`
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