Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`Paper 115
`Entered: December 13, 2013
`
`
`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.
`
`Objections to Evidence
`
`Columbia contacted the Board (see attached email) seeking authorization to
`
`file a Motion to Accept Filing of its “Objections to Evidence Served by Illumina
`
`on September 28, 2013 under 37 C.F.R. 42.64 (Objections).” Columbia indicates
`
`that it inadvertently failed to file the Objections when it filed its Motion to Exclude
`
`Evidence.1 (Motion to Exclude, Paper 93). Columbia represents that Illumina has
`
`indicated that it does not oppose Columbia filing the Objections.
`
`Columbia is authorized to file the Objections as an Exhibit to be filed on or
`
`before 17 December 2013.
`
`II. Under Seal Demonstratives
`
`Columbia further requested authorization to file a motion to seal so that it
`
`might file an “under seal” version of its demonstrative exhibits. Because the entire
`
`hearing will be open to the public there is no need to file “under seal”
`
`demonstrative exhibits. (Order, Paper 113).
`
`III. Order
`
`It is
`
`ORDERED that Columbia is authorized to file Objections as set forth
`
`herein.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`1
`Columbia filed a Notice representing that it served Illumina with the
`Objections on 4 October 2013. (Notice, Paper 81).
`
`

`

`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@cooperdunham.com
`
`Anthony Zupcic
`clombiaipr@fchs.com
`
`

`

`
`
`From: Zupcic,Anthony [mailto:AZupcic@fchs.com]
`Sent: Wednesday, December 11, 2013 12:10 PM
`To: Trials
`Cc: IlluminaIPRs@reinhartlaw.com; Costakos, Jeffrey N. (JCostakos@foley.com); John White; Gary
`Gershik; Curry, Donald; Schwartz,Robert; O'Malley, Brendan
`Subject: IPR2012-00006, IPR2012-00007, IPR2013-11
`
`This email seeks permission to file two motions related to the oral argument scheduled for
`December 17, 2013 in the above-referenced IPR proceedings.
`
`First, Patent Owner Columbia University (“Columbia”) seeks permission to file in each IPR a
`Motion to Accept Filing of its “Objections to Evidence Served by Illumina on September 28,
`2013 under 37 C.F.R. §42.64” which documents are referenced in the corresponding
`“Columbia’s Motion to Exclude Evidence Under 37 C.F.R. §42.64” but were inadvertently not
`filed at that time. Columbia seeks to file each Objections to Evidence as a numbered exhibit in
`the corresponding IPR proceeding.
`
`As reflected by the Certifications found at Paper 81 in IPR2012-00006, Paper 90 in IPR2012-
`00007 and Paper 81 in IPR2013-00011, Columbia’s Objections to Evidence were timely served
`on Petitioner Illumina (“Illumina”) on October 4, 2013. Illumina has indicated that it does not
`oppose Columbia filing its Objections to Evidence as an exhibit in each IPR.
`
`Second, Columbia requests permission to file a Motion to Seal with regard to its demonstratives
`to be used at the oral hearing. Some of those demonstratives reflect the confidential business
`information of the Parties. That same information was the subject of an earlier Motion to Seal
`that was granted by the Board. Illumina has indicated that it does not oppose Columbia filing a
`Motion to Seal.
`
`Finally, the Parties note that in its Order dated Dec. 2, 2013 (see, e.g., IPR2013-00011 Paper
`110), the Board stated:
`
`“The parties seek guidance on how to proceed at oral argument, particularly given that some
`evidence is subject to protective order. The Board will consider the concerns of the party and
`will enter an Order prior to oral argument to provide further guidance.”
`
`The Parties request clarification on whether the Board still plans to enter the described Order
`prior to oral argument.
`
`Respectfully submitted,
`
`
`Anthony M. Zupcic, Back-up Counsel for Columbia University
`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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