Trials@uspto.gov Paper No. 139
`Entered: March 6, 2014
`571-272-7822
`
`
`
`
`
`
`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 IPR2012-00007
`U.S. Patent 7,790,869
`___________
`
`
`Before SALLY G. LANE, RICHARD M. LEBOVITZ, and DEBORAH KATZ,
`Administrative Patent Judges.
`
`LANE, Administrative Patent Judge.
`
`
`
`DECISION
`Request for Rehearing
`37 C.F.R. § 42.71(d)(1)
`
`
`
`
`
`
`
`
`Entered: March 6, 2014
`571-272-7822
`
`
`
`
`
`
`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 IPR2012-00007
`U.S. Patent 7,790,869
`___________
`
`
`Before SALLY G. LANE, RICHARD M. LEBOVITZ, and DEBORAH KATZ,
`Administrative Patent Judges.
`
`LANE, Administrative Patent Judge.
`
`
`
`DECISION
`Request for Rehearing
`37 C.F.R. § 42.71(d)(1)
`
`
`
`
`
`
`
`
`
`Case IPR2012-00007
`U.S. Patent 7,790,869
`
`
`I.
`
`Introduction
`
`Columbia requests rehearing under 37 CFR 42.71(d) (1) (Request, Paper
`
`138) of our Decision (Decision, Paper 137) denying its request for authorization to
`
`file a motion for late submission of supplemental information. We have
`
`considered the Columbia Request but do not authorize the filing of the motion.
`
`II.
`
`Background
`
`In the Decision we stated:
`
`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.
`
`(Decision at 3).
`
`
`
`
`
`2
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`
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`Case IPR2012-00007
`U.S. Patent 7,790,869
`
`
`III. Discussion
`
`
`
`The burden of showing a decision should be modified lies with the party
`
`challenging the decision. 37 CFR § 42.71(d).
`
`In the Request, Columbia argues that the delay of nineteen days cited in the
`
`Decision was not a delay because Columbia “expeditiously took the necessary
`
`steps to determine whether the amount and substantive significance of the new
`
`evidence warranted seeking approval to submit that information with the time for
`
`Final Decision close at hand.” (Request at 2). Columbia cites to activities it
`
`undertook during the nineteen days after Dr. Barker’s deposition including waiting
`
`for the final deposition transcript,1 reviewing and analyzing the transcript and
`
`exhibits, considering the significance of the testimony, and conferring with its
`
`client and Illumina counsel.
`
`Despite Columbia’s additional explanation for the delay, we are not
`
`persuaded that Columbia acted as promptly as it could or should have under the
`
`circumstances. Columbia indicates that Dr. Barker’s testimony “directly
`
`undermines Illumina’s prima facie obviousness arguments, and strongly supports
`
`Columbia’s objective indicia evidence.” (Request at 2). Given the professed
`
`significance of Dr. Barker’s testimony and with the time for final decision close at
`
`
`Columbia does not indicate if or when it received any earlier “non-final”
`1
`version of the transcript.
`
`
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`3
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`Case IPR2012-00007
`U.S. Patent 7,790,869
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`hand, it would seem reasonable to contact the Board shortly after the testimony
`
`was given.
`
`Columbia does not explain why it could not have contacted the Board
`
`without waiting for a final transcript. Even after a final transcript was obtained,
`
`Columbia indicates it waited another twelve days to contact the Board so that it
`
`might take additional actions, i.e., review, analyze and consider the significance of
`
`the testimony and consult with Illumina and its client. While the actions are not
`
`unreasonable, Columbia has not explained why any of them prevented Columbia
`
`from alerting the Board about the situation much sooner than it did.
`
`Columbia argues that the denial of its request for authorization to file the
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`motion is “severely prejudicial.” (Request at 1). However, if the request were
`
`authorized Illumina would be left with a very short time to respond due, at least in
`
`part, to Columbia’s delay in seeking relief resulting in prejudice to Illumina.
`
`Columbia again argues that “good cause exists for a short extension of the
`
`trial pendency period” beyond one year. (Request at 3). As we do not grant
`
`Columbia’s request to file the motion, there is no need to extend the period, so we
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`need not and do not consider Columbia’s argument.
`
`Columbia requests authorization to submit Dr. Barker’s transcript for the
`
`record “so that it is available for purposes of appeal”. (Request at 3). Dr. Barker’s
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`transcript is said to be “highly confidential.” (See attachment to Decision). As it is
`
`
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`4
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`Case IPR2012-00007
`U.S. Patent 7,790,869
`
`not necessary for Columbia to file the transcript to preserve the issue for appeal,
`
`we do not authorize Columbia’s request under these particular circumstances.
`
`IV. Conclusion
`
`Given the one year pendency of the trial (35 USC § 316 (a) (11); 37 CFR
`
`§ 42.100(c)), it is imperative that a party contact the Board as soon as the need for
`
`relief is identified. 37 § CFR 42.25(b). Despite Columbia’s additional explanation
`
`set forth in the Request, we are not convinced that Columbia acted as promptly as
`
`it should have under the circumstances. Columbia has not met its burden to show
`
`that the Decision should be modified. 37 CFR § 42.71(d).
`
`V. Order
`
`It is
`
`ORDERED that the Decision denying the Columba request to file a motion
`
`for the late submission of supplemental information is not modified.
`
`
`
`PETITIONER:
`
`Robert Lawler
`James Morrow
`REINHART, BOERNER, VAN DEUREN s.c.
`illuminaiprs@reinhartlaw.com
`
`
`
`
`
`
`
`
`5
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`
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`Case IPR2012-00007
`U.S. Patent 7,790,869
`
`PATENT OWNER:
`
`John White
`COOPER & DUNHAM LLP
`jwhite@cooperhunham.com
`
`Anthony Zupcic
`FITZPATRICK, CELLA, HARPER & SCINTO
`clombiaipr@fchs.com
`
`
`
`6
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`
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