Trials@uspto.gov
`572-272-7822
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`Paper 141
`Entered: April 14, 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 IPR2012-00007
`U.S. Patent 7,790,869
`_________
`
`
`
`Before SALLY G. LANE, RICHARD M. LEBOVITZ, and DEBORAH KATZ
`Administrative Patent Judges.
`LANE, Administrative Patent Judge.
`
`
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`

`

`Case IPR2012-00007
`U.S. Patent 7,790,869
`
`
`I. Background
`
`
`
`The parties jointly contacted the Board regarding the filing of a motion to
`
`expunge information that the Board authorized to be filed under seal. Further
`
`Columbia expressed a wish “to discuss the status of Dr. David Barker’s deposition
`
`transcript in the IPR record.” (See attached email communication).
`
`
`
`II. Discussion
`
`A. Motion to Expunge
`
`Confidential information that is subject to a protective order ordinarily will
`
`become public 45 days after final judgment in the trial. However, here we
`
`authorize the parties to file jointly a motion to expunge in accordance with 37 CFR
`
`§ 42.56. See Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48761 (Aug.
`
`14, 2012). Further, the information filed under seal shall remain sealed pending a
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`Board decision on a timely filed motion.
`
`B. Deposition Transcript
`
`Columbia’s request to file the deposition transcript of Dr. Barker was denied in
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`our Decision on Request for Rehearing. (Decision (Order) entered March 6, 2014,
`
`Paper 139 at 4-5). As the issue has been finally decided there is no basis for
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`further rehearing of that Decision. To the extent it would be appropriate for
`
`Columbia to request rehearing of that portion of the Decision, the time for such a
`
`request has passed. 37 CFR § 42.71(d)(1) (request for rehearing of a non-final
`
`decision is 14 days after its entry).
`
`
`
`2
`
`

`

`Case IPR2012-00007
`U.S. Patent 7,790,869
`
`
`
`
`III. Order
`
`It is
`
`
`
`ORDERED that the parties are authorized to file jointly a motion to
`
`expunge as set forth herein on or before 18 April 2014; and
`
`
`
`FURTHER ORDERED that information authorized to be filed under
`
`seal by the Board shall remain under seal pending a Board decision on a timely
`
`filed motion to expunge.
`
`
`
`
`
`
`
`3
`
`

`

`Case IPR2012-00007
`U.S. Patent 7,790,869
`
`Petitioner:
`
`James Borchardt
`James Morrow
`Reinhart Boerner Van Deuren s.c.
`illuminaiprs@reinhartlaw.com
`
`Patent Owner:
`
`John P. White
`Cooper & Dunham LLP
`jwhite@cooperdunham.com
`
`and
`
`Anthony M. Zupcic
`Fitzpatrick, Cella, Harper & Scinto
`ColumbiaIPR@fchs.com
`
`
`
`
`
`4
`
`

`

`
`From: Zupcic,Anthony [mailto:AZupcic@fchs.com]
`Sent: Tuesday, April 08, 2014 4:50 PM
`To: Trials
`Cc: A Selikson; ColumbiaIPR; G Gershik; Illumina; J. Costakos; John White; uspto
`Subject: Re: IPR2012-00006, IPR2012-00007, IPR2013-00011
`
`Patent Owner Columbia University and Petitioner Illumina jointly request a telephone
`conference to discuss maintaining under seal confidential pleadings and exhibits filed in
`connection with the above-referenced IPRs pending a possible appeal.
`
`Under the IPR Rules, documents filed under seal may be made public 45 days from the final
`written decision (April 20, 2013) unless the parties file a motion to expunge (Rule 42.56; see also
`Comment 172, 77 Fed. Reg. 48612, 48644). However, Columbia has 63 days from entry of
`judgment to file a notice of appeal, and Federal Circuit Rule 17 states that “the agency must
`maintain the record.”
`
`In addition, Columbia would like to discuss the status of Dr. David Barker's deposition transcript
`in the IPR record, and its inclusion in the record for appeal to the Federal Circuit. The Board's
`decision on Columbia's motion stated that the issue of the Barker transcript was preserved for
`appeal, but the Board did not permit Columbia to file the transcript on the IPR dockets. (e.g.,
`IPR2012-00006, Paper 127 at 4-5.) Columbia notes that the Board permitted Illumina to file the
`deposition transcript of Dr. Bruce Branchaud for purposes of an appeal (e.g., IPR2012-00006,
`Paper 123 at 4), but did not permit Columbia to similarly file the Barker deposition transcript.
`
`The parties are available for a telephone conference on Wednesday 4/9 between 1:00 and 2:00
`PM EDT, Thursday 4/10 between 10:00 AM and noon or 2:00 and 3:00 PM EDT, and Friday
`4/11 between 10:00 AM and noon or after 3:00 PM EDT.
`
`Respectfully submitted,
`
`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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