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Paper No. __
`Date: November 12, 2013
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`Filed on behalf of: COLUMBIA
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`
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`By: John P. White
`jwhite@cooperdunham.com
` (212) 278-0421
`
` Anthony M. Zupcic
`ColumbiaIPR@fchs.com
` (212) 218-2100
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`ILLUMINA, INC.
`Petitioner,
`v.
`Patent of THE TRUSTEES OF COLUMBIA UNIVERSITY IN THE CITY OF
`NEW YORK,
`Patent Owner.
`
`
`
`
`
`
`
`
`Case IPR2012-00007
`U.S. Patent No. 7,790,869
`
`
`
`
`
`COLUMBIA’S REQUEST FOR ORAL ARGUMENT UNDER 37 C.F.R. §42.70
`
`
`
`
`
`

`

`Case IPR2012-00007
`U.S. Patent No. 7,790,869
`
`
`COLUMBIA’S REQUEST FOR
`ORAL ARGUMENT UNDER 37 C.F.R. §42.70
`
`Pursuant to Rule 42.70(a) and the Board’s March 12, 2013,
`
`Scheduling Order (Paper No. 29), Patent Owner The Trustees of Columbia
`
`University in the City of New York (“Columbia”) respectfully requests oral
`
`argument for the hearing currently scheduled for December 17, 2013.
`
`Pursuant to Rule 42.70(a), Columbia specifies the following issues to
`
`be argued:
`
`I.
`
`Lack of anticipation of claims 12, 13, 17, 20-26, 28, 29, 31, and 33 and
`substitute claims 35, 38, 41-47, 49-50, 52 and 54 under 35 U.S.C.
`§102(b) by Tsien.
`
`II. Nonobviousness of claims 15 and 16 and substitute claims 34 and 37
`under 35 U.S.C. § 103(a) in view of Tsien and Prober I.
`
`III. Lack of anticipation of claims 12, 13, 17, 20-23, 25, 26, 28, 29, and 31
`and substitute claims 35, 38, 41-44, 46-47, 49-50, and 52 under 35 U.S.C.
`§ 102(a) by Stemple III.
`
`IV. Nonobviousness of claims 15 and 16 and substitute claims 34 and 37
`under 35 U.S.C. § 103(a) in view of Stemple III and Anazawa.
`
`
`V. Nonobviousness of claims 15 and 16 and substitute claims 34 and 37
`based on objective indicia of nonobviousness
`
`VI. Grant of Columbia’s Motion to Amend
`
`VII. Grant of Columbia’s Motion to Exclude Evidence
`
`-1-
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`Case IPR2012-00007
`U.S. Patent No. 7,790,869
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`Dated: November 12, 2013
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`Respectfully submitted,
`
`
`
`/John P. White/
`
`John P. White (Reg. No. 28,678)
`Lead Counsel for Patent Owner
`Cooper & Dunham LLP
`30 Rockefeller Plaza
`New York, NY 10112
`Tel: (212) 278-0421
`Fax: (212) 391-0525
`jwhite@cooperdunham.com
`
`Anthony M. Zupcic (Reg. No. 27,276)
`Back-Up Counsel for Patent Owner
`Fitzpatrick, Cella, Harper &Scinto
`1290 Avenue of the Americas
`New York, NY 10104
`Tel: (212) 218-2100
`Fax: (212) 218-2200
`ColumbiaIPR@fchs.com
`
`-2-
`
`

`

`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
`
`
`
`ILLUMINA, INC.
`Petitioner,
`v.
`Patent of THE TRUSTEES OF COLUMBIA UNIVERSITY IN THE CITY OF
`NEW YORK
`Patent Owner.
`
`
`
`
`
`
`
`
`Case IPR2012-00007
`U.S. Patent No. 7,790,869
`
`
`
`
`
`
`CERTIFICATE OF SERVICE
`
`
`
`
`
`
`I hereby certify that Columbia’s Request for Oral Argument under 37 C.F.R.
`§42.70 in connection with Inter Partes Review Case IPR2012-00007 was served
`on this 12th day of November 2013 by electronic mail to Reinhart, Boerner, Van
`Deurens.c., Counsel for Petitioner, at illuminaiprs@reinhartlaw.com, having a
`postal address at:
`
`
`Reinhart, Boerner, Van Deurens.c.
`1000 North Water St., Suite 1700
`Milwaukee, WI 53202
`
`/Aaron P. Selikson/
`Aaron P. Selikson
`
`
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`Dated: November 12, 2013
`
`
`
`

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