`
`' BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`GNOSIS S.P.A., GNOSIS BIORESEARCH S.A., AND GNOSIS U.S.A., INC.
`Petitioners
`
`V.
`
`SOUTH ALABAMA MEDICAL SCIENCE FOUNDATION
`
`Patent Owner
`
`Case IPR2013—001 18
`
`U.S. Patent No. 6,673,381
`
`PATENT OWNER’S NOTICE OF
`
`PETITION FOR WRIT OF CERTIORARI
`
`
`
`Notice is hereby given that on July 25, 2016, Merck & Cie and South Alabama
`
`Medical Science Foundation (collectively, “Patent Owners”) jointly filed a petition
`
`for writ of certiorari before the Supreme Court of the United States. This petition
`
`was docketed as No. 16-125 on July 27, 2016. The petition seeks review of the Court
`
`of Appeals of the Federal Circuit’s decisions in Merck & Cie v. Gnosis S.p.A., 808
`
`F.3d 829 (Fed. Cir. 2015) and South Alabama Medical Science Foundation 12. Gnosis
`
`S.p.A., 808 F.3d 823 (Fed. Cir. 2015), entered on December 17, 2015. The former
`
`decision affirmed the Final Written Decision of the Patent Trial and Appeal Board
`
`(“PTAB”) entered on June 20, 2014 in IPR2013—001 17 (Paper 71). The latter
`
`decision affirmed the Final Written Decisions of the PTAB entered on June 20, 2014
`
`in IPR2013—001 16 (Paper 68), -118 (Paper 64), and -119 (Paper 65). The Federal
`
`Circuit denied rehearing en bane of its decisions on April 26, 2016, reported at 820
`
`F.3d 432 and 818 F.3d 1380.
`
`In their petition to the Supreme Court, Patent Owners presented the following
`
`questions for review:
`
`(1)In light of Congress’s design and the underlying policies for the America
`
`Invents Act, should judge-made fact—findings in inter partes review
`
`proceedings be reviewed on appeal for clear error, or may the appellate
`
`court
`
`rubber—stamp such fact—findings
`
`if supported by substantial
`
`evidence?
`
`
`
`(2)Does the Federal Circuit exceed its authority when it upholds a PTAB
`
`invalidity decision based on a rationale or ground not explicitly made by
`
`the PTAB?
`
`On July 25, 2016, Patent Owners caused copies of the petition to be served
`
`upon, among others, Ian Gershengorn, Acting Solicitor General, United States
`
`Department of Justice.
`
`Dated: July29, 2016
`
`Respe %
`
`
`b '
`
`Thomas Par er, Esq., Reg. No.: 42,062
`Counsel for Patent Owner
`
`Alston & Bird, LLP
`90 Park Avenue, 12th Floor
`New York, New York 10016-1387
`Telephone: (212) 210-9529
`Facsimile: (212) 922-3975
`E-mail: thomas.parl<er@alston.com
`
`Jitendra Malik, Ph.D, Esq., Reg. No.: 55,823
`Counsel for Patent Owner
`
`Alston & Bird, LLP
`4721 Emperor Boulevard, Ste. 400
`Durham, North Carolina 27703-8580
`Telephone: (919) 862-2210
`Facsimile: (919) 862-2260
`E-mail: jitty.ma1ik@alston.com
`
`Peter Rogalskyj, Esq., Reg. No.: 38,601
`Counsel for Patent Owner
`
`The Law Office of Peter Rogalskyj
`P.O. Box 44
`
`2
`
`
`
`63 Big Tree Street
`Livonia, NY 14487
`Telephone: (585) 346-1004
`Facsimile: (5 85) 346-1001
`E-mail: pr@prpatent.corn
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on July 29, 2016, in addition to being filed electronically
`
`through the Patent Trial and Appeal Board End to End (PTAB E2E) system, the
`
`foregoing Patent Owner’s Notice of Petition for Writ of Certiorari was caused to be
`
`served by overnight mail with the Director of the United States Patent and
`
`Trademark Office, at the following address:
`
`Director of the United States Patent and Trademark Office
`
`c/o Office of the General Counsel,
`
`P.O. Box 1450,
`
`Alexandria, Virginia
`223 1 3 — 1450
`
` Dated: July 29, 2016
`
`V,
`L/
`Thomas Parker, Esq., Reg. No.: 42,062
`Counsel for Patent Owner
`
`Alston & Bird, LLP
`
`90 Park Avenue, 12th Floor
`
`New York, New York 10016-1387
`Telephone: (212) 210-9529
`Facsimile: (212) 922-3975
`E-mail: thomas.parker@alston.com
`
`
`
`CERTIFICATE OF SERVICE
`
`I hereby certify that on July 29, 2016, the Patent Owner’s Notice of Petition
`
`for Writ of Certiorari was served by electronic mail, as consented to by the parties,
`
`upon the Petitioners’ counsel of record upon the following:
`
`Jonathan J. Krit
`
`Joseph E. Cwik
`Amin Talati & Upadhye, LLC
`100 S. Wacker Drive, Suite 2000
`
`Chicago, Illinois 60606
`jonathan@amintalati.com
`joe@amintalati.com
`
`Erik B. Flom, Ph.D.
`
`Husch Blackwell LLP
`
`120 South Riverside Plaza, Suite 2200
`
`Chicago, Illinois 60606
`erik.flom@huschblackwell.com
`
`/,/2 MCI
`
`Thomas Parker, Esq., Reg. No.: 42,062
`Counsel for Patent Owner
`
`Alston & Bird, LLP
`90 Park Avenue, 12th Floor
`New York, New York 10016-1387
`Telephone: (212) 210-9529
`Facsimile: (212) 922-3975
`E—mail: thomas.parker@alston.com
`
`Dated: July 29, 2016
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