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` UNITED STATES PATENT AND TRADEMARK OFFICE
` ________________________
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
` _________________________
` ARIOSA DIAGNOSTICS
` Petitioner,
` v.
` VERINATA HEALTH, INC.
` Patent Owner.
` ________________________
` CASE IPR2013-00276
` CASE IPR2013-00277
` Patent 8,318,430
`
` TELEPHONE CONFERENCE
`
`B E F O R E : LORA M. GREEN
` TONI R. SCHEINER
` RAMA G. ELLURU
`
`Reported by: MARY F. BOWMAN, RPR, CRR
`JOB NO. 101920
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`IPR2013-00276
`Ariosa Exhibit 1049, pg. 1
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`
`
` UNITED STATES PATENT AND TRADEMARK OFFICE
` ________________________
` BEFORE THE PATENT TRIAL AND APPEAL BOARD
` _________________________
` ARIOSA DIAGNOSTICS
` Petitioner,
` v.
` VERINATA HEALTH, INC.
` Patent Owner.
` ________________________
` CASE IPR2013-00276
` CASE IPR2013-00277
` Patent 8,318,430
`
` TELEPHONE CONFERENCE
`
`B E F O R E : LORA M. GREEN
` TONI R. SCHEINER
` RAMA G. ELLURU
`
`Reported by: MARY F. BOWMAN, RPR, CRR
`JOB NO. 101920
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`IPR2013-00276
`Ariosa Exhibit 1049, pg. 1
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`
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`Page 2
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` January 8, 2016
` 3:00 p.m.
`
` Telephone Conference, before Mary F.
` Bowman, a Registered Professional Reporter,
` Certified Realtime Reporter, and Notary
` Public of the State of New Jersey.
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`IPR2013-00276
`Ariosa Exhibit 1049, pg. 2
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`
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` APPEARANCES (By Telephone):
`
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`Page 3
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`OBLON McCLELLAND MAIER & NEUSTADT
`Attorneys for Petitioner
` 1940 Duke Street
` Alexandria, VA 22314
`BY: GREG GARDELLA, ESQ.
` SCOTT McKEOWN, ESQ.
`
`WILSON SONSINI GOODRICH & ROSATI
`Attorneys for Patent Owner
` 701 Fifth Avenue
` Seattle, WA 98104
`BY: MICHAEL ROSATO, ESQ.
`
`Also Present:
` Dianna DeVore, Convergent Law Group
` Edward Reines, Weil Gotshal
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`IPR2013-00276
`Ariosa Exhibit 1049, pg. 3
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` JUDGE GREEN: It is my
` understanding that the parties requested
` this conference call to discuss the
` remand to the Court of Appeals for
` Federal Circuit in this case.
` Petitioner, would you like to
` begin?
` MR. GARDELLA: So in brief, we
` will be asking for the opportunity to
` brief 15 pages two primary aspects, but
` before we get into that, I just wanted
` to lay a brief bit of groundwork.
` We have all read the Federal
` Circuit decision, but I think in
` pertinent part, a brief for you would be
` helpful.
` The Federal Circuit held that
` because of 1010 should be considered as
` evidence of the knowledge. The letter
` tends to bring to bear in reading the
` prior art identified as producing
` obviousness. At -- the quote from I
` think the paragraph paging -- bridging,
` rather, pages 11 to 12. The Federal
`
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`IPR2013-00276
`Ariosa Exhibit 1049, pg. 4
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` Circuit also noted that Exhibit 1010
` should be considered in the context of
` the original declarations. In
` particular, the Federal Circuit noted
` that Ariosa's petition and opening
` declarations invoked Exhibit 1010 in
` this way, as knowledge of -- that those
` of ordinary skill in the art would bring
` to bear in reading the prior art.
` So with that being said, we would
` like to brief two primary aspects of the
` case. First, we would like to explain
` how, under KSR, Exhibit 1010 impacts the
` analysis of combination of Shoemaker,
` Dhallan and Binladen.
` We'd essentially like to walk your
` Honors through how Exhibit 1010 is
` relevant to what the prior art would
` suggest to a skilled artisan under
` KSR --
` JUDGE GREEN: Wasn't this an
` argument you made before?
` MR. GARDELLA: That's precisely
` what we would like to walk through. We
`
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`IPR2013-00276
`Ariosa Exhibit 1049, pg. 5
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` are not looking to supplement the
` factual record.
` JUDGE GREEN: I understand that.
` But also making new arguments and
` everything else that, you know, based on
` 1010, I think you have to show us what
` we overlooked and how you used 1010
` earlier in your papers. I don't think
` you can make new argument based on 1010.
` MR. GARDELLA: Agreed, your Honor,
` and we aren't suggesting that we would.
` Rather, our thinking is that it is a
` rather big record. Your Honors have
` been away from it for about a year.
` There is about 230 pages in original
` declaration evidence.
` So we were thinking that it would
` make a lot of sense for us to walk
` through the obviousness analysis as it
` was set forth in the petition and the
` accompanying declarations. The legal
` issues will, of course, go to the
` Federal Circuit, they will review those
` again, de novo. But as to the factual
`
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`IPR2013-00276
`Ariosa Exhibit 1049, pg. 6
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` issues, we thought it would be very
` helpful to provide essentially an index
` to the arguments which have already been
` presented in the petition and the
` accompanying declarations such that is
` your Honors don't have to dig through
` the record.
` JUDGE GREEN: OK.
` MR. GARDELLA: So that's premise
` number one.
` Premise number two is to explain
` how consideration of Exhibit 1010 does
` not involve replacing, this is a quote,
` replacing the tagging and sequencing
` techniques of Dhallan and Binladen with
` the illumina indexing kit and that's
` discussed at the Federal Circuit opinion
` at page 10.
` We would like to walk through how
` the petition and the institution
` decision, for that matter, relied upon
` the sequencing method of Shoemaker, not
` Dhallan.
` The Federal Circuit noted this at
`
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`IPR2013-00276
`Ariosa Exhibit 1049, pg. 7
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` page 8 of its decision, that we argued
` in the petition that a skilled artisan
` would have understood that Shoemaker's
` method would be augmented or you could
` carry out with the use of cell-free DNA
` from Binladen -- I am sorry, Dhallan,
` excuse me, and the multiplexed detection
` techniques from Binladen.
` Just to restate because I made an
` error there in iterating that, what the
` petition sets forth is that Shoemaker's
` methods for determining the presence of
` fetal abnormalities would be carried out
` with the use of cell-free DNA as
` described in Dhallan and the multiplexed
` detection techniques taught in Binladen.
` So the compatibility between
` Binladen and Dhallan sequencing
` techniques was, we believe, a red
` herring and we would like to explain how
` this was set forth in the petition, and
` as well as the accompanying
` declarations.
` We believe the relevant question
`
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`IPR2013-00276
`Ariosa Exhibit 1049, pg. 8
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` from the outset was presented as and is
` whether Binladen's labeling technique
` would have worked with Shoemaker. Not
` whether Binladen's labeling technique
` would work with Dhallan.
` So this is explained at some
` greater length in the Nussbaum and
` Morton declarations. Again, we are not
` looking to supplement the record or
` change any arguments. We would like an
` opportunity to walk the board through
` the evidence relevant to the analysis
` prescribed by the Federal Circuit
` decision.
` JUDGE GREEN: OK, I understand
` your position.
` Let me see what patent owner has
` to say.
` MR. ROSATO: Mike Rosato for
` patent owner. So as an initial matter,
` my understanding of the nature of this
` call is a scheduling call, not an oral
` hearing or opportunity to advance the
` argument here or else-wise.
`
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`IPR2013-00276
`Ariosa Exhibit 1049, pg. 9
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`
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` So for the purposes of scheduling,
` looking at the Court's decision, that
` has laid out a fairly clear roadmap as
` to what can be done and we think the
` board, the court's inclination that the
` board committed no errors is a correct
` one and -- including, for example, the
` board presumably considered Exhibit 1010
` and -- as well as the notation of the
` inadequate nature of the petitioner's
` case was pervasive throughout.
` We also note that the decision
` acknowledges at page 15 a lack of need
` for any new evidence or even new
` briefing, certainly lack any need for
` new arguments. So in view of the
` guidance, the primary objective here
` should be to address scheduling.
` JUDGE GREEN: What are you talking
` about when you're talking about
` scheduling?
` MR. ROSATO: So what the parties
` would be required to do, if anything,
` and what the timeline of that -- as well
`
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`IPR2013-00276
`Ariosa Exhibit 1049, pg. 10
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` as what the scope of that would be. So
` if there is new briefing to be done,
` what would be the timeline for that, and
` we are happy to make proposals.
` Whether any new evidence is
` allowed to be submitted --
` JUDGE GREEN: I will tell you
` right now, new evidence will not be
` allowed to be submitted.
` MR. ROSATO: OK, and we would
` agree with that, your Honor. Thank you.
` As far as briefing, the length of
` the briefing and the scope. So we would
` propose to the extent any briefing at
` all is authorized, no more than ten
` pages of briefing per side would seem
` necessary, if any at all.
` And then on the scope of that
` briefing, given the history of the case,
` we think it is particularly important
` that the scope of the briefing be
` specifically defined, the briefing is
` authorized, the parties should have a
` pretty clear picture of what the scope
`
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`IPR2013-00276
`Ariosa Exhibit 1049, pg. 11
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` of that briefing is. And in particular,
` we would suggest the briefing be limited
` to specifically how the courts' opinion
` relates to the existing record.
` We would not agree that the
` briefing be expanded, as counsel for
` petitioner suggested, to put together a
` new argument on how obviousness law
` comes to bear in bringing different
` pieces together.
` JUDGE GREEN: I understand.
` Petitioner, I have to say I do agree
` with patent owner that the scope of the
` briefing should be limited to how -- I
` think I pointed this out when you were
` speaking, how -- what the court said and
` what we may have overlooked what -- how
` 1010 was used in the petition and the
` reply and how those cited to certain
` parts of the declarations. If you start
` going to parts of declarations that you
` never cited in your briefing, that
` really has nothing to do with anything,
` because if you didn't point it out in
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`IPR2013-00276
`Ariosa Exhibit 1049, pg. 12
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` your briefing, we are not going to go
` looking for it in the declaration.
` So --
` MR. GARDELLA: I think I
` understand, your Honor.
` JUDGE GREEN: Do you think you
` could do this in 10 pages?
` MR. GARDELLA: Given -- we will,
` of course, do what your Honor directs.
` But given the nature of the rights at
` issue here, 15 pages is just the length
` of a standard motion and we are talking
` about a rather lengthy record. We do a
` have a lot of material cited.
` So in the interest of making sure
` that all the Is are dotted and Ts are
` crossed for what presumably will be
` another appellate review, I would
` advocate that 15 pages would be -- is
` going to be tight as it is. But again,
` we will of course abide by whatever you
` decide.
` JUDGE GREEN: OK. And patent
` owner, between 10 and 15 pages. I know
`
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`IPR2013-00276
`Ariosa Exhibit 1049, pg. 13
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` you advocated 10 pages. But if both
` parties have to go back and point to
` where arguments were made in the record
` that initially went up to the Federal
` Circuit, which I think is what you want,
` does that change your page limit or do
` you still think ten pages would be
` enough? Because I would want clear
` reference to the record that was on
` appeal.
` MR. ROSATO: Sure, your Honor. So
` I echo the sentiment that whatever the
` board needs, we are here to provide.
` That is the objective here is to --
` JUDGE GREEN: I understand. The
` two of you have, hopefully, having gone
` up on appeal and everything else, and we
` have read the opinion and everything
` else, I can't say that we have really
` searched through our records at this
` point.
` So if there is something that you
` need to point out, I would rather give
` you the page limits rather than
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`IPR2013-00276
`Ariosa Exhibit 1049, pg. 14
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`Page 15
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` having -- give you the 15 pages, rather
` than start having people resort to
` acronyms or weird ways of citing the
` record that's hard for us to follow.
` MR. ROSATO: Sure, understood.
` The Federal Circuit was able to cover
` the subject matter in their opinion in
` roughly 15 pages. So if the scope is
` limited to what it should be limited to,
` 10 pages to point to a roughly 15-page
` opinion should be perfectly sufficient.
` We would say 10 pages is plenty. If 15
` pages is deemed critical to the board,
` then we are willing to accept that.
` JUDGE GREEN: At this point, I
` don't know what is critical to the board
` because obviously we don't know what the
` briefing is going to look like. I would
` hate to have somebody feel like they
` have one hand tied behind their back
` bound.
` I am going to put you on moot for
` a second while I confer with the panel.
` And one thing I would like the two of
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`IPR2013-00276
`Ariosa Exhibit 1049, pg. 15
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` you to think about is how long you need
` for this briefing. So I'm put you on
` mute for just one second.
` (Pause)Binladen Dhallan, Shoemaker
` JUDGE GREEN: This is Judge Green.
` Do I still have counsel for the
` petitioner on the line?
` MR. GARDELLA: Yes.
` JUDGE GREEN: Do I still have
` counsel for the patent owner on the
` line?
` MR. ROSATO: You do, your Honor.
` JUDGE GREEN: I have conferred
` with the panel, and given this the only
` remand from the Federal Circuit, we are
` going to allow briefing, we will allow
` 15 pages.
` Petitioner, how long will it take
` you to get your briefing in?
` MR. GARDELLA: I am going to ask
` for the week of February 3, here is why.
` I have two hearings coming up, I
` believe, on the 27th of January and I
` have a number of briefs in advance of
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`IPR2013-00276
`Ariosa Exhibit 1049, pg. 16
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` that that that particular panel as
` ordered.
` In deference to that and make sure
` that I am able to devote appropriate
` attention, I would propose and request
` February 3, and if opposing counsel is
` able to turn his around in, say, three
` weeks, that would yield a situation
` where we are entirely briefed up within
` 60 days of the mandate or approximately
` 60 days of the mandate.
` JUDGE GREEN: Patent owner, how do
` you feel about that?
` MR. ROSATO: I would propose
` briefing be filed by the end of next
` week. And I think that's perfectly
` reasonable.
` As you indicated, your Honor,
` there is one other remand, and briefing
` in that case I believe was ten days from
` the mandate. So that's perfectly
` reasonable, and in this case, given the
` limited scope, that should be perfectly
` acceptable and -- as far as individual
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`IPR2013-00276
`Ariosa Exhibit 1049, pg. 17
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` schedules, we all have hearings coming
` up in the next couple of weeks. So it
` shouldn't be a barrier to anyone.
` JUDGE GREEN: I do understand
` that. We -- as I said, the briefing is
` going to be limited to a discussion of
` 1010 and how it was used in the original
` briefing and how it was originally used
` by petitioner. So I do agree this is a
` limited scope.
` Petitioner, I do think that a
` month is getting a little out there. Do
` you think you could have it done in two
` weeks, January 22?
` MR. GARDELLA: Yes, your Honor.
` JUDGE GREEN: Patent owner, do you
` think you could have yours in by
` February 5, that's two weeks and two
` weeks?
` MR. ROSATO: We could have ours in
` by the end of next week, so yes,
` February 5 would be no problem.
` JUDGE GREEN: So a ten-page
` petition, since petitioner is really
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`IPR2013-00276
`Ariosa Exhibit 1049, pg. 18
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` advocating and has the burden of
` persuasion, we will let petitioner go
` first, and his brief is do 1/15, 15
` pages, and then patent owner can have an
` opposition which will be due -- I mean,
` not 15th, the 22nd. I misspoke. I
` apologize for that.
` And that will be due February 5.
` MR. GARDELLA: I'm not sure I
` heard quite correctly. We are talking
` about 15 pages, correct, your Honor?
` JUDGE GREEN: Fifteen pages, I may
` have said 10 pages. I meant 15. I am
` scribbling notes at the same time I am
` talking. I apologize. Sometimes I
` can't chew and walk at the same time.
` MR. GARDELLA: I am glad I'm not
` the only one.
` JUDGE GREEN: Petitioner, anything
` further at this time?
` MR. GARDELLA: The only question
` that remains in my mind, your Honor, is
` again, given the nature of the
` proceeding, whether you think a reply
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`IPR2013-00276
`Ariosa Exhibit 1049, pg. 19
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` Conference - 1/8/16
` would be appropriate. We bear the
` ultimate burden. Obviously, for the
` reasons that opposing counsel already
` iterated, we kind of have an uphill
` battle. So in interest of fairness for
` my client, a short five-page reply, if
` you give us a week do that? Given that
` we bear the burden and given the
` challenging context we are in, I think
` that would be reasonable.
` JUDGE GREEN: Why don't we wait
` and see when the opposition comes in.
` And if you feel that way and we feel a
` reply will be useful, we can schedule a
` quick conference call at the same time
` or do it by e-mail as well. I'm not
` ruling it out but at this point. I
` don't know if it is going to be
` necessary.
` MR. GARDELLA: Very well. Thank
` you. Nothing further.
` JUDGE GREEN: Patent owner,
` anything further?
` MR. ROSATO: Just a clarification,
`
`TSG Reporting - Worldwide - 877-702-9580
`
`IPR2013-00276
`Ariosa Exhibit 1049, pg. 20
`
`
`
`Page 21
`
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` Conference - 1/8/16
` is the board going to issue an order on
` this call?
` JUDGE GREEN: I will write an
` order. It is the same scope that I
` talked about, it has to be limited to
` what the remand was based on which is
` Exhibit 1010. We are not going to allow
` new evidence or new argument. So
` petitioner basically has to go back to
` the record and show how 1010 was used
` and how we may have mis-overlooked or
` misapprehended any arguments in view of
` that particular exhibit. And I think
` that's what the Federal Circuit's
` concern was in the -- in their remand.
` So we want to keep it focused on
` that. No new evidence, no new argument.
` MR. GARDELLA: OK.
` MR. ROSATO: Great.
` JUDGE GREEN: OK? If neither
` party has anything further, thank you
` very much. Have a good rest of the day
` and this call is adjourned.
` Thank you.
`
`TSG Reporting - Worldwide - 877-702-9580
`
`IPR2013-00276
`Ariosa Exhibit 1049, pg. 21
`
`
`
` Conference - 1/8/16
` MR. GARDELLA: Thank you.
` MR. ROSATO: Thank you.
` - - - -
`
`Page 22
`
`TSG Reporting - Worldwide - 877-702-9580
`
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`IPR2013-00276
`Ariosa Exhibit 1049, pg. 22
`
`
`
`Page 23
`
` Conference - 1/8/16
`
` CERTIFICATE
`
` I, MARY F. BOWMAN, a Registered
` Professional Reporter, Certified
` Realtime Reporter, and Notary Public do
` hereby certify:
` The foregoing is a true record of
` the testimony given by in these
` proceedings.
` I further certify that I am not
` related to any of the parties to this
` action by blood or marriage and that I
` am in no way interested in the outcome
` of this matter.
` In witness whereof, I have
` hereunto set my hand this 22nd day of
` January, 2016.
`
` __________________________
` MARY F. BOWMAN, RPR, CRR
`
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`TSG Reporting - Worldwide - 877-702-9580
`
`IPR2013-00276
`Ariosa Exhibit 1049, pg. 23
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