Trials@uspto.gov
`571-272-7822
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` Paper 21
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` Entered: May 26, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ILLUMINA, INC.,
`Petitioner,
`
`v.
`
`CORNELL RESEARCH FOUNDATION, INC.,
`Patent Owner.
`____________
`
`Case IPR2016-00549 (Patent 8,703,928 B2)
`Case IPR2016-00553 (Patent 8,288,521 B2)
`Case IPR2016-00557 (Patent 8,597,891 B2)
`Case IPR2016-00559 (Patent 8,624,016 B2)
`____________
`
`
`
`Before JACQUELINE WRIGHT BONILLA, Vice Chief Administrative
`Patent Judge, TONI R. SCHEINER and SUSAN L. C. MITCHELL,
`Administrative Patent Judges.
`
`MITCHELL, Administrative Patent Judge.
`
`
`JUDGMENT
`Granting Patent Owner’s Unopposed Motion for Entry of Protective Order,
`Patent Owner’s Motions to Seal, Joint Motion to Seal, and
`Joint Motions to Terminate
`35 U.S.C. § 317 and 37 C.F.R. §§ 42.1, 42.54, 42.72, 42.74
`
`
`
`
`
`571-272-7822
`
`
`
`
`
`
`
`
`
`
`
`
` Paper 21
`
`
`
` Entered: May 26, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ILLUMINA, INC.,
`Petitioner,
`
`v.
`
`CORNELL RESEARCH FOUNDATION, INC.,
`Patent Owner.
`____________
`
`Case IPR2016-00549 (Patent 8,703,928 B2)
`Case IPR2016-00553 (Patent 8,288,521 B2)
`Case IPR2016-00557 (Patent 8,597,891 B2)
`Case IPR2016-00559 (Patent 8,624,016 B2)
`____________
`
`
`
`Before JACQUELINE WRIGHT BONILLA, Vice Chief Administrative
`Patent Judge, TONI R. SCHEINER and SUSAN L. C. MITCHELL,
`Administrative Patent Judges.
`
`MITCHELL, Administrative Patent Judge.
`
`
`JUDGMENT
`Granting Patent Owner’s Unopposed Motion for Entry of Protective Order,
`Patent Owner’s Motions to Seal, Joint Motion to Seal, and
`Joint Motions to Terminate
`35 U.S.C. § 317 and 37 C.F.R. §§ 42.1, 42.54, 42.72, 42.74
`
`
`
`
`
`
`IPR2016-00549 (Patent 8,703,928 B2)
`IPR2016-00553 (Patent 8,288,521 B2)
`IPR2016-00557 (Patent 8,597,891 B2)
`IPR2016-00559 (Patent 8,624,016 B2)
`
`On April 20, 2017, Petitioner Illumina Inc. (“Petitioner”) and Patent
`Owner Cornell Research Foundation, Inc. (“Patent Owner”) filed Joint
`Motions To Terminate Pursuant To 35 U.S.C. § 317(a) and 37 C.F.R.
`§ 42.74 in all four above-referenced cases. See IPR2016-00549 (Paper 17);
`IPR2016-00553 (Paper 18); IPR2016-00557 (Paper 49); IPR2016-00559
`(Paper 18). In IPR2016-00549, IPR2016-00553, and IPR2016-00559, inter
`partes review was denied, but there are outstanding requests for rehearing.
`See Papers 16, 17, 17, respectively. In IPR2016-00557, an instituted case,
`there are outstanding motions, including a motion for entry of protective
`order, motions to seal, motions for admission pro hac vice, and a motion to
`exclude. See Papers 6, 7, 22, 28, 29, 36, 43.
`The parties filed a copy of their Settlement Agreement, made in
`connection with the termination of these proceedings, in accordance with 35
`U.S.C. § 317(b) and 37 C.F.R. § 42.74(b). See Ex. 2052 (all proceedings).
`The parties also filed Joint Requests that the settlement agreement be treated
`as business confidential information, and be kept separate from the file of
`the involved patent, under 35 U.S.C. § 317(b) and 37 C.F.R. § 42.74(c).
`IPR2016-00549 (Paper 18); IPR2016-000553 (Paper 19); IPR2016-00557
`(Paper 50); IPR2016-00559 (Paper 19).
`
`Joint Motions to Terminate and Joint Requests that the Settlement
`Agreement be Treated as Business Confidential Information
`
`The Board generally expects that a case “will terminate after the filing
`of a settlement agreement, unless the Board has already decided the merits.”
`
`2
`
`
`
`IPR2016-00549 (Patent 8,703,928 B2)
`IPR2016-00553 (Patent 8,288,521 B2)
`IPR2016-00557 (Patent 8,597,891 B2)
`IPR2016-00559 (Patent 8,624,016 B2)
`
`Office Patent Trial Practice Guide, 77 Fed. Reg. 48,756, 48,768 (Aug. 14,
`2012); see 37 C.F.R. § 42.72. In their Joint Motions to Terminate, the
`parties indicate that they have settled all disputes regarding the patents
`involved in all four inter partes proceedings, and that no other petitioners
`remain in any proceeding. See IPR2016-00549 (Paper 17, 1–2); IPR2016-
`00553 (Paper 18, 1–2); IPR2016-00557 (Paper 49, 1–2); IPR2016-00559
`(Paper 18, 1–2).
`The Joint Motions to Terminate in three of the inter partes reviews
`IPR2016-00549, IPR2016-00553, and IPR2016-00559, were filed after
`institution was denied, but before a decision on rehearing was issued. The
`Joint Motion to Terminate in IPR2016-00557 was filed before oral
`argument, and thus, before a final written decision has issued on the merits.
`Thus, upon consideration of the facts before us, we determine that it is
`appropriate to terminate all four proceedings. See 37 C.F.R. §§ 42.5(a),
`42.71(a), 42.73(a), 42.74. Accordingly, we grant the Joint Motions to
`Terminate.
`We also determine that the parties have complied with the
`requirements of 37 C.F.R. § 42.74(c) to have the Settlement Agreement
`treated as business confidential information and kept separate from the files
`of the patent at issue in this proceeding. Thus, we grant the Joint Requests
`to treat the Settlement Agreement as business confidential.
`Motion for Entry of Protective Order
`Patent Owner filed an Unopposed Motion for Entry of Protective
`Order in IPR2016-00557. See Paper 6. The parties agreed to a modified
`3
`
`
`
`IPR2016-00549 (Patent 8,703,928 B2)
`IPR2016-00553 (Patent 8,288,521 B2)
`IPR2016-00557 (Patent 8,597,891 B2)
`IPR2016-00559 (Patent 8,624,016 B2)
`
`version of the Default Protective Order in Appendix B of the Office Patent
`Trial Practice Guide, modifying the definition of “parties” to include all real
`parties-in-interest identified in Petitioner’s and Patent Owner’s mandatory
`notices. Id. at 2. The parties provided a clean version of their proposed
`modified default protective order, as well as a redlined version. See Exs.
`2004–2005, respectively.
`We grant Patent Owner’s request to enter the modified protective
`order reflected in Exhibit 2004.
`Motions to Seal in IPR2016-00557
`Patent Owner filed two motions to seal. See Papers 7, 22. In its first
`motion to seal, Patent Owner requests that a confidential version of its Patent
`Owner Preliminary Response (Paper 8) that cites to confidential material
`contained in Exhibit 2003, and Exhibit 2003 itself, be sealed. Paper 7, 1–2.
`Patent Owner contends that Exhibit 2003 contains non-public research data
`from the laboratory notebook of one of the inventors at the time of the
`invention. Id. at 1. Patent Owner notes that Exhibit 2003 is subject to
`protective order in companion district court litigation. Id.
`In its second motion to seal, Patent Owner requests that the
`confidential version of its Patent Owner Response (Paper 23) that cites to
`confidential material contained in Exhibits 2003, 2033, 2034, and 2048, as
`well as Exhibits 2033, 2034, and 2048, themselves, also be sealed. Patent
`Owner explains that Exhibit 2048 contains non-public research data from the
`laboratory notebook of one of the inventors of U.S. Patent No. 8,597,891 B2
`(“the ’891 patent”) at the time of the claimed invention. Paper 22, 1. Patent
`4
`
`
`
`IPR2016-00549 (Patent 8,703,928 B2)
`IPR2016-00553 (Patent 8,288,521 B2)
`IPR2016-00557 (Patent 8,597,891 B2)
`IPR2016-00559 (Patent 8,624,016 B2)
`
`Owner also explains that Exhibit 2033 is a declaration from Patent Owner’s
`declarant that contains non-public data from Exhibits 2003 and 2048. Id.
`at 2. Finally, Patent Owner states that Exhibit 2034 is a declaration from
`one of the inventors of the ’891 patent that contains disclosure of non-public
`information and the results of experiments that were disclosed in a different
`laboratory notebook. Id. at 3. Patent Owner notes that Exhibit 2048 is
`subject to protective order in companion district court litigation. Id. at 1.
`Patent Owner filed redacted, public versions of its Patent Owner
`Preliminary Response and its Patent Owner Response, see Papers 9 and 24,
`respectively, as well as redacted, public versions of Exhibits 2033 and 2034,
`see Exhibits 2039 and 2049, respectively.
`In a third motion to seal filed jointly by the parties, the parties request
`that confidential versions of the transcript of the January 20, 2017
`Deposition of Dr. John Sutherland (Ex. 1104), and the transcript of the
`January 18, 2017 Deposition of Dr. Francis Barany (Ex. 1105), as well as a
`confidential version of Petitioner’s Reply (Paper 37), be sealed. Paper 36, 1.
`The parties state that Dr. Sutherland’s deposition and Dr. Barany’s
`deposition contain testimony addressing the substance of non-public data
`from laboratory notebooks (Exs. 2003 and 2048 discussed above), i.e., the
`notebooks that the parties previously noted are subject to protective order in
`companion district court litigation. Id. at 2. The parties also state that
`Petitioner’s Reply refers to confidential material from Dr. Sutherland’s
`deposition transcript (Ex. 1104, sealed version) and Dr. Barany’s deposition
`transcript (Ex. 1105, sealed version), Patent Owner’s laboratory notebook
`5
`
`
`
`IPR2016-00549 (Patent 8,703,928 B2)
`IPR2016-00553 (Patent 8,288,521 B2)
`IPR2016-00557 (Patent 8,597,891 B2)
`IPR2016-00559 (Patent 8,624,016 B2)
`
`(Ex. 2003), and Patent Owner’s Response (Paper 23). Id. at 3. The parties
`have submitted public redacted versions of Exhibits 1104 and 1105, and
`Petitioner’s Reply (Paper 38).
`We have considered the parties’ arguments to seal the Proposed
`Sealed Documents, and the information sought to be sealed by the parties.
`We determine that the parties have demonstrated good cause for sealing the
`following papers and exhibits pursuant to the protective order entered in this
`proceeding. See 37 C.F.R. § 42.54.
`1. Confidential versions of Patent Owner’s Preliminary Response and
`Patent Owner’s Response containing confidential information
`(Papers 8 and 23);
`
`2. Exhibits 2003, 2033, 2034, and 2048;
`
`
`
`
`
`3. Confidential versions of the January 20, 2017 Deposition of
`Dr. John Sutherland and the January 18, 2017 Deposition of
`Dr. Francis Barany containing confidential information (Exs. 1104
`and 1105, sealed versions, respectively); and
`
`4. Confidential version of Petitioner’s Reply containing confidential
`information (Paper 37).
`
`The parties are reminded that the sponsoring party may file a motion
`to expunge a document containing confidential information from the official
`record. See 37 C.F.R. § 42.56.
`Remaining Outstanding Motions
`Petitioner has two outstanding motions for admission pro hac vice,
`
`see Papers 28–29, and an outstanding motion to exclude Patent Owner’s
`
`6
`
`
`
`IPR2016-00549 (Patent 8,703,928 B2)
`IPR2016-00553 (Patent 8,288,521 B2)
`IPR2016-00557 (Patent 8,597,891 B2)
`IPR2016-00559 (Patent 8,624,016 B2)
`
`evidence, Paper 43. Petitioner also has three outstanding requests for
`rehearing. See IPR2016-00549 (Paper 16); IPR2016-00553 (Paper 17);
`IPR2016-00559 (Paper 17). As we are terminating these proceedings, these
`motions are moot and will not be decided.
`
`ORDER
`
`Accordingly, it is
`ORDERED that the Proposed Modified Protective Order (Ex. 2004) is
`hereby entered and shall govern the conduct of IPR2016-00557 unless
`otherwise modified;
`FURTHER ORDERED that Patent Owner’s Motions to Seal (Papers
`7, 22) in IPR2016-00557 are granted;
`FURTHER ORDERED that the Joint Motion to Seal (Paper 36) in
`IPR2016-00557 is granted; and
`FURTHER ORDERED that the following documents shall be sealed
`as “Board and Parties Only” in IPR2016-00557: (1) Exhibits 2003, 2033,
`2034, and 2048; (2) confidential versions of Exhibits 1104 and 1105; and (3)
`confidential versions of Patent Owner’s Preliminary Response (Paper 8),
`Patent Owner’s Response (Paper 23), and Petitioner’s Reply (Paper 37).
`FURTHER ORDERED that the Joint Requests of the parties to treat
`the Settlement Agreement (Ex. 2052) as business confidential information,
`to be kept separate from the patent file in all four above-referenced inter
`partes proceedings, are granted;
`
`7
`
`
`
`IPR2016-00549 (Patent 8,703,928 B2)
`IPR2016-00553 (Patent 8,288,521 B2)
`IPR2016-00557 (Patent 8,597,891 B2)
`IPR2016-00559 (Patent 8,624,016 B2)
`
`FURTHER ORDERED that the joint motions to terminate the
`proceedings are granted; and
`FURTHER ORDERED that each inter partes proceeding,
`IPR2016-00549, IPR2016-00553, IPR2016-00557, and IPR2016-00559, is
`terminated.
`
`
`
`
`8
`
`
`
`IPR2016-00549 (Patent 8,703,928 B2)
`IPR2016-00553 (Patent 8,288,521 B2)
`IPR2016-00557 (Patent 8,597,891 B2)
`IPR2016-00559 (Patent 8,624,016 B2)
`
`PETITIONER:
`
`Kerry S. Taylor
`Michael L. Fuller
`William Zimmerman
`Nathanael Luman
`KNOBBE, MARTENS, OLSON & BEAR, LLP
`2KST@knobbe.com
`2MLF@knobbe.com
`2nrl@knobbe.com
`
`Jay Alexander
`Christopher Sipes
`COVINGTON & BURLING LLP
`jalexander@cov.com
`cspies@cov.com
`
`
`
`PATENT OWNER:
`
`Dianne B. Elderkin
`Matthew Pearson
`Ruben H. Munoz
`Jason E. Weil
`AKIN GUMP STRAUSS HAUER & FELD LLP
`delederkin@akingump.com
`mpearson@akingump.com
`rmunoz@akingump.com
`jweil@akingump.com
`jweil@akingump.com
`
`9
`
`
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