Trials@uspto.gov
`Tel: 571-272-7822
`
`Paper 63
`Entered: March 19, 2019
`
`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 IPR2018-00291 (Patent 9,718,852 B2)
`Case IPR2018-00318 (Patent 9,719,139 B2)
`Case IPR2018-00322 (Patent 9,708,358 B2)
`Case IPR2018-00385 (Patent 9,725,480 B2)
` Case IPR2018-00797 (Patent 9,868,985 B2)1
`
`Before JAMES A. WORTH, MICHELLE N. ANKENBRAND,
`BRIAN D. RANGE Administrative Patent Judges.
`
`WORTH, Administrative Patent Judge.
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. §§ 42.5, 42.20(d)
`
`1 The proceedings have not been consolidated. The parties are not
`authorized to use a combined caption unless an identical paper is being
`entered into each proceeding, and the paper contains a footnote indicating
`the same.
`
`

`

`IPR2018-00291 (Patent 9,718,852 B2); IPR2018-00318 (Patent 9,719,139
`B2); IPR2018-00322 (Patent 9,708,358 B2); IPR2018-00385 (Patent
`9,725,480 B2); IPR2018-00797 (Patent 9,868,985 B2)
`
`
`The panel held oral argument for the above-captioned proceedings on
`
`March 5, 2019, with counsel for Illumina, Inc. (“Illumina” or “Petitioner”)
`
`and Trustees of Columbia University in the City of New York (“Columbia”
`
`or “Patent Owner”). The panel authorizes additional briefing as explained
`
`below.
`
`The following facts are undisputed in view of the Petition (Paper 1,
`
`“Pet.”) and Patent Owner’s Mandatory Notices (Paper 4).2 The same parties
`
`previously came before the Board in three inter partes reviews with respect
`
`to related U.S. Patents Nos. 7,790,869 (“the ’869 patent”), 7,713,698 (“the
`
`’698 patent”), and 8,088,575 (“the ’575 patent”) in Illumina, Inc. v. Trustees
`
`of Columbia University in the City of New York, Case IPR2012-00007, Case
`
`IPR2012-00006, and Case IPR2013-00011, respectively (“previous
`
`proceedings”). In the previous proceedings, the Board determined all
`
`challenged claims from the ’869, ’698, and ’575 patents were unpatentable.
`
`Paper 4, 1. IPR2012-00007, Paper 140 (Ex. 1005); IPR2012-00006, Paper
`
`128 (Ex. 1006); IPR2013-00011, Paper 130 (Ex. 1007). The Federal Circuit
`
`affirmed the Board’s unpatentability determinations from the previous
`
`proceedings in Trustees of Columbia University in the City of New York v.
`
`Illumina, Inc., 620 F. App’x. 916 (Fed. Cir. 2015) (Ex. 1008). Paper 4, 1;
`
`Dec. Inst. 29.
`
`Petitioner has variously asserted that the previous proceedings have
`
`preclusive effect, and the parties have briefed, inter alia, whether the
`
`
`2 Where the same or similar papers have been filed in multiple proceedings,
`we refer herein to the papers filed in Case IPR2018-00291, except where
`otherwise indicated.
`
`2
`
`

`

`IPR2018-00291 (Patent 9,718,852 B2); IPR2018-00318 (Patent 9,719,139
`B2); IPR2018-00322 (Patent 9,708,358 B2); IPR2018-00385 (Patent
`9,725,480 B2); IPR2018-00797 (Patent 9,868,985 B2)
`
`previous proceedings give rise to patent owner estoppel, e.g., by reason of
`
`37 C.F.R. § 42.73(d)(3)(i), or judicial estoppel. See Pet. 17; see also id. 1–2,
`
`6–7, 17–19; Paper 45 (Petitioner’s Reply, “Reply”) 2, 9, 14, 18; Paper 453
`
`(Patent Owner’s Response, “PO Resp.”) 62–63.
`
`We note that in B&B Hardware, the Supreme Court stated as follows:
`
`This Court has long recognized that “the determination of
`a question directly involved in one action is conclusive as to that
`question in a second suit.” Cromwell v. County of Sac, 94 U.S.
`351, 354, 24 L.Ed. 195 (1877). The idea is straightforward: Once
`a court has decided an issue, it is “forever settled as between the
`parties,” Baldwin v. Iowa State Traveling Men’s Assn., 283 U.S.
`522, 525, 51 S.Ct. 517, 75 L.Ed. 1244 (1931), thereby
`“protect[ing]” against “the expense and vexation attending
`multiple
`lawsuits, conserv[ing]
`judicial
`resources, and
`foster[ing] reliance on judicial action by minimizing the
`possibility of inconsistent verdicts,” Montana v. United States,
`440 U.S. 147, 153–154, 99 S.Ct. 970, 59 L.Ed.2d 210 (1979). In
`short, “a losing litigant deserves no rematch after a defeat fairly
`suffered.” Astoria Fed. Sav. & Loan Assn. v. Solimino, 501 U.S.
`104, 107, 111 S.Ct. 2166, 115 L.Ed.2d 96 (1991).
`Although the idea of issue preclusion is straightforward, it
`can be challenging to implement. The Court, therefore, regularly
`turns to the Restatement (Second) of Judgments for a statement
`of the ordinary elements of issue preclusion. See, e.g., Bobby v.
`Bies, 556 U.S. 825, 834, 129 S.Ct. 2145, 173 L.Ed.2d 1173
`(2009); New Hampshire v. Maine, 532 U.S. 742, 748–749, 121
`S.Ct. 1808, 149 L.Ed.2d 968 (2001); Baker v. General Motors
`Corp., 522 U.S. 222, 233, n. 5, 118 S.Ct. 657, 139 L.Ed.2d 580
`(1998). The Restatement explains that subject to certain well-
`known exceptions, the general rule is that “[w]hen an issue of
`fact or law is actually litigated and determined by a valid and
`final judgment, and the determination is essential to the
`
`
`3 Where possible, citations are to the unsealed version of this paper (Paper
`41).
`
`3
`
`

`

`IPR2018-00291 (Patent 9,718,852 B2); IPR2018-00318 (Patent 9,719,139
`B2); IPR2018-00322 (Patent 9,708,358 B2); IPR2018-00385 (Patent
`9,725,480 B2); IPR2018-00797 (Patent 9,868,985 B2)
`
`
`judgment, the determination is conclusive in a subsequent action
`between the parties, whether on the same or a different claim.”
`Restatement (Second) of Judgments § 27, p. 250 (1980); see also
`id., § 28, at 273 (listing exceptions such as whether appellate
`review was available or whether there were “differences in the
`quality or extensiveness of the procedures followed”).
`
`B & B Hardware, Inc. v. Hargis Industries, Inc., 135 S. Ct. 1293, 1302–03
`
`(2015).
`
` We request the parties to brief the following issues:
`
`1. Do principles of collateral estoppel (issue preclusion) preclude
`
`relitigation of certain issues based on the affirmance of the three
`
`previous Board decisions by the Federal Circuit? See, e.g., XY,
`
`LLC v. Trans Ova Genetics, 890 F.3d 1282, 1294 (Fed. Cir. 2018)
`
`(applying estoppel based on affirmed decision); B & B Hardware,
`
`Inc. v. Hargis Indus., Inc., 135 S. Ct. 1293, 1310 (“So long as the
`
`other ordinary elements of issue preclusion are met, when the
`
`usages adjudicated by the TTAB are materially the same as those
`
`before the district court, issue preclusion should apply.”).
`
`2. Although the instant proceedings are based on different issued
`
`patents and claims than the previous proceedings, would that be a
`
`meaningful distinction here for patents that are in the same patent
`
`family and that are based on common antecedents?
`
`3. Is a patentable distinction under 37 C.F.R. § 42.73(d)(3)(i)
`
`necessarily a material difference for purposes of applying B & B
`
`Hardware?
`
`4
`
`

`

`IPR2018-00291 (Patent 9,718,852 B2); IPR2018-00318 (Patent 9,719,139
`B2); IPR2018-00322 (Patent 9,708,358 B2); IPR2018-00385 (Patent
`9,725,480 B2); IPR2018-00797 (Patent 9,868,985 B2)
`
`
`4. Is it proper for the Board to reweigh obviousness for the claims as
`
`a whole, e.g., considering any narrowing of the claims at issue,
`
`without relitigating issues common to the previous proceedings?
`
`5. If collateral estoppel applies, what issues have been decided and
`
`how do they apply to the current proceeding?
`
`a. Is there collateral estoppel for the conclusion that Tsien
`
`(alone or further in view of Prober) would have rendered
`
`obvious the use of nucleotide analogues, including that a
`
`person of ordinary skill would have had a reasonable
`
`expectation of success in achieving cleavability of a 3'-O-
`
`allyl blocking group from a nucleotide analogue and
`
`incorporation of a nucleotide analogue with a 3'-O-allyl
`
`blocking group, for purposes of SBS?
`
`b. Is there collateral estoppel for the conclusion that Tsien
`
`(alone or further in view of Prober) would have rendered
`
`obvious the use of nucleotide analogues in SBS, including
`
`that a person of ordinary skill would have had a reasonable
`
`expectation of success in using a nucleotide analogue with a
`
`label attached via a cleavable chemical linker to the 7-
`
`position of an adenine or guanine base, or attached to a
`
`thymine or cytidine base, into a growing DNA strand via a
`
`polymerase? See Pet. 18.
`
`c. Were any conclusions of obviousness in the previous
`
`proceedings based on the specific blocking group, i.e., a 3'-
`
`O-allyl (2-propenyl) blocking group, e.g., that Petitioner
`
`5
`
`

`

`IPR2018-00291 (Patent 9,718,852 B2); IPR2018-00318 (Patent 9,719,139
`B2); IPR2018-00322 (Patent 9,708,358 B2); IPR2018-00385 (Patent
`9,725,480 B2); IPR2018-00797 (Patent 9,868,985 B2)
`
`
`argues Tsien discloses (see Pet. 21), or rather on a genus of
`
`blocking groups without a conclusion as to any specific
`
`blocking group?
`
`
`
`
`
`
`
`It is
`
`ORDER
`
`ORDERED that each party is authorized to file an additional brief,
`
`i.e., one brief applying to all five proceedings where the identical brief is
`
`filed in each of the five proceedings, addressing the above questions, not to
`
`exceed 15 pages, by March 26, 2019;
`
`FURTHER ORDERED that no additional evidence may be submitted
`
`with the additional brief;
`
`FURTHER ORDERED that each party is authorized to file an
`
`additional reply brief, i.e., one brief applying to all five proceedings where
`
`the identical brief is filed in each of the five proceedings, not to exceed 5
`
`pages, by April 2, 2019;
`
`FURTHER ORDERED that no additional evidence may be submitted
`
`with the additional reply brief;
`
`FURTHER ORDERED that no other submissions are authorized at
`
`this time.
`
`
`
`6
`
`

`

`IPR2018-00291 (Patent 9,718,852 B2); IPR2018-00318 (Patent 9,719,139
`B2); IPR2018-00322 (Patent 9,708,358 B2); IPR2018-00385 (Patent
`9,725,480 B2); IPR2018-00797 (Patent 9,868,985 B2)
`
`PETITIONER:
`
`Kerry Taylor
`
`Michael L. Fuller
`William Zimmerman
`Nathanael Luman
`Knobbe, Martens, Olson & Bear, LLP
`2kst@knobbe.com
`2mlf@knobbe.com
`2wrz@knobbe.com
`2nrl@knobbe.com
`
`Derek Walter
`Edward R. Reines
`Weil, Gotshal & Manges LLP
`Derek.walter@weil.com
`edward.reines@weil.com
`
`PATENT OWNER:
`
`John P. White
`Gary J. Gershik
`Cooper & Dunham, LLP
`jwhite@cooperdunham.com
`ggershik@cooperdunham.com
`
`John D. Murnane
`Justin J. Oliver
`Robert S. Schwartz
`Zachary L. Garrett
`Venable LLP
`jdmurnane@venable.com
`joliver@venable.com
`rschwartz@venable.com
`zgarrett@venable.com
`
`
`7
`
`