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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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`OXFORD NANOPORE TECHNOLOGIES, INC.
`Petitioner
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`v.
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`PACIFIC BIOSCIENCES OF CALIFORNIA, INC.
`Patent Owner
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`____________
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`Case No. IPR2018-01792
`U.S. Patent No. 9,738,929
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`____________
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`PETITIONER’S REPLY TO PATENT OWNER’S PRELIMINARY
`RESPONSE PURSUANT TO 37 C.F.R. § 42.108(c)
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`I. INTRODUCTION
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`Oxford Nanopore Technologies, Inc. (“Petitioner”) filed a Petition, Paper 1
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`(“Petition”), to institute inter partes review (“IPR”) of claims 1-17 of U.S. Patent
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`No. 9,738,929 (“the ’929 Patent”). Pacific Biosciences of California, Inc. (“Patent
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`Owner”) filed a Preliminary Response, Paper 6 (“Prelim. Resp.”), contending, in
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`part, that the Board should deny the Petition under 35 U.S.C. § 314(a). Prelim.
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`Resp., 5. The Board authorized Petitioner to file a Reply to the Patent Owner’s
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`Preliminary Response to address Patent Owner’s arguments regarding the timing
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`of the Petition in relation to a concurrent litigation. Paper 7 (January 30, 2019).
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`II. RELATED PROCEEDINGS
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`The ’929 Patent is subject to a pending lawsuit entitled Pacific Biosciences
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`of California, Inc., v. Oxford Nanopore Technologies, Inc., which was consolidated
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`into actions 1:17-cv-00275-LPS, 1:17-cv-01353-LPS (D. Del.) (“the Delaware
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`Proceeding”), in which Petitioner is a defendant.
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`III. ARGUMENT
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`Patent Owner contends that “the Board should exercise its discretion not to
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`institute trial here, as it would be a waste of both the Board’s and the Parties’
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`resources and fundamentally at odds with Congress’s intent for IPR proceedings.”
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`Prelim. Resp., 10. The Board has identified the following seven factors to be
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`considered in exercising discretion to institute under 35 U.S.C. § 314(a):
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`- 1 -
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`1. whether the same petitioner previously filed a petition directed to
`the same claims of the same patent; 2. whether at the time of filing of
`the first petition the petitioner knew of the prior art asserted in the
`second petition or should have known of it; 3. whether at the time of
`filing of the second petition the petitioner already received the patent
`owner’s preliminary response to the first petition or received the
`Board’s decision on whether to institute review in the first petition; 4.
`the length of time that elapsed between the time the petitioner learned
`of the prior art asserted in the second petition and the filing of the
`second petition; 5. whether
`the petitioner provides adequate
`explanation for the time elapsed between the filings of multiple
`petitions directed to the same claims of the same patent; 6. the finite
`resources of the Board; and 7. the requirement . . . to issue a final
`determination not later than 1 year after . . . institution of review.
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`General Plastic Industrial Co., Ltd. v. Canon Kabushiki Kaisha, Case IPR2016-
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`01357, Paper 19 (PTAB Sept. 6, 2017), 16. The Board’s intent in formulating the
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`General Plastic factors was “to take undue inequities and prejudices to Patent
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`Owner into account.” Id., 17. Applying the General Plastic factors to the facts at
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`hand, Petitioner has gained no unfair advantage, Patent Owner has not been
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`prejudiced, and the Board’s resources will not be wasted by institution of this IPR.
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`As Patent Owner concedes, factor one favors institution as Petitioner has not
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`previously filed an IPR petition challenging the ’929 patent. Prelim. Resp., 11-12.
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`Factors two through five address situations where a delay in filing grants
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`Petitioner an unfair advantage. Expedia, Inc. v. International Business Machines
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`Corporation, Case IPR2018-01354, Paper 8 (PTAB January 15, 2019), 33
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`(“[Factors two through five ask] whether Petitioner unfairly waited to raise prior
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`art in a petition until after allegations were presented in another case and ruled
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`upon, thereby giving a Petitioner a road map on how to improve its case.”). Patent
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`Owner does not allege Petitioner gained any unfair advantage from the Delaware
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`Proceeding. Instead, Patent Owner’s sole argument concerning “unfair advantage”
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`is predicated on Petitioner having the benefit of the Patent Owner’s Preliminary
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`Response and the Board’s Denial of Institution in an IPR on a different patent,
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`Oxford Nanopore Tech., Inc. v. Pacific Biosciences of California, Inc., Case
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`IPR2018-00789. Prelim. Resp., 7 and 12. Patent Owner’s conclusory position,
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`however, is not supported by the facts.
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`Patent Owner has argued that the patent at issue in IPR2018-00789, U.S.
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`Patent No. 9,546,400 (“the ’400 Patent”), is directed to the recognition “that
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`multiple bases within a nanopore typically contribute to the signal, [and that] the
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`inventors developed an approach specific to nanopore-based DNA sequencing in
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`which calibration information based on all 4N sequence combinations . . . is used to
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`sequence the nanopore signal.” Oxford Nanopore, Case IPR2018-00789, Paper 7
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`(July 5, 2018), 14. In contrast, Patent Owner argues that the ’929 Patent is directed
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`to “the ability to determine a consensus sequence from just the sense and anti-sense
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`strands of a single-molecule with nanopore sequencing.” Prelim. Resp., 34, n.2.
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`Given these differences in subject matter, Petitioner could not, and did not, gain
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`any unfair advantage by having access to the Patent Owner’s Preliminary Response
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`or the Institution Decision in IPR2018-00789 prior to filing the instant Petition.
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`Moreover, neither the Patent Owner’s Preliminary Response nor the Institution
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`Decision in IPR2018-00789 analyzed or discussed the disclosure of the single
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`reference in common between the two proceedings, U.S. Patent Publication No.
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`2006/0063171, beyond a passing reference in the “Background” of the Patent
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`Owner Preliminary Response. See IPR2018-00789, Paper 7, 12; IPR2018-00789,
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`Paper 8 (Sept. 25, 2018). Because no unfair “road map” could have been obtained
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`based on the proceedings of IPR2018-00789, factors two through five also fall
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`decidedly in favor of institution of the instant Petition.
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`Patent Owner alleges that the roughly two-month period between filing of
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`invalidity contentions in the Delaware Proceeding and the filing of the Petition
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`allowed Petitioner to obtain an unspecified “unfair advantage” under factor 4 and
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`leads factor 5 to weigh against institution or be neutral. Prelim. Resp., 12.
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`Roughly two months to prepare and file an IPR petition and supporting expert
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`declaration hardly constitutes undue delay, particularly in the absence, as here, of
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`any factual evidence supporting the alleged unfair advantage.
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`The Patent Owner contends that factors six and seven weigh in favor of
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`denial because “the district court litigation is at an advanced stage, and trial will
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`conclude before a final decision will issue in this proceeding.” Id., 7. Patent
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`Owner’s protestation that it would be a waste of resources to institute the instant
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`IPR ignores the fact that validity in the District Court litigation and the instant IPR
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`would be governed by entirely distinct standards, thus a conclusion of validity in
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`District Court would not preclude a finding of unpatentability in the IPR, even on
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`identical records. Novartis AG v. Noven Pharm. Inc., 853 F.3d 1289, 1294 (Fed.
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`Cir. 2017). Moreover, not only would appeals in both proceedings almost certainly
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`be co-pending, if not consolidated, as the current trial date, March 9, 2020, is
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`roughly one month earlier than the April 11, 2020 deadline for a Final
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`Determination, but the issuance of a Final Determination affirmed in a later-filed
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`IPR appeal could be used by the Federal Circuit to dismiss as moot an earlier-filed
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`District Court appeal. Dragon Intellectual Property, LLC v. Apple Inc., 700 Fed.
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`Appx. 1005 (Fed. Cir. 2017). Thus, factors six and seven also favor institution.
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`IV. CONCLUSION
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`For the foregoing reasons, the Board should decline to invoke its discretion
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`under 35 U.S.C. §§ 314(a) and 324(a) to deny institution of the Petition.
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`Respectfully submitted,
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`BAKER BOTTS L.L.P.
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`Date: February 6, 2019
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`/Steven P. Lendaris/
`Steven P. Lendaris (Reg. No. 53,202)
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`CERTIFICATE OF SERVICE
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`In accordance with 37 C.F.R. §§ 42.6(e) and 42.105, the undersigned
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`certifies that on February 6, 2019, a complete and entire copy of the foregoing was
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`provided by electronic service to counsel retained by Patent Owner in the Related
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`Matters identified herein:
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`PacBio.Oxford.Delaware@weil.com
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`Respectfully submitted,
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`BAKER BOTTS L.L.P.
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`/Steven P. Lendaris/
`Steven P. Lendaris (Reg. No. 53,202)
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`Date: February 6, 2019
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