UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`OXFORD NANOPORE TECHNOLOGIES, INC.,
`Petitioner,
`v.
`PACIFIC BIOSCIENCES OF CALIFORNIA, INC.
`Patent Owner
`
`Case IPR No. IPR2018-01792
`U.S. Patent No. 9,738,929
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`PATENT OWNER PACIFIC BIOSCIENCES OF CALIFORNIA, INC.’S
`SUR-REPLY TO PETITION FOR INTER PARTES REVIEW
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`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`OXFORD NANOPORE TECHNOLOGIES, INC.,
`Petitioner,
`v.
`PACIFIC BIOSCIENCES OF CALIFORNIA, INC.
`Patent Owner
`
`Case IPR No. IPR2018-01792
`U.S. Patent No. 9,738,929
`
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`PATENT OWNER PACIFIC BIOSCIENCES OF CALIFORNIA, INC.’S
`SUR-REPLY TO PETITION FOR INTER PARTES REVIEW
`
`
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`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`EXHIBIT LIST
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`Exhibit #
`Description
`Ex. 2001 Amendment and Response to Office Action regarding Patent
`Application No. 13/147,159, Docket No. JKJ-027USRCE
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`Ex. 2002
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`Ex. 2003
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`Ex. 2004
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`Ex. 2005
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`Ex. 2006
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`Ex. 2007
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`Ex. 2008
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`Complaint for Patent Infringement arising under U.S. Patent No.
`9,546,400, Pacific Biosciences of California, Inc. v. Oxford
`Nanopore Technologies, Inc., Case No. 1:17-cv-00275 (D. Del.),
`Docket No. 1
`
`Complaint for Patent Infringement arising under U.S. Patent No.
`9,678,056, Pacific Biosciences of California, Inc. v. Oxford
`Nanopore Technologies, Inc., Case No. 1:17-cv-01353 (D. Del.),
`Docket No. 1
`
`Oxford Nanopore Technologies, Inc.’s Initial Invalidity
`Contentions, Pacific Biosciences of California, Inc. v. Oxford
`Nanopore Technologies, Inc., Case Nos. 1:17-cv-00275 (D. Del.)
`and 1:17-cv-01353 (D. Del.)
`
`Docket text for Oral Order Rescheduling Markman Hearing,
`Pacific Biosciences of California, Inc. v. Oxford Nanopore
`Technologies, Inc., Case Nos. 1:17-cv-00275 (D. Del.) and 1:17-
`cv-01353 (D. Del.)
`
`Stipulation and Proposed Order Granting Leave to Extend Time,
`Pacific Biosciences of California, Inc. v. Oxford Nanopore
`Technologies, Inc., Case No. 1:17-cv-00275, Docket No. 118
`
`Scheduling Order, Pacific Biosciences of California, Inc. v. Oxford
`Nanopore Technologies, Inc., Case No. 1:17-cv-01353 (D. Del.),
`Docket No. 35
`
`Deposition of Patrick Hrdlicka, Ph.D., dated October 23, 2018,
`Pacific Biosciences of California, Inc. v. Oxford Nanopore
`Technologies, Inc., Case Case Nos. 1:17-cv-00275 (D. Del.) and
`1:17-cv-01353 (D. Del.)
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`i
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`Invalidity Contentions of Respondents Oxford Nanopore
`Invalidity Contentions of Respondents Oxford Nanopore
`Technologies Ltd., Oxford Nanopore Technologies, Inc., and
`Technologies Ltd., Oxford Nanopore Technologies, Inc., and
`Ex. 2009
`Metrichor, Ltd, In the Matter of Certain Single-Molecule Nucleic
`EX. 2009 Metrichor, Ltd, In the Matter of Certain Single-Molecule Nucleic
`Acid Sequencing Systems and Reagents, Consumables, and
`Acid Sequencing Systems and Reagents, Consumables, and
`Software for use with Same, Investigation No. 337-TA-1032
`Software for use with Same, Investigation No. 337-TA-1032
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`ii
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`ii
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`Although Petitioner uses its reply mainly to dispute that it has gained an unfair
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`advantage through its delay, unfair advantage is just one factor for the Board to
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`consider in deciding whether to exercise its discretion to deny institution pursuant to
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`§ 314(d). When one considers the overall stage of the district court litigation and
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`Petitioner’s delay in filing, it makes no sense for the Board to institute an IPR.
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`Moreover, despite Petitioner’s protestations that it gained no actual unfair advantage,
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`the only reasonable explanation for Petitioner’s delay is that it was taking a wait-
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`and-see approach to IPR precisely so that it could gain an advantage.
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`The undisputed facts are as follows. The parties had been in litigation for
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`almost a year prior to the filing of this IPR. Indeed, Petitioner waited until the last
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`possible day before the statutory deadline pursuant to 35 U.S.C. § 315 before filing
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`its IPR request. As Patent Owner explained in its preliminary response, Petitioner
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`delayed filing until long after it was undisputedly aware of the art it ultimately relied
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`upon, having asserted this art months earlier in its district court invalidity
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`contentions.
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`In fact, Petitioner’s delay is much more egregious than this. Petitioner had
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`actually been aware of the relevant prior art since before March 2017, when
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`Petitioner cited it in co-pending ITC litigation against another of Patent Owner’s
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`patents directed to redundant sequencing. See Ex. 2009 at 4-5. This was six months
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`1
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`before Patent Owner asserted the ’929 patent against Petitioner and 18 months before
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`Petitioner finally filed its IPR request against the ’929 patent.
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`While Petitioner delayed until the last possible moment to file this IPR, the
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`district court litigation involving the ’929 patent proceeded steadily. The parties
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`have completed claim construction briefing and conducted a Markman hearing. Fact
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`discovery is set to close in a few months. It is undisputed that the parties will
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`complete expert discovery, summary judgment proceedings, and a jury trial before
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`the Board will issue its final written decision in this IPR. As part of these
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`proceedings, the district will fully adjudicate the validity of the ’929 patent. For this
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`reason alone, it makes little sense to institute an IPR and would only serve to waste
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`Board resources.
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`As to the question of whether Petitioner’s delay led to unfair advantage, the
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`most compelling aspect of Petitioner’s reply is what it omits. Specifically, Petitioner
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`never explains why it waited until the very last possible day before the statutory
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`deadline to file its IPR request, even though it had been aware of the relevant prior
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`art seven months before PacBio asserted the ’929 patent against it.
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`This silence speaks loudly. While Petitioner argues that it did not ultimately
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`receive an advantage, the only possible explanation for Petitioner’s delay is that it
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`was, in fact, seeking to gain such an advantage. There are multiple avenues for
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`Petitioner to have gained such an advantage.
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`2
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`First, by delaying as long as it has, Petitioner has avoided the possibility of
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`any estoppel pursuant to 35 U.S.C. § 315(e) applying to it. Because there will be no
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`final written decision until after the district court trial, Petitioner will be free to
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`present a full range of invalidity arguments against the ’929 patent to the jury.
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`Indeed, Petitioner’s reply trumpets that Petitioner will be able to have its cake and
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`eat it too, asserting that the Board should institute an IPR so that if it wins here but
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`loses with the jury it will be able to present a consolidated appeal to the Federal
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`Circuit or have the district court result “dismiss[ed] as moot.” See Paper 8 at 5. This,
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`however, is directly contrary to the statutory scheme underlying IPR, which includes
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`estoppel provisions specifically to avoid wasteful duplicate proceedings.
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`Second, while Petitioner argues that there can be no unfair advantage because
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`the ’400 and ’929 patents are unrelated, there is overlap in the general subject matter
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`(nanopore single molecule sequencing). Both the IPR against the ’400 patent and
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`the IPR against the ’929 patent advanced obviousness grounds using the Akeson
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`reference. The obviousness combinations in each of the two petitions are different
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`given the different scope of the claims, but the delay in filing the ’929 petition gave
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`the Petitioner an opportunity to see how both the Patent Owner and the Board
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`characterized Akeson and addressed Petitioner’s purported motivations to combine.
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`Whatever form of advantage Petitioner was seeking to gain, there can be
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`no legitimate dispute that gaining an advantage was its intention in view of its
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`3
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`unexplained delay. For the reasons stated herein, the Board should not reward
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`this delay by permitting Petitioner to engage in a wasteful dual-track attack on
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`the validity of the ’929 patent.
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`4
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`Dated: February 13, 2019
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`Respectfully submitted
`
`/ Derek C. Walter /
`By:
`Derek C. Walter
`Reg. No. 74,656
`Weil, Gotshal & Manges LLP
`201 Redwood Shores Parkway
`Redwood Shores, CA 94065-1134
`Telephone: 650-802-3000
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`CERTIFICATE OF COMPLIANCE
`Pursuant to 37 C.F.R. § 42.24(d), the undersigned certifies that the foregoing
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`Patent Owner Preliminary Response, exclusive of the exempted portions as provided
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`in 37 C.F.R. § 42.24(a), contains no more than 785 words and therefore complies
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`with the type-volume limitations of 37 C.F.R. § 42.24(a). In preparing this
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`certificate, counsel has relied on the word count of the word-processing system used
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`to prepare the paper (Microsoft Word).
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`Dated: February 13, 2019
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`Respectfully submitted,
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`WEIL, GOTSHAL AND MANGES LLP
`
`
`
`By: / Derek C. Walter /
`Derek C. Walter
`Reg. No. 74,656
`Weil, Gotshal & Manges LLP
`201 Redwood Shores Parkway
`Redwood Shores, CA 94065-1134
`Telephone: 650-802-3000
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`6
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`CERTIFICATE OF SERVICE
`I hereby certify that on February 13, 2019, a copy of PATENT OWNER
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`PACIFIC BIOSCIENCES OF CALIFORNIA, INC.’S SUR-REPLY TO
`PETITION FOR INTER PARTES REVIEW and Exhibit 2009 was served by
`filing this document through the PTAB’s E2E Filing System as well as delivering a
`copy via electronic mail upon the following:
`
`
`Oxford929IPR@bakerbotts.com
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`
`
`Steven Lendaris
`Carolyn Pirraglia
`Baker Botts LLP
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`Dated: February 13, 2019
`
`/ Derek C. Walter /
`Derek C. Walter
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