Trials@uspto.gov Paper: 8
`571-272-7822 Entered: December 23, 2019
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`NEUMODX MOLECULAR, INC.,
`Petitioner,
`
`v.
`
`HANDYLAB, INC.,
`Patent Owner.
`____________
`
`IPR2019-01494
`Patent 8,323,900 B2
`____________
`
`
`Before JO-ANNE M. KOKOSKI, CHRISTOPHER G. PAULRAJ, and
`JULIA HEANEY, Administrative Patent Judges.
`
`HEANEY, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`Granting Motion for Joinder
`35 U.S.C. § 315(c), 37 C.F.R. § 42.122
`
`
`
`571-272-7822 Entered: December 23, 2019
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`NEUMODX MOLECULAR, INC.,
`Petitioner,
`
`v.
`
`HANDYLAB, INC.,
`Patent Owner.
`____________
`
`IPR2019-01494
`Patent 8,323,900 B2
`____________
`
`
`Before JO-ANNE M. KOKOSKI, CHRISTOPHER G. PAULRAJ, and
`JULIA HEANEY, Administrative Patent Judges.
`
`HEANEY, Administrative Patent Judge.
`
`DECISION
`Granting Institution of Inter Partes Review
`35 U.S.C. § 314
`Granting Motion for Joinder
`35 U.S.C. § 315(c), 37 C.F.R. § 42.122
`
`
`
`
`IPR2019-01494
`Patent 8,323,900 B2
`
`
`I. INTRODUCTION
`NeuMoDx Molecular, Inc. (“Petitioner”) filed a Petition to institute an
`inter partes review of claims 1–22 of U.S. Patent No. 8,323,900 B2
`(“the ’900 patent,” Ex. 1003). Paper 1 (“Pet.”). HandyLab, Inc. (“Patent
`Owner”) did not file a Preliminary Response.
`Petitioner also filed a Motion for Joinder to join as a petitioner in
`IPR2019-00490. Paper 3 (“Mot.”). Petitioner filed the Petition and Motion
`for Joinder on August 15, 2019, within one month after we instituted trial in
`IPR2019-00490, and Patent Owner does not oppose the Motion for Joinder.
`As explained further below, we determine institution is warranted on
`the same grounds as instituted in IPR2019-00490 and grant Petitioner’s
`Motion for Joinder.
`
`Related Proceedings
`A.
`Petitioner identifies the following related matter in which the ’900
`patent is asserted: Becton, Dickinson and Co. v. NeuMoDx Molecular, Inc.,
`No. 1:19-cv-01226-LPS (D. Del). Pet. 2.
`IPR2019-00490
`B.
`In IPR2019-00490, Qiagen North American Holdings, Inc. (“Qiagen”)
`challenged claims 1–22 of the ’900 patent. After considering the Petition
`and Patent Owner’s Preliminary Response, we instituted review of the
`challenged claims. Qiagen North American Holdings, Inc. v. HandyLab,
`Inc., IPR2019-00490 (PTAB July 16, 2019) (Paper 8, “Qiagen Inst.”). The
`instituted review in IPR2019-00490 involves the following grounds of
`patentability:
`
`
`
`
`2
`
`
`
`IPR2019-01494
`Patent 8,323,900 B2
`
`
`Reference(s)
`Zou I1 and McNeely2 or
`Pourahmadi3
`Zou I, McNeely or
`Pourahmadi, and Zou II4
`Zou I, McNeely or
`Pourahmadi, and Chow5
`Zou I, McNeely or
`Pourahmadi, and Duong6
`
`
`Qiagen Inst. 7.
`
`Basis
`§ 103
`
`Challenged Claim(s)
`1–8, 12, 14, 15, 17, 19–22
`
`§ 103
`
`§ 103
`
`§ 103
`
`9–11, 13
`
`18
`
`16
`
`II. DISCUSSION
`According to Petitioner’s Motion for Joinder, “the NeuMoDx petition
`
`and the Qiagen IPR are substantively identical; they contain the same
`grounds (based on the same prior art combinations and supporting evidence)
`against the same claims.” Mot. 1. Petitioner further states that “upon
`joining the Qiagen IPR, NeuMoDx will act as an ‘understudy’ unless the
`current petitioner ceases to actively participate in the instituted IPR.” Id.
`Thus, for the same reasons stated in our Decision on Institution in IPR2019-
`00490, we determine institution is warranted here.
`
`Having determined that institution is warranted, we consider
`Petitioner’s Motion for Joinder. Based on authority delegated to us by the
`Director, we have discretion to join an inter partes review to a previously
`
`1 U.S. Patent No. 6,509,186 B1, issued Jan. 21, 2003 (Ex. 1008).
`2 U.S. Patent App. Pub. No. US 2004/0037739 A1, published Feb. 26, 2004
`(Ex. 1009).
`3 U.S. Patent App. Pub. No. US 2002/0055167 A1, published May 9, 2002
`(Ex. 1015).
`4 U.S. Patent No. 6,762,049 B2, issued July 13, 2004 (Ex. 1011).
`5 U.S. Patent No. 5,955,028, issued Sept. 21, 1999 (Ex. 1014).
`6 WO 01/54813 A2, published Aug. 2, 2001 (Ex. 1013).
`
`3
`
`
`
`
`IPR2019-01494
`Patent 8,323,900 B2
`
`instituted inter partes review. 35 U.S.C. § 315(c). When determining
`whether to grant a motion for joinder we consider factors such as timing and
`impact of joinder on the trial schedule, cost, discovery, and potential
`simplification of briefing. Kyocera Corp. v. SoftView, LLC, IPR2013-
`00004, Paper 15 at 4 (PTAB Apr. 24, 2013).
`
`Under the circumstances of this case, we determine that joinder is
`appropriate. As Petitioner notes, the petition in IPR2019-0490 is
`substantially the same as the Petition here, presenting the same arguments
`and relying on the same expert testimony and evidence. Mot. 4. Because
`the present Petition relies on the same expert declaration as the petition in
`IPR2019-0490, no additional deposition is needed. Id. at 6. Further,
`Petitioner’s agreement to take an “understudy” role will result in joinder
`simplifying the proceedings without prejudice to the parties. Id. at 6–7.
`Thus, Petitioner has satisfied the requirements for joinder here, and as noted
`above, Patent Owner has not opposed joinder.
`
`III. CONCLUSION
`Under these circumstances, we agree with Petitioner that joinder is
`appropriate and will not unduly impact the ongoing trial in IPR2019-00490.
`We limit Petitioner NeuMoDx Molecular, Inc.’s participation in the joined
`proceeding, such that (1) Qiagen alone is responsible for all petitioner filings
`in the joined proceeding until such time that it is no longer an entity in the
`joined proceeding, and (2) Petitioner is bound by all filings by Qiagen in the
`joined proceeding, except for (a) filings regarding termination or settlement
`and (b) filings where Petitioner receives permission to file an independent
`paper. Petitioner must obtain prior Board authorization to file any paper or
`to take any action on its own in the joined proceeding, so long as Qiagen
`
`
`
`
`4
`
`
`
`IPR2019-01494
`Patent 8,323,900 B2
`
`remains as a non-terminated petitioner in the joined proceeding. This
`arrangement promotes the just and efficient administration of the ongoing
`trial in IPR2019-00490 and protects the interests of Qiagen as original
`petitioner in IPR2019-00490, and of Patent Owner.
`For the foregoing reasons, and with the limitations discussed above,
`Petitioner’s Motion for Joinder is granted.
`
`IV. ORDER
`In consideration of the foregoing, it is hereby
`ORDERED that, pursuant to 35 U.S.C. § 314(a), an inter partes
`review is hereby instituted as to claims 1–22 of the ’900 patent with respect
`to the grounds set forth in the Petition;
`FURTHER ORDERED that Petitioner’s Motion for Joinder with
`IPR2019-00490 is granted;
`FURTHER ORDERED that the Scheduling Order in place for
`IPR2019-00490 (Paper 9 in that case), including any changes thereto as
`agreed to by the parties to that case, shall govern the joined proceedings;
`
`FURTHER ORDERED that all future filings in the joined proceeding
`are to be made only in IPR2019-00490;
`
`FURTHER ORDERED that the case caption in IPR2019-00490 for
`all further submissions shall be changed to add NeuMoDx Molecular, Inc.
`as a named Petitioner, and to indicate by footnote the joinder of IPR2019-
`01494 to that proceeding, as indicated in the attached sample case caption;
`and
`
`FURTHER ORDERED that a copy of this Decision shall be entered
`into the record in IPR2019-00490.
`
`
`
`
`5
`
`
`
`IPR2019-01494
`Patent 8,323,900 B2
`
`PETITIONER:
`
`James Cleland
`Joshua Ney
`Andrea Shoffstal
`BRINKS GILSON & LIONE
`jcleland@brinksgilson.com
`jney@brinksgilson.com
`ashoffstall@brinksgilson.com
`
`
`PATENT OWNER:
`
`Heather Petruzzi
`Barish Ozdamar
`Christopher Cherry
`WILMER CUTLER PICKERING HALE AND DORR LLP
`heather.petruzzi@wilmerhale.com
`barish.ozdamar@wilmerhale.com
`chris.cherry@wilmerhale.com
`
`
`
`
`
`
`
`
`
`
`6
`
`
`
`IPR2019-01494
`Patent 8,323,900 B2
`
`
`
`Sample Case Caption
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`QIAGEN NORTH AMERICAN HOLDINGS, INC. and
`NEUMODX MOLECULAR, INC.,
`Petitioner,
`
`v.
`
`HANDYLAB, INC.,
`Patent Owner.
`____________
`
`IPR2019-004907
`Patent 8,323,900 B2
`____________
`
`
`7 Cases IPR2019-00490 and IPR2019-01494 have been joined in this
`proceeding.
`
`
`
`7
`
`
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