UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`NANOCELLECT BIOMEDICAL, INC.,
`
`Petitioner,
`
`V.
`
`CYTONOME/ST, LLC,
`Patent Owner.
`
`Case No. IPR2020-00548
`
`Patent No. 8,623,295
`
`PETITIONER’S PRE-INSTITUTION SUPPLEMENTAL BRIEFING1
`
`1 Authorization for this briefing was given on June 14, 2020, Via teleconference.
`
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`NANOCELLECT BIOMEDICAL, INC.,
`
`Petitioner,
`
`V.
`
`CYTONOME/ST, LLC,
`Patent Owner.
`
`Case No. IPR2020-00548
`
`Patent No. 8,623,295
`
`PETITIONER’S PRE-INSTITUTION SUPPLEMENTAL BRIEFING1
`
`1 Authorization for this briefing was given on June 14, 2020, Via teleconference.
`
`
`
`Case No. IPR2020-00548
`
`Patent No. 8,623,295
`
`During a July 14, 2020, teleconference, the Board authorized this briefing to
`
`address the status of NanoCellect’s invalidity counterclaims in the underlying
`
`Delaware case. EX1062, 1524-13. Specifically, Cytonome argued in its sur-replies
`
`that Petitioner “still maintains its declaratory judgment invalidity counterclaim
`
`against all claims of the [asserted patents].” Cytonome’s assertion is not correct.
`
`First, NanoCellect’s stipulations broadly cover whatever is adjudicated in
`
`the Delaware case. EX1048, 3 (“. . .NanoCellect will not pursue in this case. . .”);
`
`EX1063 at 3 (same).
`
`Second, the Delaware case has now been limited to the 20 asserted claims in
`
`Cytonome’s June 16, 2020, letter and, as a result, NanoCellect is no longer
`
`pursuing invalidity counterclaims against non-asserted claims in the Delaware
`
`case. In other words, any claims other than the 20 asserted claims in Cytonome’s
`
`June 16, 2020, letter will not be adiudicated in the Delaware case. This is reflected
`
`in the stipulation, which provides:
`
`On November 19, 2019, “[p]ursuant to the parties’ agreement to
`
`streamline the case” Cytonome limited the asserted claims from 104
`
`to 42 asserted claims. EX. A. On December 12, 2019, NanoCellect
`
`moved the Court to further order a reduction of asserted claims
`
`because the “scope of th[e] case [was] unmanageable.” EX. B. The
`
`Court denied NanoCellect’s motion at the time “without prejudice to
`
`reconsideration.” EX. C. On April 28, 2020, at the Markman hearing
`
`
`
`Case No. IPR2020-00548
`
`Patent No. 8,623,295
`
`this Court ordered Cytonome to reduce the number of asserted claims
`
`
`to 20. On June 16, 2020, Cytonome reduced the case to the
`
`adjudication of the following 20 asserted claims:
`
`’528 Patent: 18, 20, 22, 23;
`
`’295 Patent: 1, 3, 17, 18;
`
`’797 Patent: 1,13,16,19;
`
`’850 Patent: 1, 7, 8;
`
`’263 Patent: 1, 8, 15, 16; and
`
`’188 Patent: 17.
`
`EX1063 at 4 (emphasis added).
`
`As reflected in the Amended Stipulation, the parties’ agreement and the
`
`Court’s order to streamline the Delaware case limit the claims at issue there to the
`
`20 asserted claims identified above. None of the other 100+ originally asserted
`
`claims will be adjudicated in the Delaware case. This is true both for Cytonome’s
`
`infringement complaint and for NanoCellect’s invalidity counterclaims. Thus, the
`
`non-asserted claims will n_0t be adjudicated in the Delaware case and will n_0t be
`
`included in NanoCellect’s invalidity expert reports due next month. Simply put,
`
`NanoCellect does not maintain its declaratory judgment invalidity counterclaim
`
`against the non-asserted claims, including the following non-asserted IPR claims:
`
`’528 Patent: 19, 21, and 24;’295 Patent: 2, 9; ’797 Patent: 2, 5, 18; ’850 Patent: 6,
`
`9, 10, 11, 12;
`
`’263 Patent: 5, 6; ’188 Patent: 1, 10, 11, 12, 15; and ’283 Patent: 1,
`
`2, 4, 5, 6, 9, 11.
`
`
`
`Case No. IPR2020-00548
`
`Patent No. 8,623,295
`
`That the non-asserted IPR claims will not be adjudicated in the Delaware
`
`case is not just guaranteed by private obligation but also by force of law. As
`
`explained in Exhibit B to the Amended Stipulation, the Court’s order to streamline
`
`the case was based on the Court’s “broad discretionary power to manage this case
`
`to ensure that judicial resources are efficiently allocated,” in accordance with
`
`Landis v. N. Am. C0., 299 U.S. 248, 254-55 (1936); Personalized User Model LLP
`
`v. Google, Inc., CA. No. 09-525-LPS (D. Del. Sept. 8, 2010) (D.I. 88 at 26:17-18;
`
`27:2-9) (ordering reduction of asserted claims to 15 because “[t]he jury can only be
`
`expected to work through so many asserted claims[.]”). Neither NanoCellect nor
`
`Cytonome can expand the Delaware case beyond the 20 asserted claims.
`
`In sum, the Delaware case will only adjudicate the 20 asserted claims, and
`
`NanoCellect’s stipulations ensure NanoCellect “will not pursue” in the Delaware
`
`case the instituted IPR grounds or any other ground for a given patent that
`
`reasonably could have been raised in an instituted IPR for that patent using the
`
`same references or substantially similar references (e. g., Gilbert 7,069,943, Gilbert
`
`8,210,209, and Wada U.S. Patent No. 6,506,609). EX1062, 3-4.
`
`Dated: July 17, 2020
`
`Respectfully submitted,
`
`/Michael T. Rosato /
`Michael T. Rosato, Lead Counsel
`
`Reg. No. 52,182
`WILSON SONSINI GOODRICH &
`
`ROSATI
`
`
`
`Case No. IPR2020-00548
`
`Patent No. 8,623,295
`
`CERTIFICATE OF SERVICE
`
`Pursuant to 37 C.F.R. §§42.6(e) and 42.105(a), this is to certify that I caused
`
`to be served a true and correct copy of the foregoing Petitioner’s Pre-Institution
`
`Supplemental Brief by electronic mail, on this 17th day of July, 2020, on the Patent
`
`Owner at the correspondence address of the Patent Owner as follows:
`
`Kirt S. O’Nell (koneill@akingump_.com)
`Daniel L. Moffett (dmoffett@akingump_.com)
`Andy Rosbrook (arosbrook@akingump_.com)
`Dorian Oj emen (dojemen@akingump_.com)
`Thomas W. Landers (twlanders@akingump_.com)
`NANOCELLECTAGTEAM@akingump.com
`
`Dated: July 17, 2020
`
`Respectfully submitted,
`
`/Michael T. Rosato /
`Michael T. Rosato, Lead Counsel
`
`Reg. No. 52,182
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
