Trials@uspto.gov
`571.272.7822
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`Paper 28
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`Entered: December 17, 2021
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`
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`PACIFIC BIOSCIENCES OF CALIFORNIA, INC.,
`Petitioner,
`
`v.
`
`PERSONAL GENOMICS TAIWAN, INC.,
`Patent Owner.
`____________
`
`IPR2020-01163
`IPR2020-01200
`Patent 7,767,411 B2
`____________
`
`
`
`Before SUSAN L. C. MITCHELL and MICHAEL VALEK,
`Administrative Patent Judges.
`
`MITCHELL, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
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`
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`571.272.7822
`
`
`
`
`
`
`
`
`
`
`
`
`Paper 28
`
`Entered: December 17, 2021
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`PACIFIC BIOSCIENCES OF CALIFORNIA, INC.,
`Petitioner,
`
`v.
`
`PERSONAL GENOMICS TAIWAN, INC.,
`Patent Owner.
`____________
`
`IPR2020-01163
`IPR2020-01200
`Patent 7,767,411 B2
`____________
`
`
`
`Before SUSAN L. C. MITCHELL and MICHAEL VALEK,
`Administrative Patent Judges.
`
`MITCHELL, Administrative Patent Judge.
`
`
`
`ORDER
`Conduct of the Proceeding
`37 C.F.R. § 42.5
`
`
`
`
`
`
`
`
`
`
`
`
`IPR2020-01163
`IPR2020-01200
`Patent 7,767,411 B2
`
`
`Pacific Biosciences of California, Inc., (“Petitioner”) sought
`authorization for a motion to file supplemental information pursuant to
`37 C.F.R. 42.123(b) to submit a translation of a recent decision from a
`tribunal in China “that invalidated the claims of the Chinese counterpart to
`the patent at issue in these IPRs [IPR2020-01163 and IPR2020-01200] in
`view of the same prior art presented here by Petition.” Ex. 3003. Patent
`Owner opposed the request. See id.
`We convened a call to discuss the request with the parties. Petitioner
`explained that although the date for the decision from the Chinese tribunal
`was August 17, 2021, the decision was not issued until September 2, 2021.
`Petitioner asserts that it promptly translated the decision and requested
`authorization to file a motion for supplemental information from the Board
`on October 6, 2021. Petitioner asserts that the decision from the Chinese
`tribunal addresses similar claims to those presented in the two cases before
`us here.
`Patent Owner responds that Petitioner’s request to file a motion for
`supplemental information is untimely. Patent Owner asserts that this request
`comes late in the proceeding after the record has been fully developed, and
`Petitioner unduly delayed in requesting authorization to file supplemental
`information after the Chinese tribunal issued its decision.
`Neither party believes that any briefing concerning the relevance of
`the supplemental information is necessary.
`The parties presented sufficient argument during the conference call
`to apprise us of their respective positions concerning the appropriateness of
`the filing of supplemental information requested by Petitioner. We decided
`on the conference call to grant Petitioner’s request to file supplemental
`
`2
`
`
`
`IPR2020-01163
`IPR2020-01200
`Patent 7,767,411 B2
`
`information constituting the Chinese tribunal’s decision without further
`formal briefing. This Order sets forth our reasoning for granting Petitioner’s
`request.
`A motion for the late submission of supplemental information is
`governed by 37 C.F.R. § 42.123(b), which requires the movant to show why
`the supplemental information reasonably could not have been obtained
`earlier and that consideration of the supplemental information would be in
`the interests-of-justice.
`We find from Petitioner’s explanation set forth above that it was
`sufficiently diligent in getting the translation of the Chinese tribunal’s
`decision after issuance and requesting authorization to file it as supplemental
`information. On the facts here, the delay from the issuance of the decision
`on September 2, 2021 until October 6, 2021, when Petitioner requested
`authorization, is not so lengthy as to constitute undue delay.
`We also find that Petitioner has sufficiently shown that it could not
`have obtained the supplemental information earlier as the decision by the
`Chinese tribunal was not issued until September 2, 2021. See 35 U.S.C.
`§ 42.123(b) (requiring a showing as to why the supplemental information
`could not have been obtained earlier); see also Curt G. Joa, Inc. v.
`Fameccanica.data S.P.A., IPR2016-00906, Paper 62, 3 (PTAB June 21,
`2017) (agreeing that the decision from a court in the United Kingdom could
`not have been obtained prior to the date upon which it became publicly
`available).
`We also find that our consideration of the supplemental information
`would be in the interests-of-justice as required by section 42.123(b) as the
`Chinese tribunal’s decision apparently involves a counterpart patent to the
`
`3
`
`
`
`IPR2020-01163
`IPR2020-01200
`Patent 7,767,411 B2
`
`one at issue in the inter partes reviews before us here. See Id. at 3–4
`(determining consideration of UK decision on patent involving a common
`specification to that at issue in the inter partes review was in the interests-of-
`justice). We do note, however, that any factual or legal findings set forth in
`the Chinese tribunal’s decision do not have any preclusive effect in these
`inter partes proceedings. See id. at 4 (citing cf. Novartis AG v. Noven
`Pharms. Inc., 853 F.3d 1289, 1293–94 (Fed. Cir. 2017) (determining that the
`Board was not bound by prior judicial opinions relating to the challenged
`patent)).
`
`Accordingly, it is:
`ORDERED that Petitioner’s Motion to Submit Supplemental
`Information is granted, subject to the qualifications set forth herein; and
`FURTHER ORDERED Petitioner shall submit a copy of the Chinese
`tribunal’s decision as an exhibit no later than December 22, 2021.
`
`
`
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`
`
`
`
`4
`
`
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`IPR2020-01163
`IPR2020-01200
`Patent 7,767,411 B2
`
`FOR PETITIONER:
`
`Derek Walter
`Adrian Percer
`Robert Magee
`WEIL, GOTSHAL & MANGES LLP
`derek.walter@weil.com
`adrian.percer@weil.com
`robert.magee@weil.com
`
`FOR PATENT OWNER:
`
`Michael Fleming
`Keith Orso
`IRELL & MANELLA LLP
`mfleming@irell.com
`korso@irell.com
`
`5
`
`
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