Trials@uspto.gov
`571-272-7822
`
`Paper 12
`Entered: December 2, 2020
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ILLUMINA, INC.,
`Petitioner,
`
`v.
`
`TRUSTEES OF COLUMBIA UNIVERSITY
`IN THE CITY OF NEW YORK,
`Patent Owner.
`____________
`
`IPR2020-01323
`Patent 10,428,380 B2
`
`____________
`
`
`
`Before ZHENYU YANG, JAMES A. WORTH, and
`ROBERT A. POLLOCK, Administrative Patent Judges.
`
`YANG, Administrative Patent Judge.
`
`
`
`ORDER
`
`
`
`
`
`Conduct of the Proceedings
`Authorizing Reply and Sur-Reply
`to Patent Owner’s Preliminary Response
`37 C.F.R. § 42.5
`
`
`
`

`

`IPR2020-01323
`Patent 10,428,380 B2
`
`
`By email dated November 24, 2020, Petitioner requests authorization to file
`a Reply to the Patent Owner Preliminary Response to address arguments raised in
`Patent Owner’s Preliminary Response concerning “discretionary denial under
`314(a) and 325(d), as well as claim construction of the term ‘chemical linker.’”
`Ex. 3001. Petitioner points out that these are “the same topics for which the Board
`authorized Reply briefing in the closely related matters of IPR2020-00988, -01065,
`-01125, and -01177.” Id.
`Petitioner also seeks authorization to submit “non-testimonial exhibits
`related to parallel litigation in the same manner that the Board authorized in the
`closely related matters.”1 Id.
`Petitioner further requests authorization to respond to Patent Owner’s
`proposed construction of the preamble, which is an issue unique to this proceeding.
`Petitioner avers that good cause exists for Petitioner to address all these
`issues. Id. According to Petitioner, Patent Owner does not oppose the above
`requests, as long as Patent Owner is authorized to file a sur-reply. Id.
`Under our rules, a petitioner may seek leave to file a reply to the preliminary
`response, and such a request must make a showing of good cause. 37 C.F.R.
`§ 42.108(c). In light of the above, we determine that good cause exists supporting
`Petitioner’s request to file non-testimonial exhibits related to the parallel litigation
`and to file a Reply to the Preliminary Response. We also determine that good cause
`exists for Patent Owner to file a Sur-reply to Petitioner’s Reply. Such additional
`briefing may be useful in determining whether to institute trial. The parties may
`file additional non-testimonial evidence to support any facts asserted in the Reply
`
`
`1 In the closely related matters, the non-testimonial exhibits comprised documents
`filed in the parallel district court litigation, such as the district court’s Markman
`Order and the parties’ associated briefing. See, e.g., IPR2020-00988, Exs. 1146–
`1166.
`
`

`

`IPR2020-01323
`Patent 10,428,380 B2
`
`and Sur-Reply as to the Board’s discretion under §§ 314(a) and 325(d), but may
`not file additional declaration testimony.
`Accordingly, it is
`ORDERED that Petitioner shall file non-testimonial exhibits related to the
`parallel litigation, such as the district court’s Markman Order and the parties’
`associated briefing, in this proceeding on or before December 9, 2020;
`FURTHER ORDERED that Petitioner may file a Reply to the Preliminary
`Response addressing only those issues outlined in its email of November 24, 2020,
`such Reply not exceeding five pages and received by the close of business on
`December 9, 2020;
`FURTHER ORDERED that Patent Owner may file a responsive Sur-reply
`not exceeding five pages and received by the close of business on December 16,
`2020; and
`FURTHER ORDERED that, in connection with any Reply and Sur-reply,
`neither party is authorized to submit evidence beyond that stated above.
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`

`

`IPR2020-01323
`Patent 10,428,380 B2
`
`PETITIONER:
`
`
`Kerry Taylor
`2kst@knobbe.com
`
`Nathanael Luman
`2nrl@knobbe.com
`
`Michael L. Fuller
`2mlf@knobbe.com
`
`
`
`PATENT OWNER:
`
`John White
`jwhite@cooperdunham.com
`
`John Murane
`jdmurnane@venable.com
`
`Justin Oliver
`joliver@venable.com
`
`Gary Gershik
`ggershik@cooperdunham.com
`
`