UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`10X GENOMICS, INC.,
`Petitioner,
`
`v.
`
`PRESIDENT AND FELLOWS OF HARVARD COLLEGE and UNITED
`KINGDOM RESEARCH AND INNOVATION,
`Patent Owners.
`
`
`Case No. IPR2020-01467
`U.S. Patent No. 9,919,277
`
`
`
`PETITIONER’S REPLY TO PATENT OWNER’S PRELIMINARY
`RESPONSE
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`

`

`Case No. IPR2020-01467
`U.S. Patent No. 9,919,277
`
`PREFACE
`
`Petitioner 10X Genomics (“10X”) submits the following reply pursuant to the
`
`Board’s Order. Paper 16 (Order Granting Petitioner’s Request for Authorization to
`
`File Briefing). The Board’s Order limits Petitioner to submitting only “the same
`
`arguments presented previously by Petitioner in IPR2020-1180 and IPR2020-1181”
`
`Id. at 5. The Board denied Petitioner’s request to submit briefing addressing the
`
`District Court’s orders issued after Petitioner’s briefs were submitted in IPR2020-
`
`1180 and IPR2020-1181. See Ex. 2032, Transcript of Jan. 7, 2021 Conference Call,
`
`24:18-25:10. Consistent with the limitations of the Board’s Order, Petitioner submits
`
`herewith the same briefing and exhibits submitted in IPR2020-1180. See IPR2020-
`
`1180, Paper 16 and Exhibits 1082-1093; see also IPR2020-1181, Paper 16 and
`
`Exhibits 1182-1193. As Petitioner further explained on the January 7, 2021
`
`Conference Call, these arguments also apply to the Petition in this proceeding and
`
`establish that the Fintiv factors collectively weigh in favor of institution including
`
`because the District Court has set only a trial ready date (not a trial date); no trial
`
`date is likely to be set until after the anticipated deadline for a final written decision
`
`in this proceeding due to the backlog of civil jury trials in the District Court due to
`
`the COVID-19 pandemic and the fact that District Court has yet to restart civil jury
`
`trials; the lack of substantive investment by the District Court in invalidity-related
`
`issues; the fact that Claims 7, 10, and 12 of the 277 Patent are challenged in this
`
` 1
`
`

`

`Case No. IPR2020-01467
`U.S. Patent No. 9,919,277
`Petition (including under grounds involving the Lee reference and the Walker
`
`reference) but are not at issue in District Court; the fact that Patent Owner states in
`
`its Preliminary Response that Petitioner’s grounds involving the Tawfik and Walker
`
`references are not at issue in the District Court; and the strong merits of the Petition.
`
`See Ex. 2032. As also explained in the following briefing, the NHK-Fintiv rule is
`
`contrary to law, arbitrary and capricious, and procedurally invalid—providing
`
`additional, independent bases for declining to exercise discretionary denial.
`
`
`* * *
`
` 2
`
`

`

`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`10X GENOMICS, INC.,
`Petitioner,
`
`v.
`
`PRESIDENT AND FELLOWS OF HARVARD COLLEGE and UNITED
`KINGDOM RESEARCH AND INNOVATION,
`Patent Owners.
`
`
`Case No. IPR2020-01180
`U.S. Patent No. 8,871,444
`
`
`
`PETITIONER’S REPLY TO PATENT OWNER’S PRELIMINARY
`RESPONSE
`
`
`
`Mail Stop “PATENT BOARD”
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`
`

`

`I.
`
`
`
`II.
`
`
`
`Case No. IPR2020-01180
`U.S. Patent No. 8,871,444
`
`TABLE OF CONTENTS
`
`Because No Trial Date Is Set And No Schedule Is In Place,
`
`Because No Substantial Investment In Deciding Invalidity Issues
`
`Four Claims Challenged In The Petition Will Not Be Considered
`
`THE FINTIV FACTORS FAVOR INSTITUTION. ..................................... 1
`A.
`Factor 1 Is Neutral Where No Stay Motion Has Been Filed. .............. 1
`B.
`Factor 2 Favors Institution. ................................................................. 1
`C.
`Has Been Made In District Court, Factor 3 Favors Institution. .......... 6
`D.
`By The District Court So Factor 4 Favors Institution. ........................ 6
`E.
`Factor 5 Is Neutral Where IPR May Conclude Before Trial. ............. 8
`Factor 6 Favors Institution. ................................................................. 9
`F.
`AND CAPRICIOUS, AND PROCEDURALLY INVALID. ..................... 10
`
`THE NHK-FINTIV RULE IS CONTRARY TO LAW, ARBITRARY
`
`
`
`ii
`
`

`

`Case No. IPR2020-01180
`U.S. Patent No. 8,871,444
`TABLE OF AUTHORITIES
`
`Cases
`
`
`
`Apple Inc. v. Fintiv, Inc.,
`IPR2020-00019, Paper 11 (PTAB March 20, 2020) (precedential) ..................... 1
`Apple Inc. v. Iancu,
`No. 5:20-cv-06128-EJD, ECF No. 54 (N.D. Cal. Nov. 9, 2020) ....................... 10
`Apple Inc. v. Maxell, Ltd.,
`IPR2020-00200, Paper 11 (PTAB July 15, 2020) ................................................ 7
`Apple Inc. v. Parus Holdings, Inc.,
`IPR2020-00686, Paper 9 (PTAB Sept. 23, 2020) ............................................ 5, 8
`Apple Inc. v. Seven Networks, LLC,
`IPR2020-00506, Paper 11 (PTAB Sept. 1, 2020) ................................................ 7
`Asetek Danmark A/S v. Coolit Systems, Inc.,
`IPR2020-00825, Paper 12 (PTAB Oct. 13, 2020) ............................................ 5, 6
`
`Cisco Systems, Inc., v. Ramot At Tel Aviv University Ltd.,
`IPR2020-00123, Paper 14 (PTAB May 15, 2020) ............................................... 8
`Facebook, Inc., Instagram, LLC, and Whatsapp Inc. v. Blackberry Limited,
`IPR2019-00899, Paper 15 (PTAB Oct. 8, 2019) .................................................. 8
`Google LLC v. Parus Holdings, Inc.,
`IPR2020-00846, Paper 9 (PTAB Oct. 21, 2020) .............................................. 5, 8
`
`Google LLC v. Personalized Media Communications, LLC,
`IPR2020-00719, Paper 16 (PTAB August 31, 2020) ........................................... 8
`Google LLC v. Uniloc 2017 LLC,
`IPR2020-00441, Paper 13 (PTAB July 17, 2020) ................................................ 5
`Google LLC v. Uniloc 2017 LLC,
`IPR2020-00463, Paper 13 (PTAB Aug. 13, 2020) .......................................... 5, 8
`Illumina, Inc., v. Natera, Inc.,
`IPR2019-01201, Paper 19 (PTAB Dec. 18, 2019) ............................................... 7
`
`iii
`
`

`

`Case No. IPR2020-01180
`U.S. Patent No. 8,871,444
`
`Intel Corp., v. Vlsi Tech. LLC,
`IPR2019-01198, Paper 19 (PTAB Feb. 6, 2020) ................................................. 8
`Kavo Dental Techs., LLC v. Osseo Imaging, LLC,
`IPR2020-00672, Paper 10 (PTAB June 10, 2020) ............................................... 6
`
`Next Caller, Inc. v. TRUSTID, Inc.,
`IPR2019-00963, Paper 8 (PTAB Oct. 28, 2019) .................................................. 8
`Nvidia Corp. v. Invensas Corp.,
`IPR2020-00603, Paper 11 (PTAB Sept. 3, 2020) ............................................ 6, 8
`Precision Planting, LLC and AGCO Corp., v. Deere & Company,
`IPR2019-01051, Paper 18 (PTAB Dec. 20, 2019) ............................................... 8
`Puma North America Inc., v. Nike Inc.,
`IPR2019-01043, Paper 8 (PTAB Oct. 31, 2019) .................................................. 8
`Samsung Electronics Co., Ltd. v. Dynamics Inc.,
`IPR2020-00505, Paper 11 (PTAB Aug. 12, 2020) .............................................. 7
`Sand Revolution II, LLC v. Continental Intermodal Group – Trucking LLC,
`IPR2019-01393, Paper 24 (PTAB June 16, 2020) (informative) ............. 1, 2, 4, 5
`Shenzhen Carku Tech. Co., Ltd. v. The Noco Company,
`IPR2020-00944, Paper 20 (PTAB Nov. 12, 2020) .............................................. 5
`
`ZTE (USA) Inc. v. Fractus, S.A.,
`IPR2018-01451, Paper 12 (PTAB Feb. 19, 2019) ............................................... 8
`
`Rules
`
`35 U.S.C. § 2(b)(2) ................................................................................................ 10
`35 U.S.C. § 315(b) ................................................................................................. 10
`35 U.S.C. § 316(a) ................................................................................................. 10
`5 U.S.C. § 553(b) ................................................................................................... 10
`5 U.S.C. § 553(c) ................................................................................................... 10
`5 U.S.C. § 706(2)(A) ............................................................................................. 10
`
`iv
`
`

`

`Case No. IPR2020-01180
`U.S. Patent No. 8,871,444
`5 U.S.C. § 706(2)(C) .............................................................................................. 10
`5 U.S.C. § 706(2)(D) ............................................................................................. 10
`
`Regulations
`
`85 Fed. Reg. 66502 (Oct. 20, 2020) ...................................................................... 10
`
`
`
`v
`
`

`

`
`
`Ex. No.
`1001
`1002
`1003
`1004
`
`1005
`1006
`1007
`1008
`1009
`
`1010
`
`1011
`
`1012
`1013
`1014
`
`1015
`
`1016
`1017
`1018
`1019
`
`List of Petitioner’s Exhibits
`
`Case No. IPR2020-01180
`U.S. Patent No. 8,871,444
`
`Description
`U.S. Patent No. 8,871,444 (“444 patent”)
`U.S. Patent No. 8,871,444 File History
`U.S. Patent No. 7,129,091 (“Ismagilov”)
`Declaration of Shirley Katherine Johnson attaching Thorsen,
`Todd (2003) Microfluidic Technologies for High-Throughput
`Screening Applications (“Thorsen”)
`U.S. Patent Application Pub. No. 2004/0180346 (“Anderson”)
`U.S. Patent No. 7,323,305 (“Leamon”)
`U.S. Patent Application Pub. No. 2005/0032240 (“Lee”)
`Declaration of Richard B. Fair, Ph.D.
`Véronique M. Sadtler, et al., Achieving Stable, Reverse Water-in-
`Fluorocarbon Emulsions, 35 Angew. Chem. Int. Ed. Engl., no.
`17, 1976 (1996) (“Sadtler”)
`Helen Song & Rustem F. Ismagilov, “Millisecond Kinetics on a
`Microfluidic Chip Using Nanoliters of Reagents,” J Am Chem
`Soc. 2003 November 26; 125(47): 14613–14619. (“Song and
`Ismagilov, 2003”)
`Armin Sepp, et al., Microbead display by in vitro
`compartmentalization: selection for binding using flow cytometry,
`532 FEBS Letters, 455 (2002) (“Sepp”)
`Excerpts from the deposition transcript of Darren Link, Ph.D.,
`Case No. 15-152-RGA (D. Del.), dated May 2, 2017
`Reel/Frame 030215/0021, Patent Assignment from Andrew
`Griffiths to Medical Research Council, dated 4/15/2014
`Reel/Frame 030214/0993, Patent Assignment from Darren Link,
`Keunho Ahn, David Weitz, and Jerome Bibette to President and
`Fellows of Harvard College, dated 4/15/2013
`Reel/Frame 046469/0108, Patent Assignment from Medical
`Research Council to United Kingdom Research and Innovation,
`dated 7/2/2018
`U.S. Patent Application Pub. No. 2005/0272159 (“Ismagilov-
`159”)
`Complaint, Bio-Rad Laboratories, Inc. v. 10X Genomics, Inc.,
`No. 1:19-cv-12533-WGY (D. Mass., Dec. 18, 2019) (ECF No. 1)
`U.S. Patent No. 7,041,481 (“Anderson-481”)
`U.S. Reissued Patent No. 41,780 (“Anderson-780”)
`
`vi
`
`

`

`Ex. No.
`1020
`1021
`1022
`1023
`
`1024
`1025
`1026
`1027
`
`1028
`1029
`1030
`
`1031
`
`1032
`
`1033
`
`1034
`
`Case No. IPR2020-01180
`U.S. Patent No. 8,871,444
`
`Description
`U.S. Patent Application Pub. No. 2005/0130173 (“Leamon-173”)
`U.S. Provisional Patent Application No. 60/446,798 (“Lee-798”)
`U.S. Patent No. 7,595,195 (“Lee-195”)
`Joint Claim Construction Statement, Bio-Rad Laboratories, Inc.
`v. 10X Genomics, Inc., No. 1:19-cv-12533-WGY (D. Mass.
`March 12, 2020) (ECF No. 82)
`Intentionally Omitted
`Excerpts from Trial Transcript, Bio-Rad Laboratories, Inc. v. 10X
`Genomics, Inc., No. 15-152-RGA (D. Del. Nov. 5-9, 2018)
`Excerpts from B. Alberts, et al., Molecular Biology of the Cell
`(4th ed. 2002) (“Alberts”)
`Randall K. Saiki, et al., Primer-Directed Enzymatic Amplification
`of DNA with a Thermostable DNA Polymerase, 239 Science 487
`(Jan. 29, 1988)
`Jane Grimwood, et al., The DNA sequence and biology of human
`chromosome 19, 428 Nature 529 (Apr. 2004)
`J.W. Gray, et al., High-Speed Chromosome Sorting, 238 Science
`323 (Oct. 1987)
`DOE-Funded Research Wins 26 Awards, U.S. Department of
`Energy Office of Science (Oct. 12, 2004),
`https://science.osti.gov/About/Honors-and-Awards/RD-100-
`Awards/10-12-04 (last visited Apr. 27, 2020)
`Benjamin Hindson, et al., APDS: The Autonomous Pathogen
`Detection System, University of California Radiation Laboratory
`(Oct. 6, 2004), available at
`https://digital.library.unt.edu/ark:/67531/metadc1411627/m2/1/hi
`gh_res_d/15011568.pdf
`John H. Leamon, et al., A massively parallel PicoTiterplateTM
`based platform for discrete picoliter-scale polymerase chain
`reactions, 24 Electrophoresis 3769 (2003) (“Leamon-2003”)
`Excerpts from Ivo Glynne Gut, An Overview of Genotyping and
`Single Nucleotide Polymorphisms (SNP), in Molecular Analysis
`and Genome Discovery 43 (Ralph Rapley & Stuart Harbron eds.
`2004)
`The Wall Street Journal Announces Winners of Its Second Global
`Technology Innovation Awards; Winners From the U.S., Canada,
`Switzerland, Japan, Hungary, France, Nepal and the United
`Kingdom, Business Wire, Oct. 24, 2005
`
`vii
`
`

`

`Ex. No.
`1035
`
`1036
`1037
`
`1038
`
`1039
`
`1040
`
`1041
`1042
`1043
`
`1044
`
`1045
`
`Case No. IPR2020-01180
`U.S. Patent No. 8,871,444
`
`Description
`Excerpts from Public Version of Direct Witness Statement of
`Michael Metzker, Ph.D., Certain Microfluidic Systems and
`Components Thereof and Products Containing Same, Inv. No.
`337-TA-1100 (USITC Nov. 16, 2018) (redactions in the original,
`public version)
`Marcel Margulies, et al., Genome sequencing in microfabricated
`high-density picolitre reactors, 437 Nature 376 (2005)
`Excerpts from Trial Exhibit PTX0003, Bio-Rad Laboratories,
`Inc. v. 10X Genomics, Inc., No. 15-152-RGA (D. Del.): U.S.
`Patent No. 8,304,193 (“Ismagilov-193”)
`Excerpts from Trial Exhibit PTX0001, Bio-Rad Laboratories,
`Inc. v. 10X Genomics, Inc., No. 15-152-RGA (D. Del.) : U.S.
`Patent No. 7,129,091
`C. Holtze, et al., “Biocompatible surfactants for water-in-
`fluorocarbon emulsions,” Lab on a Chip Vol 8, 1632-1639 (2008)
`(Trial Exhibit DTX-0093, Bio-Rad Laboratories, Inc. v. 10X
`Genomics, Inc., No. 15-152-RGA (D. Del.))
`Bo Zheng, et al., “A Droplet-Based, Composite PDMS/Glass
`Capillary Microfluidic System for Evaluating Protein
`Crystallization Conditions by Microbatch and Vapor-Diffusion
`Methods with On-Chip X-Ray Diffraction,” Angew Chem Int Ed
`Engl. 2004 May 3; 43(19): 2508–2511.
`U.S. Patent Application Pub. No. 2002/0058332 (“Quake”)
`Intentionally Omitted
`Todd Thorsen, et al., Dynamic Pattern Formation in a Vesicle-
`Generating Microfluidic Device, 86 Physical Review Letters, no.
`18, 4163 (Apr. 30, 2001) (“Thorsen-2001”)
`L. Spencer Roach, et al., “Controlling Nonspecific Protein
`Adsorption in a Plug-Based Microfluidic System by Controlling
`Interfacial Chemistry Using Fluorous-Phase Surfactants,” Anal.
`Chem. 2005, 77, 785-796 (Trial Exhibit DTX-0286, Bio-Rad
`Laboratories, Inc. v. 10X Genomics, Inc., No. 15-152-RGA (D.
`Del.))
`Jacques Leng & Jean-Baptiste Salmon, “Microfluidic
`crystallization,” Lab Chip, 2009, 9, 24–34 (Trial Exhibit PTX535,
`Bio-Rad Laboratories, Inc. v. 10X Genomics, Inc., No. 15-152-
`RGA (D. Del.))
`
`viii
`
`

`

`Ex. No.
`1046
`
`1047
`
`1048
`
`1049
`
`1050
`
`1051
`1052
`
`1053
`
`1054
`1055
`1056
`1057
`1058
`1059
`1060
`1061
`
`
`Case No. IPR2020-01180
`U.S. Patent No. 8,871,444
`
`Description
`David N. Breslauer, et al., “Microfluidics-based systems
`biology,” Mol. BioSyst., 2006, 2, 97-112 (Trial Exhibit PTX536,
`Bio-Rad Laboratories, Inc. v. 10X Genomics, Inc., No. 15-152-
`RGA (D. Del.)) (“Breslauer”)
`Ansgar Huebner, et al., “Microdroplets: A sea of applications?,”
`Lab Chip, 2008, 8, 1244–1254 (Trial Exhibit PTX989, Bio-Rad
`Laboratories, Inc. v. 10X Genomics, Inc., No. 15-152-RGA (D.
`Del.)) (“Huebner”)
`Excerpts from Dr. Samuel Sia’s Rebuttal Slides from trial in Bio-
`Rad Laboratories, Inc. v. 10X Genomics, Inc., No. 15-152-RGA
`(D. Del.)
`Florian Pfender & Günter M. Ziegler, Kissing Numbers, Sphere
`Packings, and Some Unexpected Proofs, Notices of the AMS 873
`(Sept. 2004)
`G.T. Hirons, et al., “TOTO and YOYO: New Very Bright
`Fluorochromes for DNA Content Analyses by Flow Cytometry,”
`Cytometry 15:129-140 (1994)
`Christian A. Heid, et al., “Real Time Quantitative PCR,” Genome
`Methods, Vol. 6, 986-994 (1996)
`US 8,871,444 Infringement Analysis, Bio-Rad Laboratories,
`Inc.’s Amended Infringement Claim Chart, Bio-Rad
`Laboratories, Inc. v. 10X Genomics, Inc., No. 1:19-cv-12533-
`WGY (D. Mass. Feb. 18, 2020)
`U.S. Patent Application Pub. No. 2002/0058332 (Trial Exhibit
`DTX-0013, Bio-Rad Laboratories, Inc. v. 10X Genomics, Inc.,
`No. 15-152-RGA (D. Del.)) (“Quake”)
`Intentionally Omitted
`R. Jerrold Fulton, et al., Advanced multiplexed analysis with the
`FlowMetrixTM system, 43 Clinical Chemistry, no. 9, 1749 (1997)
`Intentionally Omitted
`Intentionally Omitted
`Intentionally Omitted
`Intentionally Omitted
`U.S. Provisional Patent Application No. 60/497,985 (“Leamon-
`985”)
`Abraham Lee’s Biography, Biomolecular Microsystems and
`Nano Transducers, BioMiNT Lab,
`http://biomint.eng.uci.edu/abelee.html (last visited June 11, 2020)
`
`ix
`
`

`

`Ex. No.
`1062
`
`1063
`1064
`1065
`1066
`
`1067
`1068
`1069
`
`1070
`
`1071
`
`1072
`1073
`1074
`
`1075
`1076
`
`Case No. IPR2020-01180
`U.S. Patent No. 8,871,444
`
`Description
`Abraham Lee’s Biography, Select Biosciences,
`https://selectbiosciences.com/conferences/biographies.aspx?conf=
`loacwc2015&speaker=810757 (last visited June 12, 2020)
`U.S. Patent Application Pub. No. 2004/0068019
`International Publication No. WO2004/091763A2
`U.S. Patent No. 6,506,609
`Yung-Chieh Tan, et al., Microfluidic Liposome Generation from
`Monodisperse Droplet Emulsion-Towards the Realization of
`Artificial Cells, Summer Bioengineering Conference (2003)
`Charles N. Baroud & Hervé Willaime, Multiphase flows in
`microfluidics, 5 Physique 547 (2004) (“Baroud”)
`E. Grasland-Mongrain, et al., Droplet coalescence in microfluidic
`devices (Jan.-July 2003) (“Grasland-Mongrain”)
`Todd M. Squires & Stephen R. Quake, , “Microfluidics: Fluid
`physics at the nanoliter scale,” Reviews of Modern Physics,
`Volume 77, 977-1026 (July 2005)
`Exhibit 2 to Complaint, Bio-Rad Laboratories, Inc. v. 10X
`Genomics, Inc., No. 1:19-cv-12533-WGY (D. Mass., Dec. 18,
`2019) (ECF No. 1)
`Grant Thornton: Bio-Rad Laboratories, Inc. - Fair Value Analysis
`of Certain Identified Intangible Assets and Liabilities of
`RainDance Technologies, Inc. acquired by Bio-Rad Laboratories,
`Inc. as of February 16, 2017, Report Date: January 8, 2018 (Trial
`Exhibit DTX-1481, Bio-Rad Laboratories, Inc. v. 10X Genomics,
`Inc., No. 15-152-RGA (D. Del.))
`U.S. Patent No. 7,323,305 File History
`U.S. Patent Provisional Application No. 60/465,071 (“Leamon-
`071”)
`Jie Ding, et al., Scheduling of Microfluidic Operations for
`Reconfigurable Two-Dimensional Electrowetting Arrays, 20
`IEEE Transactions on Computer-Aided Design of Integrated
`Circuits and Systems, no. 12, 1463 (Dec. 2001)
`U.S. Patent No. 7,595,195 File History (“Lee-FH”)
`POISSON.DIST function, Microsoft Support,
`https://support.microsoft.com/en-us/office/poisson-dist-function-
`8fe148ff-39a2-46cb-abf3-7772695d9636 (last visited June 19,
`2020)
`
`x
`
`

`

`Ex. No.
`1077
`
`1078
`
`1079
`1080
`1081
`1082
`1083
`
`1084
`
`1085
`
`1086
`
`1087
`
`1088
`
`1089
`
`Case No. IPR2020-01180
`U.S. Patent No. 8,871,444
`
`Description
`Abraham Lee & Richard B. Fair, Special Issue on Biomedical
`Applications for MEMS and Microfluidics, 92 Proceedings of the
`IEEE, no. 1, 3 (Jan. 2004)
`Bio-Rad Laboratories, Inc.’s First Supplemental Responses and
`Objections to 10X Genomics, Inc.’s First Set of Interrogatories
`(No. 1), Bio-Rad Laboratories, Inc. v. 10X Genomics, Inc., No.
`1:19-cv-12533-WGY (D. Mass., Mar. 26, 2020)
`Declaration of Robert Gerrity in Support of Petitioner's Motion
`for Pro Hac Vice Admission
`Declaration of Azra Hadzimehmedovic in Support of Petitioner's
`Motion for Pro Hac Vice Admission
`Declaration of Matthew D. Powers in Support of Petitioner's
`Motion for Pro Hac Vice Admission
`November 10, 2020 email from Eric W. Hawthorne on behalf of
`the Patent Trial and Appeal Board inviting reply to POPR.
`Bio-Rad Laboratories, Inc. v. 10X Genomics, Inc., No. 1:19-cv-
`12533-WGY (D. Mass., Oct. 20, 2020) (ECF No. 39) –
`January 29, 2020 Pretrial Scheduling Order
`Bio-Rad Laboratories, Inc. v. 10X Genomics, Inc., No. 1:19-cv-
`12533-WGY (D. Mass., Jan. 29, 2020) (ECF No. 49) –
`February 4, 2020 Electronic Order Re: ECF No. 39 Pretrial
`Scheduling Order
`Bio-Rad Laboratories, Inc. v. 10X Genomics, Inc., No. 1:19-cv-
`12533-WGY (D. Mass., Oct. 20, 2020) (ECF No. 186) –
`October 20, 2020 Electronic Order Re: Sealed Order Resolving
`Discovery Disputes, Ordering Additional Fact Discovery, And
`Ordering A New Discovery Cut Off Date
`United States District Court for the District of Massachusetts
`General Order 20-2 dated March 12, 2020 – Order Concerning
`Jury Trials and Other Proceedings
`United States District Court for the District of Massachusetts
`General Order 20-13 dated March 30, 2020 – Supplemental Order
`Concerning Jury Trials and Related Proceedings
`United States District Court for the District of Massachusetts
`General Order 20-21 dated May 27, 2020 – Second Supplemental
`Order Concerning Jury Trials and Related Proceedings
`Declaration of Katrina C. Rogachevsky in Support of Petitioner's
`Reply to Patent Owner's Preliminary Response
`
`xi
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`

`

`Case No. IPR2020-01180
`U.S. Patent No. 8,871,444
`
`Description
`COVID-19: Resuming Jury Trials in Massachusetts, by Felicia H.
`Ellsworth and Andrew Scott Dulberg of Wilmer Hale, Sept. 24,
`2020, available at:
`https://www.wilmerhale.com/en/insights/client-alerts/20200924-
`covid-19-resuming-jury-trials-in-massachusetts
`Administrative Office of the U.S. Courts Federal Court
`Management Statistics - Excerpts from the report for the year
`ending March 31, 2020, available at:
`
`https://www.uscourts.gov/sites/default/files/data_tables/fcms_na_
`distprofile0331.2020.pdf (report for the year ending March 31,
`2020),
`
`https://www.uscourts.gov/sites/default/files/explanation_of_select
`ed_terms_december_2019_0.pdf (explanation of Selected Terms),
`and
`
`https://www.uscourts.gov/statistics-reports/analysis-
`reports/federal-court-management-statistics (additional reports)
`Summary of Active Cases on the Docket of the Honorable Judge
`William G. Young of the United States District Court for the
`District of Massachusetts ordered ready for trial by April 2021
`(based on PACER docket information)
`Bio-Rad Laboratories, Inc. v. 10X Genomics, Inc., No. 1:19-cv-
`12533-WGY (D. Mass., Oct. 23, 2020) (ECF No. 187) –
`October 23, 2020 Memorandum and Order Regarding Claim
`Construction
`
`Ex. No.
`1090
`
`1091
`
`1092
`
`1093
`
`
`
`
`xii
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`

`

`Case No. IPR2020-01180
`U.S. Patent No. 8,871,444
`
`Petitioner 10X Genomics (“10X”) submits this reply pursuant to the Board’s
`
`authorization. Ex. 1082 (Board’s 11/10/2020 Email). The POPR urges denial of
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`institution based on inaccurate statements about the status and schedule of the district
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`court case (“MA Case”) and a misapplication of the Fintiv factors. Paper 11
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`(“POPR”) at 11-24. No trial date is set in the MA Case, fact discovery is ongoing,
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`and the Petition establishes invalidity of four claims not at issue in the MA Case.
`
`I.
`
`THE FINTIV FACTORS FAVOR INSTITUTION.
`Because Fintiv factors 2, 3, 4, and 6 favor institution (weighing against
`
`discretionary denial) and factors 1 and 5 are neutral, discretionary denial is improper.
`
`A.
`Factor 1 Is Neutral Where No Stay Motion Has Been Filed.
`This factor is neutral because no motion to stay has been filed and the District
`
`Court has not indicated how it would rule. Sand Revolution II, LLC v. Continental
`
`Intermodal Group – Trucking LLC, IPR2019-01393, Paper 24 at 7 (PTAB June 16,
`
`2020) (informative) (“Sand Revolution”).
`
`B.
`
`Because No Trial Date Is Set And No Schedule Is In Place,
`Factor 2 Favors Institution.
`No trial date is set in the MA Case. Fact discovery is ongoing, expert
`
`discovery has not begun, and there is currently no scheduling order in place for the
`
`completion of fact discovery, let alone expert discovery, dispositive motions, and
`
`pretrial preparations. Prior to October 20, 2020, the District Court issued multiple,
`
`differing orders ordering aspects of the MA Case (which involves two patents
`
`
`
`1
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`

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`Case No. IPR2020-01180
`U.S. Patent No. 8,871,444
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`asserted by Bio-Rad & Harvard against 10X, two patents asserted by 10X & Harvard
`
`against Bio-Rad, antitrust counterclaims asserted by 10X against Bio-Rad, and
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`inequitable conduct counterclaims asserted by 10X against Bio-Rad, among other
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`issues) to be “ready for trial by” multiple dates including April 5, 2021. Exs. 2004,
`
`1083 at 22-23, 1084.
`
`On October 20, 2020 (after the POPR), the District Court issued an order
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`resolving 34 discovery disputes, ordering substantial additional fact discovery
`
`including the searching, review, and production of at least 150,000 emails and the
`
`deposition of Bio-Rad’s CEO, and ordering Bio-Rad and 10X to “discuss and agree
`
`upon a new discovery cut off date” (vacating the proposed (but never ordered)
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`pretrial schedule relied on in the POPR). Ex. 1085 (ECF No. 186). The parties also
`
`have not agreed on dates to propose to the Court, and fact discovery is ongoing with
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`very little of the additional Court-ordered discovery having been completed.
`
`The District Court has not issued any new scheduling order following its
`
`October 20 Order, nor has the Court set a specific trial date. Even the previously set
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`“ready for trial by” dates are directly analogous to the “(or as available)” trial dates
`
`found to “indicate[] a continuing degree of recognized uncertainty of the court’s
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`schedule by the court” and to favor institution under factor 2 by the Board in the
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`informative Sand Revolution case. IPR2019-01393, Paper 24 at 8-9.
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`Nor is the District Court likely to set a specific date for the jury trial of the
`
`
`
`2
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`

`

`Case No. IPR2020-01180
`U.S. Patent No. 8,871,444
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`MA Case any time soon. The District of Massachusetts continued all jury trials
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`multiple times due to the COVID-19 Pandemic beginning March 12, 2020, and it
`
`did not restart any jury trials until late September 2020—six months later, and then
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`only criminal jury trials, not civil trials. Exs. 1086, 1087, 1088 (D. Mass. General
`
`Orders). At an October 29, 2020 informational session about the District’s plans for
`
`resuming jury trials, Chief Judge Saylor provided the following information which
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`makes it clear that the MA Case will not proceed to trial by the pre-pandemic “ready
`
`for trial by” date and makes it unlikely that it will go to trial before 2022:
`
`•the district has a sizeable backlog of trials due to the six months of trials
`continued from March-September;
`•scheduling of all jury trials will be centralized, not set by individual judges;
`•conducting criminal trials will be the priority;
`•only single-defendant criminal trials are resuming on September 29, 2020,
`and as of October 29, 2020 only four trials had been conducted;
`•all civil trials remain postponed and the first rescheduled civil jury trial is not
`likely to be until January 2021;
`•older civil cases will get priority over more recently filed civil cases;
`•complex civil cases are likely to be scheduled even later than simpler cases;
`See Ex. 1089 (Rogachevsky Decl.); Ex. 1090 (Article Re: D. Mass. Resumption of
`
`Trials). Even if the District Court resumed civil and criminal trials at its prior, pre-
`
`pandemic rates, a six-month backlog of trials would delay any April 2021 anticipated
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`trial until October 2021. Because civil trials are not expected to resume until at least
`
`January 2021, the backlog for civil trials will be ten months and push any April 2021
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`
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`3
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`

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`Case No. IPR2020-01180
`U.S. Patent No. 8,871,444
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`anticipated trial date until at least February 2022.
`
`Moreover, the District is also only conducting a limited number of trials at a
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`time due to ongoing pandemic concerns and completed only four trials in the month
`
`of October. For the year ending March 31, 2020, the District completed 156 trials,
`
`averaging 13 per month. Ex. 1091 (AOC 3/31/2020 Statistics), 2. Thus, the District’s
`
`resumed trial schedule is not even keeping pace with clearing the existing backlog,
`
`making complex civil trials (such as the MA Case) unlikely to go to trial until
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`sometime even later (and perhaps much later) than February 2022.
`
`In contrast to the District Court, “even in the extraordinary circumstances” of
`
`the ongoing pandemic, “the Board continues to be fully operational.” Sand
`
`Revolution, 9. This Petition was filed June 24, 2020 and, if instituted, a final written
`
`decision (“FWD”) from the Board could be expected by November or December
`
`2021 (and no later than January 16, 2022). Paper 8.
`
`This factor favors institution. In Sand Revolution, a trial date was set seven
`
`months before the FWD date and the Board held that factor 2 favored institution
`
`because the date was qualified as “(or as available)” and deemed uncertain. Sand
`
`Revolution, 8-10. The POPR’s reliance on the April 2021 “ready for trial by” date
`
`(to the extent PO argues that date is not mooted by the Court’s October 20 order) is
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`directly analogous. Judge Young, presiding over the MA Case, has at least 20 other
`
`jury cases ordered “ready for trial” through March 2021 (including at least 10
`
`
`
`4
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`

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`Case No. IPR2020-01180
`U.S. Patent No. 8,871,444
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`criminal cases) and 4 other civil cases ordered “ready for trial” on the same April 5,
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`2021 date previously ordered for the MA Case. Ex. 1092. The “ready … by” qualifier
`
`combined with the District Court’s backlog of criminal and more senior civil jury
`
`trials which will proceed before the MA Case make that date so uncertain as to weigh
`
`against discretionary denial in view of the Board’s ability to operate fully during the
`
`pandemic and to provide a timely evaluation of the invalidity of the Challenged
`
`Claims. Id.; see Asetek Danmark A/S v. Coolit Systems, Inc., IPR2020-00825, Paper
`
`12 at 11-12 (Oct. 13, 2020) (factor 2 favors institution where trial date not set,
`
`discovery open, and no dispositive motions filed); Google LLC v. Uniloc 2017 LLC,
`
`IPR2020-00463, Paper 13 at 10-11 (PTAB Aug. 13, 2020) (favors institution where
`
`transferee court had yet to set a schedule); Google LLC v. Uniloc 2017 LLC,
`
`IPR2020-00441, Paper 13 at 35 (PTAB July 17, 2020) (“The fact that no trial date
`
`has been set weighs significantly against exercising our discretion to deny...”);
`
`Shenzhen Carku Tech. Co., Ltd. v. The Noco Company, IPR2020-00944, Paper 20 at
`
`58-60 (PTAB Nov. 12, 2020) (“strongly” favors institution where “we do not see
`
`that a trial will likely occur in … any related district court case” before the FWD);
`
`see also Apple Inc. v. Parus Holdings, Inc., IPR2020-00686, Paper 9 at 12-13 (PTAB
`
`Sept. 23, 2020) (factor 2 is neutral where a trial date is set but uncertain in view of
`
`COVID-19 delays) and Google LLC v. Parus Holdings, Inc., IPR2020-00846,
`
`Paper 9 at 13-14 (PTAB Oct. 21, 2020) (same).
`
`
`
`5
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`

`

`Case No. IPR2020-01180
`U.S. Patent No. 8,871,444
`
`C. Because No Substantial Investment In Deciding Invalidity Issues
`Has Been Made In District Court, Factor 3 Favors Institution.
`The District Court has not invested substantial resources in invalidity issues
`
`relevant to this Petition, nor will it have by the Institution Decision date. Fact
`
`discovery is ongoing and there is no schedule for expert discovery or dispositive
`
`motions and, thus, no expert reports have been prepared nor has the District Court
`
`evaluated any invalidity-related motions. The claim construction order addressed
`
`only two terms from the 444 patent disputed by 10X and Bio-Rad. Ex. 1093 at 12-
`
`13. These are the same two terms which the Petition explains do not impact the
`
`outcome of this proceeding, undisputed by the POPR. Paper 2 at 16-17; POPR at 5.
`
`This factor favors institution. Asetek, at 12-13 (favors institution where claim
`
`construction complete but “There is no evidence … that the district court has
`
`substantively considered any of the unpatentability arguments set forth in the
`
`Petition.”); Nvidia Corp. v. Invensas Corp., IPR2020-00603, Paper 11 at 21-22
`
`(PTAB Sept. 3, 2020) (favors institution where contentions exchanged but discovery
`
`not complete); see also Kavo Dental Techs., LLC v. Osseo Imaging, LLC, IPR2020-
`
`00672, Paper 10 at 10 (PTAB June 10, 2020) (favors institution where “[PO] has not
`
`sufficiently shown how the investment relates to the issues before us.”).
`
`D.
`
`Four Claims Challenged In The Petition Will Not Be C