UNITED STATES PATENT AND TRADEMARK OFFICE
`
`_________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________
`
`DEXCOM, INC.,
`Petitioner,
`
`v.
`
`ABBOTT DIABETES CARE INC.,
`Patent Owner.
`
`Case No. IPR2023-01397
`U.S. Patent No. 11,266,335
`
`
`_________________
`
`PETITIONER’S EXPLANATION OF
`MATERIAL DIFFERENCES BETWEEN PETITIONS
`
`
`
`
`
`_________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`_________________
`
`DEXCOM, INC.,
`Petitioner,
`
`v.
`
`ABBOTT DIABETES CARE INC.,
`Patent Owner.
`
`Case No. IPR2023-01397
`U.S. Patent No. 11,266,335
`
`
`_________________
`
`PETITIONER’S EXPLANATION OF
`MATERIAL DIFFERENCES BETWEEN PETITIONS
`
`
`
`
`
`IPR2023-01397
`U.S. Patent No. 11,266,335
`
`Petitioner concurrently files two petitions for inter partes review of U.S.
`
`Patent No. 11,266,335 (the ’335 patent). Petition 1 (IPR2023-01396) is based on
`
`prior art publications that qualify as prior art even if, arguendo, the claims were
`
`entitled to claim priority to the earliest March 2010 provisional, while Petition 2
`
`(IPR2023-01397) is based on one later publication (Thomas, EX1109) that qualifies
`
`as prior art unless Patent Owner antedates it by showing earlier conception and
`
`diligent reduction to practice (which Petitioner contends Patent Owner will be
`
`unable to show). Pursuant to the November 2019 Consolidated Trial Practice Guide
`
`(“TPG”), Petitioner submits this explanation of the material differences between
`
`these two petitions and why both should be instituted. See TPG, 59-60.
`
`Petitioner ranks Petition 1 first.
`
`I.
`
`TWO PETITIONS ARE NEEDED TO
`ADDRESS AN ANTICIPATED PRIOR ART STATUS DISPUTE
`
`Each petition challenges the same claims of the ’335 patent: independent
`
`claim 1 and dependent claims 2–4, 8–9, and 11–27. Petition 1 (“the Stafford-based
`
`petition”) relies on Stafford (EX1009), along with Raymond (EX1010) and four
`
`additional references, to render obvious all challenged claims. Petition 2 (“the
`
`Thomas-based petition”) relies on Thomas (EX1109), along with Raymond
`
`(EX1110) and just one other reference, to render obvious all challenged claims.
`
`
`
`1
`
`
`
`IPR2023-01397
`U.S. Patent No. 11,266,335
`
`Two petitions are necessary because Patent Owner will likely dispute the prior
`
`art status of the Thomas reference presented as Exhibit EX1109. Petitioner believes
`
`Patent Owner will dispute Thomas’s prior art status because during prosecution,
`
`Patent Owner disputed the prior art status of a different reference having a Pre-AIA
`
`§ 102(a) publication date seven days earlier than Thomas’s. Specifically, during
`
`prosecution of the ’335 patent, Applicants swore behind U.S. Patent Publication No.
`
`2010/0198034 (“Thomas-034”) to disqualify it as prior art under 37 CFR § 1.131.
`
`Because Thomas-034’s § 102(a) publication date is seven days earlier than
`
`Thomas’s publication date (August 5, 2010 vs. August 12, 2010), Patent Owner will
`
`likely seek to disqualify Thomas as prior art by attempting to swear behind it.
`
`This kind of dispute (about prior art status) is precisely the kind of dispute that
`
`the TPG and Board have said warrants two petitions. See TPG, 59–61; Medtronic,
`
`Inc. v. Teleflex Innovations S.A.R.L., IPR2020-00136, Paper 20 at 39 (PTAB June
`
`26, 2020) (a dispute about prior art is “precisely one of the circumstances … in which
`
`more than one petition may be necessary”); see also 10X Genomics, Inc. v. Bio-Rad
`
`Labs., Inc., IPR2020-00088, Paper 8 at 47 (PTAB Apr. 27, 2020) (noting that more
`
`than one petition may be necessary where there is a priority date dispute).
`
`II. THE BOARD SHOULD INSTITUTE BOTH PETITIONS
`
`The Board should institute both petitions for at least four reasons.
`
`First, each petition has compelling merits. As explained in the petitions, the
`
`
`
`2
`
`
`
`IPR2023-01397
`U.S. Patent No. 11,266,335
`
`Stafford and Thomas references each discloses one of the central claimed
`
`concepts—an on body glucose monitoring unit having a glucose sensor and
`
`associated sensor electronics within an on-body unit. The main secondary references
`
`relied on in each petition—Raymond (EX1010 / EX1110) and Turner (EX1011 /
`
`EX1111)—teach inserter device details claimed by the ’335 patent, such as gripping
`
`arms that engage recesses on the periphery of the on body unit. When Stafford and
`
`Thomas are each combined with these secondary references, these combinations and
`
`the other references relied on herein render unpatentable each challenged claim.
`
`Second, instituting only the Thomas-based petition (IPR2023-01397) risks
`
`prejudicing Petitioner. Specifically, if only the Thomas-based Petition 2 is instituted
`
`and Patent Owner waits until after institution to dispute the prior art status of
`
`Thomas—and is successful in doing so—Petitioner’s meritorious Stafford-based
`
`Petition 1 would never be fully considered by the Board.
`
`Third, if Patent Owner fails to establish an earlier conception date and
`
`diligence in reducing the alleged invention to practice—as Petition 2 contends—then
`
`only three prior art references render all claims obvious because Thomas expressly
`
`teaches or discloses many features recited in the dependent claims. Petition 1, on the
`
`other hand, relies on six prior art references, in various combinations, in order to
`
`render obvious the various permutations of the depenendent claims of the ’335
`
`patent. Thus, while Petition 1 presents meritorious obviousness arguments,
`
`
`
`3
`
`
`
`IPR2023-01397
`U.S. Patent No. 11,266,335
`
`Petition 2 presents simpler and less numerous combinations.
`
`Fourth, if the Board decides to institute the Stafford-based petition, the
`
`Thomas-based petition (IPR2023-01397) adds only a minimal amount of additional
`
`work. The Thomas-based petition relies on a different primary reference but
`
`otherwise relies on two of the secondary references (Raymond and Turner) and
`
`similar principles of combination.
`
`III. DIFFERENCES BETWEEN THE PETITIONS
`
`The petitions rely on different primary references and Petition 1 relies on three
`
`additional secondary references (Say, Bickoff, and Shah) not raised / relied on in
`
`Petition 2. Differences are highlighted in the following summary table:
`
`Petition 2 (IPR2023-01397)
`Petition 1 (IPR2023-01396)
`Challenged
`§ 103 Combination Challenged
`§ 103 Combination
`Claims
`Claims
`1–4, 8–9, 11–15,
`1–4, 8–9, 11–27 Thomas+Raymond
`and 17–27
`
`Stafford+Raymond
`
`1–4, 8–9, 11–15,
`and 17–27
`
`Stafford+Raymond+
`Turner
`
`1–4, 8–9, 11–27 Thomas+Raymond+
`Turner
`
`16
`
`16
`
`16
`
`16
`
`17–18
`
`
`
`Stafford+Raymond+
`Say
`
`Stafford+Raymond+
`Say + Turner
`Stafford+Raymond+
`Bickoff
`
`Stafford+Raymond+
`Bickoff+Turner
`
`Stafford+Raymond+
`Shah
`
`4
`
`N/A
`
`N/A
`
`
`
`IPR2023-01397
`U.S. Patent No. 11,266,335
`
`17–18
`
`Stafford+Raymond+
`Shah+Turner
`
`IV. CONCLUSION
`
`The Board should institute both petitions to ensure that Patent Owner is not
`
`able to circumvent the petitions through a procedural ploy. Both petitions have
`
`compelling merits and are needed to address Patent Owner’s likely prior art dispute.
`
`If the Board elects to institute only one of the petitions, Petitioner ranks Petition 1
`
`(IPR2023-01396) first.
`
`Dated: October 6, 2023
`
`Respectfully submitted,
`
`
`By: /Andrew M. Mason /
`Andrew M. Mason, Reg. No. 64,034
`andrew.mason@klarquist.com
`KLARQUIST SPARKMAN, LLP
`One World Trade Center, Suite 1600
`121 S.W. Salmon Street
`Portland, Oregon 97204
`Tel: 503-595-5300
`Fax: 503-595-5301
`
`
`
`Counsel for Petitioner
`
`
`
`5
`
`
`
`IPR2023-01397
`Patent 11,266,335
`
`CERTIFICATE OF SERVICE
`
`The undersigned certifies that on October 6, 2023, a copy of the foregoing
`
`Petitioner’s Explanation of Material Differences Between Petitions was served
`
`by Express Mail on the correspondence addresss of record indicated in the Patent
`
`Office’s Patent Center system for U.S. Patent No. 11,266,335:
`
`One LLP – ADC
`Attn: Alana Fredericks
`23 Corporate Plaza, Suite 150
`Newport Beach, CA 92660
`
`
`
`
`
`
`
`
`
`
`By: /Andrew M. Mason /
`Andrew M. Mason, Reg. No. 64,034
`andrew.mason@klarquist.com
`KLARQUIST SPARKMAN, LLP
`One World Trade Center, Suite 1600
`121 S.W. Salmon Street
`Portland, Oregon 97204
`Tel: 503-595-5300
`Fax: 503-595-5301
`
`Counsel for Petitioner
`
`Certificate Of Service
`
`
`
`Page 1
`
`
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
