From:
`Sent:
`To:
`Cc:
`
`Subject:
`
`R. Parrish Freeman <PFreeman@mabr.com>
`Friday, November 29, 2019 4:41 PM
`Precedential_Opinion_Panel_Request
`Brent Johnson; Abigail Alvey; Haas, Bruce C.; Minion, Daniel J.; Oliver, Justin J.; Tyminski,
`James R.; Adams, Katherine E.
`Precedential Opinion Panel Request - PGR2018-00062 [MB-CLIENTFILES.FID362906]
`
`To the Honorable Patent Trial and Appeal Board:
`
`Patent owner Antecip Bioventures II LLC respectfully requests rehearing by the Precedential
`Opinion Panel (POP) of the Final Written Decision entered by the Board panel in PGR2018-
`00062 on October 29, 2019. (Paper 32.) Patent Owner has also timely filed a Request for
`Rehearing with the Board panel assigned to the matter. (Paper 33.)
`
`The Board panel found all claims of U.S. Patent No. 9,707,245 (’245 patent) unpatentable based
`on an alleged prior art printed publication called Varenna. Beyond the document proffered as
`Varenna itself, the Petition did not include any evidence or argument that Varenna was
`disseminated or otherwise made available to the extent that persons interested and ordinarily
`skilled in the subject matter or art, exercising reasonable diligence, can locate it. The Reply
`included Petitioner’s only such evidence, a witness declaration. In the Final Written Decision,
`the Board panel found that “indicia” on the face of the purported reference was sufficient to
`establish public accessibility, and that the witness declaration first submitted with the Reply
`“bolstered” that conclusion. The Board panel also took official notice regarding the publisher of
`the Varenna reference, and of the journal in which it allegedly appeared.
`
`Based on my professional judgment, I believe the Board panel decision is contrary to at least
`the following decisions of the Supreme Court of the United States or the United States Court of
`Appeals for the Federal Circuit,
`
`holding that a petitioner in an AIA post-issuance review proceeding must make its case in
`the petition and attached exhibits, and cannot repair a deficient showing through its reply:
`
`SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348 (2018);
`In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364 (Fed. Cir. 2016);
`Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359 (Fed. Cir.
`2016);
`Ariosa Diagnostics v. Verinata Health, Inc., 805 F.3d 1359 (Fed. Cir. 2015); and
`Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375 (Fed. Cir. 2015);
`and
`
`1
`
`PGR2018-00062
`Ex. 3001 p. 1 of 3
`
`

`

`holding that proof of public accessibility must consist of evidence, brought forth by the
`one who wishes to establish a reference as a “printed publication,” that the reference was
`disseminated or otherwise made available to the extent that persons interested and
`ordinarily skilled in the subject matter or art, exercising reasonable diligence, can locate
`it:
`
`Acceleration Bay, LLC v. Activision Blizzard Inc., 908 F.3d 765 (Fed. Cir. 2018);
`Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331 (Fed. Cir. 2016);
`In re Lister, 583 F.3d 1307 (Fed. Cir. 2009); and
`In re Wyer, 655 F.2d 221 (C.C.P.A. 1981).
`
`Based on my professional judgment, I believe this case requires an answer to one or more
`precedent-setting questions of exceptional importance:
`
`1. Can proof of the public accessibility of a reference be established by that reference
`standing alone, based solely on the indicia appearing on the face of the reference, given
`the ease with which documents having the appearance of legitimacy can be fabricated?
`2. Can the Board supplement the record with “official notice” to aid a showing of public
`accessibility, and can it do so without providing notice to the patentee and an opportunity
`to be heard?
`
`The POP is presently considering a question related to Question 1 in another proceeding, that is:
`“What is required for a petitioner to establish that an asserted reference qualifies as ‘printed
`publication’ at the institution stage?”
`
`Hulu, LLC v. Sound View Innovations, LLC, Case IPR2018-01039, slip. op. at 2 (PTAB
`Apr. 3, 2019) (Paper 15) (emphasis added).
`
`Patent Owner is available to provide additional briefing or answer any questions the Board may
`have.
`
`Sincerely,
`
`/s/ R. Parrish Freeman
`R. Parrish Freeman
`Counsel for Patent Owner
`Antecip Bioventures II LLC
`R. Parrish Freeman
`Registered Patent Attorney
`tel (435) 575-1419 | fax (435) 252-1361
`email pfreeman@mabr.com
`
`PGR2018-00062
`Ex. 3001 p. 2 of 3
`
`2
`
`

`

`Maschoff Brennan
`1389 Center Drive, Suite 300
`Park City, Utah 84098
`w w w . m a s c h o f f b r e n n a n . c o m
`
`3
`
`PGR2018-00062
`Ex. 3001 p. 3 of 3
`
`