Sequenom, Inc.v.the Board of Trustees of the Leland Stanford Junior University

Patent Trial and Appeal Board

Jul 16, 2014

12696509 (P.T.A.B. Jul. 16, 2014)

Trials@uspto.gov Paper No. 11
Tel: 571-272-7822 Entered: July 16, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________
SEQUENOM, INC.
Petitioner
v.
THE BOARD OF TRUSTEES OF
THE LELAND STANFORD JUNIOR UNIVERSITY
Patent Owner
_______________

Case IPR2014-00337
Patent 8,195,415 B2
_______________

Before LORA M. GREEN, FRANCISCO C. PRATS, and SCOTT E. KAMHOLZ,
Administrative Patent Judges.

PRATS, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
37 C.F.R. § 42.108

Case IPR2014-00337
Patent 8,195,415 B2

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I. INTRODUCTION
A. Statement of the Case
Sequenom, Inc. (“Petitioner”) filed a corrected Petition (Paper 5, “Pet.”)
requesting inter partes review of all claims, claims 1–17, of U.S. Patent No.
8,195,415 B2 (Ex. 1001, “the ’415 patent”). The Board of Trustees of the Leland
Stanford Junior University (“Patent Owner”) did not file a Preliminary Response.
We have jurisdiction under 35 U.S.C. § 314.
The standard for instituting an inter partes review is set forth in 35 U.S.C.
§ 314(a), which states:
THRESHOLD.— The Director may not authorize an inter partes
review to be instituted unless the Director determines that the
information presented in the petition filed under section 311 and any
response filed under section 313 shows that there is a reasonable
likelihood that the petitioner would prevail with respect to at least 1 of
the claims challenged in the petition.

For the reasons below, we conclude that Petitioner has not established a
reasonable likelihood that it would prevail in showing the unpatentability of at
least one claim of the ’415 patent. Accordingly, we decline to institute an inter
partes review. As a result, we also dismiss Petitioner’s Motion to join this
proceeding with IPR2013-00390 (Paper 2) as moot.
B. Related Proceedings
We instituted trial for claims 1–17 of the ’415 patent in IPR2013-00390.
Sequenom, Inc. v. Stanford Univ., Case IPR2013-00390 (PTAB Dec. 9, 2013)
(Paper 7). The ’415 patent also is involved in Interference No. 105,922, declared
on May 3, 2013. Fan v. Lo, Interference No. 105,922 (PTAB May 3, 2013) (Paper
1). The ’415 patent also is asserted in a co-pending district court case, Verinata
Health, Inc. v. Sequenom, Inc., Case No. 3:12-cv-00865-SI (N.D. Cal.). Pet. 3–4.
Case IPR2014-00337
Patent 8,195,415 B2

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II. ANALYSIS
Petitioner proposes twelve grounds of unpatentability against claims 1–17 of
the ’415 patent, all based on obviousness under 35 U.S.C. § 103(a). Pet. 5–6.
Every proposed ground of unpatentability advanced by Petitioner relies on Lo I.
1

Id. Petitioner contends that Lo I “is a provisional U.S. patent application that is
prior art to the ’415 patent under §§ 102(e)/103(a) as of its filing date for all it
discloses.” Id. at 2 (citing Ex parte Yamaguchi, 88 USPQ2d 1606, 1612–1614
(BPAI 2008)).
2

We are not persuaded. Two types of documents may be relied upon under
§ 102(e) to show that claims are unpatentable, “(1) an application for patent,
published under section 122(b), . . . or (2) a patent granted on an application for
patent.” 35 U.S.C. § 102(e). As a provisional application, Lo I is not a patent.
Likewise, as a provisional application, Lo I is not “an application for patent,
published under section 122(b).” To the contrary, § 122(b) states expressly that
“[a]n application shall not be published if that application is . . . (iii) a provisional
application filed under section 111(b) of this title.” 35 U.S.C. § 122(b)(2)(iii).
Accordingly, because Lo I is undisputedly a provisional application filed under
§ 111(b), Lo I is not “an application for patent, published under section 122(b),”
and therefore, does not qualify as prior art under § 102(e).

1
Lo et al., U.S. Provisional Patent Application 60/951,438 (filed July 23, 2007)
(Ex. 1003).
2
The application which issued as the ’415 patent, serial number 12/696,509, is a
divisional application of serial number 12/560,708, which was filed on September
16, 2009. Ex. 1001, 1. Accordingly, the versions of §§ 102(e) and 103(a) in effect
before the Leahy-Smith America Invents Act (AIA) apply to the claims of the ’415
patent. See AIA, Pub. L. No. 112-29, § 3(n)(1), 125 Stat. 293 (2011).
Case IPR2014-00337
Patent 8,195,415 B2

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The Board’s decision in Ex parte Yamaguchi, 88 USPQ2d 1606 (BPAI
2008) does not persuade us to the contrary. In that case, the Board held that, under
§ 102(e)(2), a patent that claimed the benefit of an earlier filed provisional
application qualified as prior art, as of the filing date of the provisional application,
for all commonly disclosed subject matter. Ex parte Yamaguchi, 88 USPQ2d at
1612. Similarly, in In re Giacomini, 612 F.3d 1380, 1384–85 (Fed. Cir. 2010), the
Federal Circuit held that a patent applied in a rejection under § 102(e)(2) was prior
art as of the filing date of its corresponding provisional application for commonly
disclosed subject matter. Thus, unlike the situation presently before us, the
references at issue in Yamaguchi and Giacomini were patents, one of the two types
of documents that qualify as prior art under § 102(e). In contrast, as discussed
above, a provisional application does not qualify as prior art under either
§ 102(e)(1) or § 102(e)(2).
In sum, because Lo I is neither a patent nor an application for patent
published under 35 U.S.C. § 122(b), we conclude that Lo I does not qualify under
35 U.S.C. § 102(e) as prior art to the claims of the ’415 patent. Every ground of
unpatentability advanced by Petitioner in the Petition under consideration herein
relies on Lo I. Pet. 5-6. We are not persuaded, therefore, that Petitioner has shown
a reasonable likelihood of prevailing on any of its challenges to the ’415 patent
under consideration herein.
III. CONCLUSION
Upon consideration of the Petition, we are not persuaded, for the reasons
discussed, that there is a reasonable likelihood that Petitioner would prevail on at
least one alleged ground of unpatentability advanced in the Petition with respect to
the claims of the ’415 patent.
Case IPR2014-00337
Patent 8,195,415 B2

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IV. ORDER
It is
ORDERED that the Petition is denied and no trial is instituted;
FURTHER ORDERED that Petitioner’s motion for joinder is dismissed as
moot.

Case IPR2014-00337
Patent 8,195,415 B2

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For PETITIONER:
Michael J. Wise
Patrick D. Morris, Ph.D.
PERKINS COIE LLP
mwise@perkinscoie.com
pmorris@perkinscoie.com

For PATENT OWNER:
R. Danny Huntington
Sharon E. Crane, Ph.D.
ROTHWELL, FIGG, ERNST & MANBECK, P.C.
dhuntington@rfem.com
scrane@rfem.com