• Roche Molecular Systems Inc. v. Illumina, Inc.Institution denied
  PTAB · Oct 30, 2015 · IPR2015-01091 · APJ Lora M Green · IPR · Institution

  The Board denied joinder and denied institution on claims 1–22, citing substantially the same arguments previously presented and the petition’s belated, duplicative filing.

  RulingsInstitution decision

  • PTAB / AIA Trials › Joinder §315(c) / SAS all-or-nothingJoinder, deniedDenied

    “circumstances of each proceeding. See Unified Patents, Inc. v. Personalweb Techs., LLC and Level 3 Commc’ns, LLC, Case IPR2014-00702, slip. op. at 4 (PTAB Jan. 13, 2015) (Paper 12). In the instant proceeding, we agree with Patent Owner that joinder with IPR2014-01093 would not promote the efficient resolution of those proceedings. After carefully considering both Petitioner’s and Patent Owner’s evidence and argument, we deny Petitioner’s Motion for Joinder. As noted by Patent Owner, Roche announced the acquisition of Ariosa at least as early as December 2, 2014. Ex. 2017. And as also noted by Patent Owner, at that time, Roche was aware that “Ariosa . . . [was] embroiled in a number of patent infringement lawsuits, including with . . . Illumina[ ] and Illumina’s Verinata Health business, and Roche will continue to defend the company in court, Zambrowski said, adding that Roche ‘went into this agreement with our eyes wide open.’” Id. Given that Petitioner had announced the acquisition of Ariosa as early as December 2, 2014, noting that it went into the agreement to acquire Ariosa with its eyes wide open, Petitioner has not provided a persuasive reason as to why it waited until April 24, 2015, to file the instant Petition.” slip op. at 10

  • PTAB / AIA Trials › Discretionary denial › §325(d) same art / argumentsInstitution denied 325dInstitution denied

    “We approach our discretion to deny a petition on a case-by-case basis. As explained above, one factor that favors denial of the instant Petition is that it raises “substantially the same” arguments as the Petition in IPR2014- 01093. 35 U.S.C. § 325(d). We have compared the prior art and arguments raised in the instant Petition to those raised in the Petition filed in IPR2014- 01093. Based on the information presented, we are persuaded that the instant Petition raises, at minimum, “substantially the same . . . arguments” that “previously were presented to the Office” in the Petition filed in IPR2014-01093. 35 U.S.C. § 325(d). That is one factor, contributing to the totality of circumstances in this case, that informs our decision to exercise our discretion to deny the Petition.” slip op. at 14

  • Other 314aInstitution denied discretionary otherInstitution denied

    “Another factor that tips the balance in favor of denying institution of inter partes review is the timing of the filing of the instant Petition. As noted by Patent Owner, Petitioner had the advantage of the Patent Owner’s response in IPR2014-01093 (Prelim. Resp. 20), as well the depositions of Patent Owner’s expert in that proceeding, which were conducted by counsel for Roche (id. at 8). Essentially, the only reason that Petitioner has provided for waiting until April of 2015 to file the instant Petition is that it did not complete its acquisition of Ariosa until January 12, 2015. However, as discussed above, Petitioner was aware of the possibility of acquiring Ariosa as early as June of 2014, and announced its acquisition as early as December of 2014. Petitioner has not provided any persuasive reason as to why it could not have filed the Petition earlier, much less why the Petition could not have been filed within one month of institution of IPR2014-01093. On this record, we are persuaded that our resources are better spent addressing matters other than Petitioner’s belated, and essentially, second attempt to raise a plurality of duplicative grounds against the same patent claims. See Heckler v. Chaney, 470 U.S. 821, 831 (1985) (when deciding whether to take action in a particular matter, an agency must determine whether its resources are best spent on one matter or another). Petitioner provides no persuasive reason why we should institute inter partes review in light of the above facts. Based on the totality of circumstances before us, we exercise our discretion and deny institution of inter partes review. 35 U.S.C. §§ 314(a), 316(b), 325(d); 37 C.F.R. § 42.108(b).” slip op. at 15

  Discretionary denial
  Patents in suitUS 7,955,794

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