Trials@uspto.gov
`571.272.7822
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`Paper 50
`Entered: May 29, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GUARDANT HEALTH, INC.,
`Petitioner,
`
`v.
`
`FOUNDATION MEDICINE, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-01170 (Patent 9,340,830 B2)
`Case IPR2017-01447 (Patent 9,340,830 B2)
`Case IPR2017-01448 (Patent 9,340,830 B2)1
`
`____________
`
`
`Before SUSAN L.C. MITCHELL, TINA E. HULSE, and
`RICHARD J. SMITH, Administrative Patent Judges.
`
`SMITH, Administrative Patent Judge.
`
`
`
`DECISION
`Granting Patent Owner’s Motion to Submit Supplemental Information
`Pursuant to 37 C.F.R. § 42.123(b)
`
`
`
`1 This Decision addresses issues that are common to all three cases. We,
`therefore, issue a single Decision that has been entered in each case. The
`parties may use this style caption when filing a single paper in multiple
`proceedings, provided that such caption includes a footnote attesting that
`“the word-for-word identical paper is filed in each proceeding identified in
`the caption.”
`
`
`
`
`
`IPR2017-01170, IPR2017-01447, and IPR2017-01448
`Patent 9,340,830 B2
`
`INTRODUCTION
`
`On May 2, 2018, we authorized Patent Owner to file a motion to
`
`submit supplemental information, and also authorized Petitioner to file an
`opposition to the motion. Subsequently, Patent Owner filed its Motion to
`Submit Supplemental Information Pursuant to 37 C.F.R. § 42.123(b) (Paper
`46),2 and Petitioner filed an Opposition (Paper 50).
`DISCUSSION
`Under 37 C.F.R. § 42.123(b), a motion to submit supplemental
`
`information must show why the supplemental information reasonably could
`not have been obtained earlier, and that consideration of the supplemental
`information would be in the interests of justice. Moreover, as stated in
`37 C.F.R. § 42.1(b), trial rules are construed to secure the just, speedy, and
`inexpensive resolution of every proceeding.
`
`Patent Owner seeks to submit a two-page press release dated April 26,
`2018 (Ex. 2088) (“Press Release”). Paper 46, 2. The Press Release was
`issued by Patent Owner and published in Business Wire. Ex. 2088. The
`Press Release states that “the U.S. Food and Drug Administration (FDA)
`granted a Breakthrough Device designation (formerly Expedited Access
`Pathway program) for [Patent Owner’s] new liquid biopsy assay, which is an
`expanded version of its FoundationACT® assay.” Ex. 2088, 1. Patent
`Owner asserts that the Press Release could not have been obtained earlier
`because it was not published until April 26, 2018, and that the Press Release
`
`
`2 Paper numbers and exhibits cited in this decision refer to those documents
`filed in IPR2017-01170. Similar papers and exhibits were filed in the other
`two proceedings.
`
`2
`
`
`
`IPR2017-01170, IPR2017-01447, and IPR2017-01448
`Patent 9,340,830 B2
`
`is “evidence of the non-obviousness of the ’830 patent, as it demonstrates
`both a long-felt need and praise by others.” Paper 46, 4.
`
`Petitioner’s opposition focuses on the merit or weight (if any) to be
`given to the Press Release. See Paper 50, 1–7. For example, Petitioner
`argues that, “as pointed out in [Petitioner’s] reply brief, [Patent Owner]
`failed to establish nexus and failed to show that any of the alleged objective
`indicia of nonobviousness are tied to the claims. [Patent Owner’s]
`supplementary information does not change this assessment.” Id. at 1.
`Petitioner further contends that the Press Release “is a self-serving press
`release,” and that Patent Owner “fails to establish that the press release bears
`any relevance to the challenged claims” and fails to “demonstrate that entry
`of the press release is ‘in the interests-of-justice.’” Id.
`
`Upon consideration of the Press Release and the parties’ arguments,
`we conclude that the information could not have been obtained earlier, and
`that the interests of justice are served by permitting entry of the Press
`Release as supplemental information at this stage of the proceeding. The
`Press Release was provided to Petitioner prior to the filing of Petitioner’s
`Reply to Patent Owner’s Response on May 8, 2018,3 and Petitioner filed a
`Notice of Objection to Evidence on May 14, 2018, regarding the Press
`Release. Paper 49. Moreover, based on Patent Owner’s argument that the
`Press Release “does not present any new grounds” and “is simply further
`probative evidence concerning Patent Owner’s secondary considerations
`arguments” that were raised previously (see Paper 46, 8), we are not
`
`
`3 Patent Owner states that it provided the Press Release to Petitioner on April
`27, 2018. Paper 46, 7–8.
`
`3
`
`
`
`IPR2017-01170, IPR2017-01447, and IPR2017-01448
`Patent 9,340,830 B2
`
`persuaded that the submission of the Press Release at this stage of the
`proceeding would unduly prejudice Petitioner.
`Although the Press Release may be relevant to objective indicia of
`nonobviousness, our decision to grant Patent Owner’s motion is not an
`advisory decision on the admissibility of the Press Release. Going forward,
`the parties are urged to cooperate in resolving disputes concerning the
`admissibility of evidence.
`
`ORDER
`In consideration of the foregoing, it is hereby:
`
`ORDERED that Patent Owner’s Motion to Submit Supplemental
`
`Information Pursuant to 37 C.F.R. § 42.123(b) is hereby GRANTED as to
`the Press Release (Ex. 2088).
`
`PETITIONER:
`Michael T. Rosato
`Steven W. Parmelee
`Sonja R. Gerrard
`WILSON SONSINI GOODRICH & ROSATI
`mrosato@wsgr.com
`sparmelee@wsgr.com
`sgerrard@wsgr.com
`
`PATENT OWNER:
`Brenda Jarrell
`Rolando Medina
`Stephanie L. Schonewald
`CHOATE, HALL & STEWART LLP
`bjarrell@choate.com
`rmedina@choate.com
`sschonewald@choate.com
`
`4
`
`
