Ariosa Diagnostics Attacks Verinata Fetal Testing Patent, Week of May 6, 2013

Scott Daniels and Cindy Chen | May 13, 2013

Ariosa Diagnostics filed two requests for inter partes review of U.S. Patent Nos. 8,318,430 owned by Verinata Health, one challenging claims 1-18 and the second, claims 19-30 (see inter partes review Request Nos. (11) & (12)).  The ‘430 patent claims methods for detecting fetal abnormalities by testing a maternal blood sample for the number of DNA fragments to determine whether there is an abnormal level of DNA associated with the chromosome suspected of being “aneuploid.”  Verinata has sued Ariosa for infringement of the ‘430 patent.

Oracle “completed,” in essence, earlier inter partes requests against two Clouding IP patents, this time attacking the claims that had not been attacked in the earlier petitions (see inter partes review Request Nos. (6) & (8)).

And Sprint Communications requested ex parte reexamination of three Comcast IP Holdings patents (see ex parte Request Nos. (3), (6) & (7)).  The two companies are involved in an infringement action in Delaware regarding the patents.

The following inter partes review requests were filed:

(1)         IPR2013-00266 (electronically filed) – U.S. Patent No. 8,158,346 entitled LABELLED NUCLEOTIDES and owned by Illumina Cambridge, Ltd. Filed May 4, 2013 by Intelligent Bio-Systems, Inc. (IBS). The ‘346 patent is currently the subject matter of a litigation styled The Trustees of Columbia University in the City of New York v. Illumina, Inc. (Case No. 1:12-cv-00376-GMS (D. Del.)). IBS previously requested inter partes review of Illumina’s U.S. Patent No. 7,057,026 (see IPR2013-00128), which was also asserted against IBS in the same Delaware action involving the ‘346 patent. Also of interest is Illumina’s prior petitions for inter partes reviews of the three patents that were asserted against Illumina in the Delaware action (see IPR2012-00006, IPR2012-00007, and IPR2013-00011). IBS’s instant petition cited many of the same references upon which Illumina’s petitions had relied.

(2)         IPR2013-00267 (electronically filed) – U.S. Patent No. 7,122,935 entitled BRUSH HOLDER APPARATUS, BRUSH ASSEMBLY, AND METHOD and owned by Cutsforth, Inc. Filed May 6, 2013 by MotivePower, Inc. The ‘935 patent is currently the subject matter of a litigation styled Cutsforth, Inc. v. MotivePower, Inc., et al. (Case No. 12-cv-01200 (D. Minn.)).

(3)         IPR2013-00268 (electronically filed) – U.S. Patent No. 7,141,906 entitled BRUSH HOLDER APPARATUS, BRUSH ASSEMBLY, AND METHOD and owned by Cutsforth, Inc. Filed May 6, 2013 by MotivePower, Inc. The ‘906 patent is currently the subject matter of a litigation styled Cutsforth, Inc. v. MotivePower, Inc., et al. (Case No. 12-cv-01200 (D. Minn.)).

(4)         IPR2013-00269 (electronically filed) – U.S. Patent No. 6,306,141 entitled MEDICAL DEVICES INCORPORATING SIM ALLOY ELEMENTS and owned by Medtronic, Inc. Filed May 6, 2013 by Lombard Medical Technologies PLC.

(5)         IPR2013-00270 (electronically filed) – U.S. Patent No. 7,417.354 entitled BRUSH HOLDER APPARATUS, BRUSH ASSEMBLY, AND METHOD and owned by Cutsforth, Inc. Filed May 6, 2013 by MotivePower, Inc. The ‘354 patent is currently the subject matter of a litigation styled Cutsforth, Inc. v. MotivePower, Inc., et al. (Case No. 12-cv-01200 (D. Minn.)).

(6)         IPR2013-00271 (electronically filed) – U.S. Patent No. 5,495,607 entitled NETWORK MANAGEMENT SYSTEM HAVING VIRTUAL CATALOG OVERVIEW OF FILES DISTRIBUTIVELY STORED ACROSS NETWORK DOMAIN and owned by Clouding IP, LLC. Filed May 7, 2013 by Oracle, Corp. The ‘607 patent is currently the subject matter of a litigation styled Clouding IP, LLC v. Oracle Corp. (Case No. 1:12-cv-00642 (D. Del.)). Oracle previously petitioned for inter partes review of a number of claims of the ‘607 patent (see IPR2013-00090). In the instant petition, Oracle is requesting review of the single remaining independent claim 15 of the ‘607 patent.

(7)         IPR2013-00272 (electronically filed) – U.S. Patent No. 8,179.014 entitled BRUSH HOLDER APPARATUS, BRUSH ASSEMBLY, AND METHOD and owned by Cutsforth, Inc. Filed May 8, 2013 by MotivePower, Inc. The ‘014 patent is currently the subject matter of a litigation styled Cutsforth, Inc. v. MotivePower, Inc., et al. (Case No. 12-cv-01200 (D. Minn.)).

(8)         IPR2013-00273 (electronically filed) – U.S. Patent No. 7,065,637 entitled SYSTEM FOR CONFIGURATION OF DYNAMIC COMPUTING ENVIRONMENTS USING A VISUAL INTERFACE and owned by Clouding IP, LLC. Filed May 8, 2013 by Oracle, Corp. The ‘637 patent is currently the subject matter of a litigation styled Clouding IP, LLC v. Oracle Corp. (Case No. 1:12-cv-00642 (D. Del.)). Oracle previously petitioned for inter partes review of claims 1-4 and 6 of the ‘637 patent (See IPR2013-00099). The instant petition challenges the remaining claims 5 and 7-9 of the ‘637 patent.

(9)         IPR2013-00274 (electronically filed) – U.S. Patent No. 7,990,018 entitled BRUSH HOLDER APPARATUS, BRUSH ASSEMBLY, AND METHOD and owned by Cutsforth, Inc. Filed May 8, 2013 by MotivePower, Inc. The ‘018 patent is currently the subject matter of a litigation styled Cutsforth, Inc. v. MotivePower, Inc., et al. (Case No. 12-cv-01200 (D. Minn.)).

(10)     IPR2013-00275 (electronically filed) – U.S. Patent No. 7,596,784 METHOD SYSTEM AND APPARATUS FOR PROVIDING PAY-PER-USE DISTRIBUTED COMPUTING RESOURCES and owned by Clouding IP, LLC. Filed May 9, 2013 by Oracle, Corp. The ‘784 patent is currently the subject matter of a litigation styled Clouding IP, LLC v. Oracle Corp. (Case No. 1:12-cv-00642 (D. Del.)). Oracle previously petitioned for inter partes review of a number of claims of the ‘784 patent (See IPR2013-00094). The instant petition challenges the single remaining independent claim, claim 9, of the ‘637 patent.

(11)     IPR2013-00276 (electronically filed) – U.S. Patent No. 8,318,430 entitled METHODS OF FETAL ABNORMALITY DETECTION owned by Verinata Health.  Filed May 10, 2013 by Ariosa Diagnostics.  The ‘430 patent is the subject of an infringement action styled Verinata Health, Inc. et al. v. Ariosa Diagnostics, Inc. et al., (Case No. 3:12-cv-05501-SI (N.D. Cal)).

(12)     IPR2013-00277 (electronically filed) – U.S. Patent No. 8,318,430 entitled METHODS OF FETAL ABNORMALITY DETECTION owned by Verinata Health.  Filed May 10, 2013 by Ariosa Diagnostics.  The ‘430 patent is the subject of an infringement action styled Verinata Health, Inc. et al. v. Ariosa Diagnostics, Inc. et al., (Case No. 3:12-cv-05501-SI (N.D. Cal)).

The following ex parte requests were filed:

(1)         90/012,857 (electronically filed) – U.S. Patent entitled CHAMELEON JACKET. Filed May 5, 2013.

(2)         90/012,858 (electronically filed) – U.S. Patent No. 6,947,702 entitled SATELLITE BROADCAST RECEIVING AND DISTRIBUTION SYSTEM and owned by Global Communications, Inc. Filed May 6, 2013. The ‘702 patent is currently the subject matter of a litigation styled Global Communications, Inc. v. DirecTV, Inc., et al. (Case No. 4:12-cv-00651-RH-CAS (N.D. Fla.)); Global Communications, Inc. v. PDI Communications, Inc., et al. (Case No. 4:11-cv-00541 (N.D. Fla.)).

(3)         90/012,859 (electronically filed) – U.S. Patent No. 8,189,565 entitled METHOD AND APPARATUS FOR ACCESSING COMMUNICATION DATA RELEVANT TO A TARGET ENTITY IDENTIFIED BY A NUMBER STRING and owned by Comcast IP Holdings I. Filed May 6, 2013 by Sprint Communications Company. The ‘565 patent is currently the subject matter of a litigation styled Comcast IP Holdings I, LLC v. Sprint Communications Company LP, et al. (Case No. 12-205-RGA (D. Del.)).

(4)         90/012,860 (electronically filed) – U.S. Patent No. 5,804,375 entitled REACTION MIXTURES FOR DETECTION OF TARGET NUCLEIC ACIDS and owned by Roche Molecular Systems. Filed May 6, 2013.  The ‘375 patent is the subject of an infringement action styled Cepheid v. Roche Molecular (Case No. 3:12-cv-4411 (N.D. Cal.)).

(5)         90/012,861 (electronically filed) – U.S. Patent No. 8,359,207 entitled METHOD AND APPARATUS FOR GENERATING TOXICOLOGY REPORTS and owned by Ameritox, Ltd. Filed May 6, 2013.

(6)         90/012,863 (electronically filed) – U.S. Patent 6,873,694 entitled TELEPHONY NETWORK OPTIMIZATION METHOD AND SYSTEM and owned by Comcast IP Holdings. Filed May 10, 2013 by Sprint.  The ‘694 patent is the subject of an infringement action styled Comcast IP Holdings v. Sprint (Case No. 12-cv-205 (D. Del.)).

(7)         90/012,864 (electronically filed) – U.S. Patent 8,170,008 entitled METHOD AND APPARATUS FOR ACCESSING COMMUNICATION DATA RELEVANT TO A TARGET ENTITY IDENTIFIED BY A NUMBER STRING SYSTEM and owned by Comcast IP Holdings. Filed May 10, 2013 by Sprint.  The ‘008 patent is the subject of an infringement action styled Comcast IP Holdings v. Sprint (Case No. 12-cv-205 (D. Del.)).

(8)         90/012,865 (electronically filed) – U.S. Patent No. 6,429,889 entitled LASER MARKING DISCRETE CONSUMABLE ARTICLES and owned by Tri-Star.  Filed May 10, 2013.

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