Lo et al.v.Fan et al.

Patent Trials and Appeals Board

Dec 16, 2014

12696509 - (J) (P.T.A.B. Dec. 16, 2014)

BoxInterference@uspto.gov
571.272.4683 Filed December 16, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

HEI-MUN CHRISTINA FAN and STEPHEN QUAKE
Junior Party
(Patent 8,195,415),

v.

YUK-MING DENNIS LO, ROSSA WAI KWUN CHIU, and KWAN CHEE
CHAN
Senior Party
(Application 13/070,266),

Patent Interference No. 105,922 (DK)
(Technology Center 1600)
_______________

Judgment – Bd.R. 127

Before FRED E. MCKELVEY, RICHARD E. SCHAFER, AND
DEBORAH KATZ, Administrative Patent Judges.

KATZ, Administrative Patent Judge.

-2-
In view of the Decision on Priority (Paper 167), it is 1
ORDERED that judgment be entered against Lo for Count 1 (see Papers 1 2
and 102); 3
FURTHER ORDERED that claims 24-49 of Lo's involved application 4
13/070,266 be FINALLY REFUSED 35 U.S.C. § 135(a); 5
FURTHER ORDERED that a copy of this judgment be entered in the 6
administrative records of the involved 8,195,415 patent and 13/070,266 7
application. 8
FURTHER ORDERED that a party seeking judicial review timely serve 9
notice on the Director of the United States Patent and Trademark Office. 37 C.F.R. 10
§§ 90.1 and 104.2. 11
cc (via electronic delivery): 12
13
Attorney for Fan: 14
15
R. Danny Huntington 16
Sharon E. Crane 17
Rothwell, Figg, Ernst & Manbeck, PC 18
Email: dhuntington@rfem.com 19
Email: scrane@rfem.com 20
21
Attorney for Lo: 22
23
Michele C. Bosch 24
Steven P. O’Connor 25
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP 26
Email: michele.bosch@finnegan.com 27
Email: steven.oconnor@finnegan.com 28
29
Michael J. Wise 30
Perkins Coie, LLP 31
E-mail: mwise@perkinscoie.com 32
BoxInterference@uspto.gov
571.272.4683 Filed December 16, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

HEI-MUN CHRISTINA FAN and STEPHEN QUAKE
Junior Party
(Patent 8,195,415),

v.

YUK-MING DENNIS LO, ROSSA WAI KWUN CHIU, and
KWAN CHEE CHAN
Senior Party
(Application 13/070,266),

Patent Interference No. 105,922 (DK)
(Technology Center 1600)
_______________

Decision on Priority
Bd. R. 125(a)
Before FRED E. McKELVEY, RICHARD E. SCHAFER, and DEBORAH KATZ,
Administrative Patent Judges.

KATZ, Administrative Patent Judge.

-2-
I. Statement of the Case 1
Following our Decision on Motions (Paper 101), Fan Motion 5 for judgment 2
based on priority (Paper 108) is before us. 3
Senior Party Yuk-Ming Dennis Lo, Rossa Wai Kwun Chiu, and Kwan Chee 4
Chan (“Lo”)
1
did not file a priority motion but rely, instead, on the filing date of 5
application 12/178,181, 23 July 2008, to which benefit was accorded upon 6
declaration as a constructive reduction to practice of the Count. (See Lo Priority 7
Statement, Paper 21, and Declaration, Paper 1, at 5.) 8
Junior Party Hei-Mun Christina Fan and Stephen Quake (“Fan”)
2
filed a 9
motion for priority arguing that they actually reduced to practice an embodiment 10
within the scope of the Count before 23 July 2008 and, therefore, are entitled to an 11
award of priority over Lo. 12
We grant Fan Motion 5. 13
Related Proceedings 14
Inter Partes Review (“IPR”) 2013-00390 is related to this interference. A 15
final decision was entered on 25 November 2014 denying Petitioner Sequenom’s 16
(the real party-in-interest of Lo) challenge against all claims of Fan patent 17
8,195,415, which is involved in this interference. (See IPR2013-00390, Paper 45.) 18
Sequenom argued that the Fan ’415 patent claims are unpatentable under 35 U.S.C. 19
§ 102(e) over Lo application 12/178,181 (published as U.S. Patent Application 20

1
Lo represents that at least application 13/070,266 is assigned to The Chinese
University of Hong Kong and that Sequenom, Inc. is a licensee. (Paper 4.)
2
Fan represents that its involved application is assigned to The Board of Trustees
of the Leland Stanford Junior University and the Fluidigm Corporation and
Verinata Health, Inc, a wholly owned subsidiary of Illumina, Inc., are licensees.
(Paper 9.)

-3-
Publication 2009/0029377), to which Lo was accorded the benefit of priority as a 1
constructive reduction to practice of the Count in this interference. 2
The involved Lo ’266 application and involved Fan ’415 patent are also 3
related to applications and patents that were involved in Interferences 105, 920, 4
105,923, and 105,924.
3
The Fan (referred to as “Quake”) patents and applications 5
in those interferences are not in the same direct lineage as the involved Fan ’415 6
patent, but have the same real party in interest. As in the current interference, the 7
counts of these concurrent interferences are drawn to methods of detecting 8
chromosomal abnormalities. Judgment was entered in those interferences against 9
Quake, canceling Quake patent 8,008,018 claims 1-4 (Interference 105,920, Paper 10
259), finally refusing Quake application 12/393,833 claims 25, 29, 32, 40, 42, 78, 11
79, 86, 87, 90, 91, 93, 95, 97, and 98-101 (Interference 105,923, Paper 233, and 12
Interference 105,924, Paper 231). 13
II. Subject Matter 14
The subject matter of this interference is testing for a condition called 15
“aneuploidy.” This method can be used to diagnose conditions including Down 16
Syndrome, in which chromosome 21 is abnormally distributed as three copies 17
instead of two. Such abnormal distribution of chromosomes is aneuploidy, in 18
contrast to normally distributed “non-aneuploid” chromosomes. The method of the 19
Count allows for the diagnosis of aneuploidies with a simple blood test of the 20
mother’s blood. 21

3
Interference 105,920 involved Lo application 13/070,275 and Quake application
12/393,833. Similarly, Interference 105,923 involved Quake application
12/393,833 and Lo applications 12/178,181, 13/070,240, 12/614,350, and
13/070,251. Interference 105,924 involved Lo application 13/417,119 and Quake
application 12/393,833.

-4-
The method does not require the chromosomes of the mother and fetus to be 1
separately identified. Instead, it involves the determination of a ratio between the 2
number of all the different chromosomes in the blood sample. The ratio of the 3
number of chromosomes suspected of being aneuploid to the number of 4
chromosomes not likely to be aneuploid indicates whether there is an extra or 5
missing chromosome. To determine this ratio, “massively parallel sequencing” is 6
conducted to obtain millions of small stretches of sequence of the DNA in the 7
blood sample, called “sequence tags.” These small stretches of sequence are then 8
aligned to reference chromosomes to identify which chromosomes are present. 9
The final diagnosis is made on the statistical significance of the ratio of 10
chromosomes. (Fan ’415 patent, Exh. 2011, at 3:35-64; Detter Decl., Exh. 2050, at 11
¶ 34.) 12
The Count in this interference is Fan claim 1, which recites: 13
A method of testing for an abnormal distribution of a specified 14
chromosome portion in a mixed sample of normally and abnormally 15
distributed chromosome portions obtained from a subject, comprising: 16
(a) sequencing DNA from the mixed sample to obtain 17
sequences from multiple chromosome portions, wherein said 18
sequences comprise a number of sequence tags of sufficient length of 19
determined sequence to be assigned to a chromosome location within 20
a genome; 21
(b) assigning the sequence tags to corresponding chromosome 22
portions including at least the specified chromosome by comparing 23
the determined sequence of the sequence tags to a reference genomic 24
sequence; 25
(c) determining values for numbers of sequence tags mapping 26
to chromosome portions by using a number of windows of defined 27
length within normally and abnormally distributed chromosome 28
portions to obtain a first value and a second value therefrom; and 29

-5-
(d) using the values from step (c) to determine a differential, 1
between the first value and the second value, which is determinative 2
of whether or not the abnormal distribution exists. 3
4
(Declaration, Paper 1, at 4.) 5
III. Fan Motion 5 6
Under 35 U.S.C. § 102(g) (enforced on claims with an effective filing date 7
before the Leahy-Smith America Invents Act, 16 March 2013), a party is not 8
entitled to a patent if “during the course of an interference . . . another inventor 9
involved therein establishes . . . that before such person’s invention thereof the 10
invention was made by such other inventor and not abandoned, suppressed, or 11
concealed . . . .” To prevail under §102(g), a junior party may show, by presenting 12
persuasive, admissible evidence, that it was the first to reduce an embodiment of 13
the invention to practice. A junior party may also prevail by showing that it 14
conceived of the invention first and that it was diligent in reducing it to practice 15
from the time just before the invention was conceived by the other party. See 16
Cooper v. Goldfarb, 154 F.3d 1321, 1327 (Fed. Cir. 1998) (“[P]riority of invention 17
goes to the first party to reduce an invention to practice unless the other party can 18
show that it was the first to conceive of the invention and that it exercised 19
reasonable diligence in later reducing that invention to practice.”). 20
Fan argues that Drs. Fan and Quake completed a “series” of actual 21
reductions to practice before 23 July 2008, the earliest date of conception or 22
reduction to practice alleged by Lo in its priority statement. (Fan Motion 5, Paper 23
108, at 4:31-5:4.) Fan presents the testimony of Dr. Fan
4
, which refers to pages of 24

4
We note that although Fan cited to the Declaration of Stephen Quake, Ph.D. (Exh.
2133) in its Motion 5 for priority, Fan subsequently withdrew this declaration and

-6-
her notebooks as well as other evidence reportedly showing conception and 1
reductions to practice in March and April 2008. Fan also presents evidence, 2
including testimony regarding draft manuscripts allegedly reporting experiments 3
that Fan argues are an actual reduction to practice of an embodiment of the Count. 4
We conclude that the evidence shows an actual reduction to practice no later than 5
19 June 2008. 6
Findings of Fact 7
We make the following findings of fact. These findings, as well as others 8
made elsewhere in this opinion are supported by a preponderance of the evidence. 9
1. Dr. Fan testifies that she was a graduate student in the laboratory of 10
Stephen Quake in the Department of Bioengineering at Stanford University, 11
Howard Hughes Institute, from 2006 to 2011. (Declaration of Hei-Mun Christina 12
Fan, Ph.D. (“Fan Decl.”), Exh. 2132, at ¶ 4.) 13
2. Dr. Fan testifies that during the time she was a graduate student in 14
Dr. Quake’s laboratory, they conceived and reduced to practice the invention 15
claimed in the involved Fan ’415 patent, which is the Count. (Id.) 16
3. Dr. Fan testifies that toward the end of 2006 through 2008, she and 17
Dr. Quake worked with Yair Blumenfeld, who provided maternal blood samples to 18
use in optimizing the fetal aneuploidy diagnosis test that Dr. Fan and Dr. Quake 19
were developing. (Id. at ¶ 11.) 20
4. Yair Blumenfeld testifies that in 2008 he was a fellow in the 21
Department of Obstetrics and Gynecology (maternal and Fetal Medicine) at the 22

did not file it as part of the record. (See Paper 118.) Accordingly, we do not make
findings of fact regarding this declaration.

-7-
Stanford University Medical Center. (Declaration of Yair Blumenfeld, M.D. 1
(“Blumenfeld Decl.”), Exh. 2134, ¶ 3.) 2
5. Dr. Blumenfeld testifies that toward the end of 2006 through 2008, he 3
collaborated with inventors Quake and Fan to provide patient blood for optimizing 4
fetal aneuploidy diagnosis. (Blumenfeld Decl., Exh. 2134, at ¶ 6.) 5
6. Dr. Fan testifies that on 18 December 2007, she prepared DNA from 6
eight patient samples containing a mixture of maternal and fetal DNA, for 7
massively parallel sequencing to obtain sequence tags that could be aligned to 8
chromosomes and analyzed to determine whether there was an abnormal 9
distribution of chromosomes. (Fan Decl., Exh. 2132, at ¶ 13.) 10
7. Dr. Fan testifies that on 9 January 2008, Dr. Quake contacted Joseph 11
DeRisi to request use of a DNA sequencer (manufactured by Solexa) in 12
Dr. DeRisi’s laboratory for use in the project on non-invasive diagnosis of fetal 13
aneuploidy. (Id., at ¶ 14, citing e-mail, Exh. 2118.) 14
8. Joseph DeRisi testifies that he is currently a Professor and Howard 15
Hughes Investigator in the Department of Biochemistry and Biophysics at the 16
University of California, San Francisco School of Medicine (“UCSF”). 17
(Declaration of Joseph DeRisi, Ph.D. (“DeRisi Decl.”), Exh. 2135, at ¶ 2.) 18
9. Dr. DeRisi testifies that he recalls that sequencing runs were 19
performed on behalf of Dr. Fan and Dr. Quake in his laboratory in 2008 to non-20
invasively diagnose fetal aneuploidy by quantifying DNA fragments in the blood 21
of a pregnant patient. (Id., at ¶ 3.) 22
10. Dr. DeRisi testifies that he recalls Dr. Fan coming to UCSF to work 23
on sequencing and alignment analysis of the sequencing. (Id., at ¶ 4.) 24

-8-
11. Dr. Fan testifies that on 14 and 17 January 2008, she extracted and 1
quantified DNA from nine additional patient samples, including sample P13 that 2
contained a mixture of maternal and fetal DNA, for the purpose of doing massively 3
parallel sequencing. (Fan Decl., Exh. 2132, at ¶¶ 16 and 17, citing laboratory 4
notebook, Exh. 2109, 72-78.) 5
12. Dr. Fan testifies that on 29 January 2008 both she and Dr. Quake 6
corresponded with Clement Chu, who operated the Solexa sequencing machine in 7
Dr. DeRisi’s laboratory. (Fan Decl., Exh. 2132, at ¶¶ 18 and 19, citing e-mails 8
dated 29 January 2008, Exhs. 2121 and 2122.) 9
13. Dr. Fan testifies that on 12 March 2008 the P13 sample library was 10
sequenced on a Solexa sequencer in the laboratory of Dr. Arend Sidow. (Fan 11
Decl., Exh. 2132, at ¶ 20.) 12
14. Dr. Fan testifies that on 28 March 2008 she entered the results of the 13
Solexa sequencing of the P13 sample into her notebook. (Fan Decl., Exh. 2132, at 14
¶ 21, citing laboratory notebook, Exh. 2109, at pp. 147A-U.) 15
15. Dr. Fan testifies that an ELAND sequencing software program was 16
used to align the sequence of the P13 sample with chromosomes and that she 17
determined the number of sequence tags mapping to each chromosome using 18
windows of defined length with the normally and abnormally distributed 19
chromosome portions in first and second values. (Fan Decl., Exh. 2132, at 20
¶¶ 21-24, citing laboratory notebook, Exh. 2109, at pp. 147A-U.) 21
16. Dr. Fan testifies that Dr. Quake corresponded with Dr. DeRisi and 22
Dr. Chu regarding sequencing on 4 April 2008. (Fan Decl., Exh. 2132, at ¶¶ 26 23
and 27, citing e-mails dated 4 April 2008, Exhs. 2120 and 2123.) 24

-9-
17. Dr. Fan testifies that on 11 and 17 April 2008, she began to extract 1
DNA from blood sample P25 to be used in massively parallel sequencing on a 454 2
sequencing machine in Dr. Quake’s laboratory on 30 April 2008. (Fan Decl., Exh. 3
2132, ¶ 28, citing e-mails dated 11 and 17 April 2008, Exh. 2124 and laboratory 4
notebook, Exh. 2110, at pp. 16 and 16A.) 5
18. Dr. Fan testifies that sequencing data from the P25 sample was 6
analyzed with an alignment program to align sequence tags with chromosome 7
portions using a number of windows of defined length across each chromosome to 8
determine normally and abnormally distributed chromosome portions in first and 9
second values. (Fan Decl., Exh. 2132, ¶ 30, citing laboratory notebook, Exh. 2110, 10
pp. 16A-F and Q-X.) 11
19. Dr. Fan testifies that on 21 April she extracted DNA from blood 12
samples P26, P40, and P42 for sequencing on a Solexa machine. (Fan Decl., 13
Exh. 2132, at ¶ 34, citing laboratory notebook, Exh. 2110, pp. 18-23
5
.) 14
20. Dr. Fan testifies that on 24 and 25 April she extracted and created a 15
DNA library from blood samples P1, P6, P52, and P53 for sequencing on a Solexa 16
machine. (Fan Decl., Exh. 2132, at ¶¶ 35 and 36, citing laboratory notebook, 17
Exh. 2110, at pp. 24-25 and 26-37
6
.) 18
21. Dr. Fan testifies that on 29 April 2008, she recorded quantitation of 19
sequencing libraries using “digital PCR,” which Dr. Fan explains was a standard 20
part of the protocol for using a Solexa “flow cell.” (Fan Decl., Exh. 2132, at ¶ 37.) 21
22. Dr. Fan testifies that on 30 April 2008, she recorded in her notebook 22
that she had done the first stage of Solexa sequencing for DNA libraries generated 23

5
While Exhibit 2110 includes 28 pages in total, we find no pages numbered 18-23
because they are numbered 16A-X.

-10-
from samples P1, P6, P52, P53, P26, P40, and P42. (Fan Decl., Exh. 2132, at ¶ 38, 1
citing laboratory notebook, Exh. 2110, at p. 40
7
.) 2
23. Dr. Fan testifies that on 20 May 2008 a post-doc from Dr. DeRisi’s 3
laboratory, Dr. Fischer, sent alignment data to her and that she corresponded with 4
him about it. (Fan Decl., Exh. 2132, at ¶ 39, citing e-mail dated 20 May 2008, 5
Exh. 2125.) 6
24. Dr. Fan testifies that on 24 May 2008 Dr. Fischer forwarded 7
additional alignments to her and that they corresponded further about the 8
alignments on 9
26 May 2008. (Fan Decl., Exh. 2132, at ¶ 40, citing e-mail dated 26 May 2008, 10
Exh. 2126.) 11
25. Dr. Fan testified that on 28 May 2008 she sent a preliminary analysis 12
of the full sequencing of four aneuploid (trisomy 21) samples and three non-13
aneuploid samples to Drs. Blumenfeld and Quake and that Dr. Blumenfeld 14
responded. (Fan Decl., Exh. 2132, at ¶ 41, citing e-mail dated 28 May 2008, Exh. 15
2127.) 16
26. Dr. Fan testifies that on 3 and 6 June 2008 she prepared DNA and 17
libraries from blood samples of additional patients, as well as from a male as a 18
control, for Solexa sequencing. ( Fan Decl., Exh. 2132, at ¶ 42-43, citing 19
laboratory notebook Exh. 2110, pp. 40-61
8
.) 20
27. Dr. Fan testifies that on 19 June 2008 she sent a rough draft 21
manuscript to Drs. Quake and Blumenfeld based on the experiments of the “first 22

6
We do not find pages numbered 24-25 and 26-27 in Exhibit 2110 (see FN 5).
7
We do not find a page numbered 40 in Exhibit 2110 (see FN 5).
8
We do not find pages numbered 40-61 in Exhibit 2110 (see FN 5).

-11-
Solexa sequencing run.” (Fan Decl., Exh. 2132, at ¶ 44, citing Exh. 2113, which is 1
a copy of an e-mail of 19 June 2008 and an attached manuscript.) 2
28. Dr. Fan testifies that the manuscript in Exhibit 2113 described the 3
work that she had done. (Fan. Decl., Exh. 2132, ¶ 45.) 4
29. Dr. Blumenfeld testifies that on 19 June 2008, Dr. Fan sent him a 5
manuscript called the “rough draft of the non-invasive study,” which is provided in 6
Exhibit 2113. (Blumenfeld Decl., Exh. 2134, at ¶ 9.) 7
30. Exhibit 2113 is a copy of an e-mail dated 19 June 2008 from Christina 8
Fan to Stephen Quake and Yair Blumenfeld, which includes an attachment labeled 9
“noninvasive manuscript v1.0.doc.” (Exh. 2113.) 10
31. The attachment to Exhibit 2113 is a manuscript entitled 11
“Universal Non-Invasive Diagnosis of Fetal Aneuploidy with Direct 12
Sequencing.” (Exh. 2113.) 13
32. Dr. Fan testifies that after 19 June 2008, she performed more 14
experiments to sequence, align, and analyze blood samples that contained both 15
maternal and fetal DNA. (Fan Decl., Exh. 2132, at ¶¶ 46-49 and 53-54.) 16
33. Dr. Fan testifies that on 7 July 2008 she discussed revisions of the 17
manuscript with Drs. Quake and Blumenfeld. (Id. at ¶ 52.) 18
34. Dr. Blumenfeld testifies that on 7 July 2008 he, Dr. Fan, and 19
Dr. Quake discussed revisions to the “PNAS manuscript” in e-mails provided as 20
Exhibits 2112 and 2131. (Blumenfeld Decl., Exh. 2134, at ¶ 11, citing Exh. 2112 21
and 2131.) 22
35. Dr. Fan and Dr. Blumenfeld testify that the draft manuscripts they 23
discussed in their declarations were published as the article “Noninvasive prenatal 24
diagnosis of fetal chromosomal aneuploidy by massively parallel genomic 25

-12-
sequencing of DNA in maternal plasma,” 105 Proc. Nat’l Acad. Sci. 20458 (2008) 1
(Exhibit 2139). (Fan Decl., Exh. 2132, ¶ 44; Blumenfeld Decl., Exh. 2134, ¶ 7
9
.) 2
36. J. Chris Detter, Ph.D. was found to be qualified to testify as an expert 3
about the subject matter of this interference. (See Decision on Motions, Paper 101, 4
at 3.) 5
37. Dr. Detter testifies that he reviewed the first draft of the PNAS 6
manuscript (Exh. 2113) and a second draft provided in Exhibit 2112. (Second 7
Declaration of J. Chris Detter, Ph.D. (“Second Detter Decl.”), Exh. 2138, at ¶ 6.) 8
38. Dr. Detter testifies that the draft manuscripts Fan provided in Exhibits 9
2112 and 2113 describe the elements of all of the claims of the involved Fan ’415 10
patent, including claim 1, which is the Count in this interference. (Second Detter 11
Decl., Exh. 2138, ¶ 7.) 12
39. Exhibits 2112 and 2113 recite the text cited by Dr. Detter in paragraph 13
7 of his declaration as disclosing the elements of the Count.
10
14
15
Analysis 16

9
Although Dr. Blumenfeld referred to Exhibit 1036 in his declaration, because
Exhibit 2139 has the same title, journal name, volume, and page numbers as the
article about which he testifies, we understand the reference to Exhibit 1036 to be a
typographical error.
10
We note that in the table Dr. Detter provides in paragraph 7, page 8, of his
declaration (Exhibit 2138), he recites on page 6 of Exhibit 2112 as supporting
element (c) of the Count. The recited text (“The coverage of chromosome 21 for
T21 cases is ~4-8% higher (average ~11%) than that of the disomy 21 cases.”)
does not appear on page 6 of Exhibit 2112 as Dr. Detter states. Because the actual
text recites similar subject matter (“The coverage of chromosome 21 for T21 cases
is about ~8-18% higher (average ~ 13%) than that of the normal cases.”) and
because we rely on Exhibit 2113, we do not consider this error to be fatal to Dr.
Detter’s testimony.

-13-
Dr. Fan testifies that on 14 January 2008 she first extracted DNA from 1
samples of maternal blood containing both fetal and maternal DNA in order to do 2
massively parallel sequencing. (FF 11.) Dr. Fan testifies that through 3
6 June 2008 she continued with similar experiments aligning sequences with 4
chromosomes and determining how many sequence tags map to normally and 5
abnormally distributed chromosomes. (FFs 12-26.) To support this testimony, 6
Dr. Fan cites to pages of her laboratory notebooks and copies of e-mail 7
correspondence. 8
We agree with Lo that Dr. Fan’s laboratory notebooks are insufficient by 9
themselves to support her testimony regarding conception or reduction to practice 10
because they lack independent corroboration and sufficient explanation. (See Lo 11
Opp. 5, Paper 119, at 2:7-4:5 and 7:22-24.) Nevertheless, we are persuaded that 12
Dr. Fan actually reduced to practice an embodiment of the Count before 23 July 13
2008. 14
In addition to her notebook, Fan relies on the testimony of Drs. DeRisi and 15
Blumenfeld regarding the experiments she performed between 14 January 2008 16
and 6 June 2008. Specifically, Dr. Blumenfeld and Dr. DeRisi, who are not named 17
as inventors, testify that they had personal knowledge of Dr. Fan’s work during 18
this period: Dr. Blumenfeld because he provided blood samples to Dr. Fan (FFs 4-19
5) and Dr. DeRisi because recalls the sequencing and alignment studies she 20
performed (FFs 8-10). 21
Fan also supports Dr. Fan’s testimony about her work with contemporaneous 22
e-mail correspondence and the draft manuscript Dr. Fan says she prepared and sent 23
to Drs. Quake and Blumenfeld on 19 June 2008. (FF 27; see Exhibit 2113). Dr. 24
Blumenfeld testifies that he received the e-mail of Exhibit 2113 with the attached 25

-14-
draft manuscript on 19 June 2008. (FF 29.) He also testifies that he received a 1
subsequent e-mail on 7 July 2008 from Dr. Fan regarding the manuscript. (FF 33 2
and 34; see Exhibit 2131.) 3
Although Lo argues that Fan fails to prove that the manuscripts are the same 4
ones that are attached to the original e-mails (see Lo Opp. 5, Paper 119, at 11:12-5
15 and 12:13-17), we find Dr. Blumenfeld’s testimony to persuasively authenticate 6
Exhibit 2113. As Lo argues, Dr. Blumenfeld states that Dr. Fan “sent” him the 7
draft manuscript, not that he received it. We have no reason to believe he did not 8
receive the attachment to Exhibit 2113. Lo does not direct us to evidence that the 9
copy of the e-mail was fabricated or that the indication of an attachment has some 10
other meaning (see FF 30). Furthermore, the similarity of the draft manuscript in 11
the exhibit to the article that was ultimately published (FF 35) is further evidence 12
that Exhibit 2113 reflects what was sent on 19 June 2008. Because we find that the 13
19 June manuscript included with Exhibit 2113 is authenticated and is consistent 14
with evidence of an actual reduction to practice before 23 July 2008, we need not 15
consider whether later correspondence, such as the e-mail of 9 July 2008, is 16
properly authenticated to reach our conclusion. 17
Fan presents Dr. Detter’s testimony as evidence that the draft manuscript of 18
Exhibit 2113 (as well as the later manuscript of Exhibit 2112) describes methods 19
within the scope of Fan’s claim 1, which is coextensive with the Count. Dr. Detter 20
identifies language in the draft manuscripts that reflects an embodiment of each 21
element of the Count. (FF 40.) Lo does not argue and does not direct us to 22
evidence to substantively contradict Dr. Detter’s testimony. 23
Instead, Lo argues that Dr. Detter’s testimony does not corroborate an actual 24
reduction to practice because Dr. Detter did not have contemporaneous knowledge 25

-15-
of Dr. Fan’s activities and did not explain how the elements of the Count were 1
demonstrated in Dr. Fan’s laboratory notebooks. (Lo Opp. 5, Paper 119, at 2
9:10-10:9 and 11:1-5.) We rely on Dr. Detter’s testimony to show that the 3
information provided in the draft manuscript of 19 June 2008 is an anticipation of 4
the method of the Count, not for his personal knowledge of what Dr. Fan did or for 5
his testimony on her laboratory notebooks. Thus, we are not persuaded by Lo’s 6
argument. 7
In a similar argument, Lo asserts that because neither Dr. Blumenfeld nor 8
any one with contemporaneous knowledge of the method of the Count testifies 9
about the actual contents of the manuscript in relation to the Count, Fan has failed 10
to meet its burden. (Lo Opp. 5, Paper 119, at 11:19-23 and 12:9-12.) We are not 11
persuaded by this argument because we rely on Dr. Blumenfeld’s testimony 12
demonstrating that Dr. Fan had written the manuscript as of 19 June 2008, not what 13
the manuscript describes. Because Dr. Detter’s testimony is supported by the 14
record and Lo has not directed us evidence to contradict it, we are persuaded that at 15
least the manuscript of 19 June 2008 describes each element of the Count. 16
Lo argues further that specific exhibits provided by Fan are insufficient to 17
show an actual reduction to practice. Lo argues that the declaration of Dr. DeRisi 18
and the e-mails from Drs. Chu and Fischer are insufficiently detailed to corroborate 19
a reduction to practice and that the e-mail correspondence between Drs. Fan, 20
Quake, and Blumenfeld provided in Exhibits 2127 and 2129 fail to describe the 21
steps of the Count. (Lo Opp. 5, Paper 119, at 8:3-9:9 and 10:19-27.) We are not 22
persuaded by any of these arguments because even if we did not consider these 23
specific exhibits, we would conclude that Dr. Fan reduced the invention to practice 24
before 23 July 2008 based on the draft manuscript of Exhibit 2113 and 25

-16-
Drs. DeRisi’s and Blumenfeld’s testimony, which are consistent with and support 1
Dr. Fan’s testimony about the experiments she performed. We evaluate all of the 2
evidence put forth for a prior reduction to practice, including corroborated 3
testimony, as a whole, not individually. Cf. Price v. Symsek, 988 F.2d 1187, 1196 4
(Fed. Cir. 1993) (“an inventor can conceivably prove prior conception by clear and 5
convincing evidence although no one piece of evidence in and of itself establishes 6
the prior conception. It is sufficient if the picture painted by all of the evidence 7
taken collectively gives the board ‘an abiding conviction’ that Price's assertion of 8
prior conception is ‘highly probable.’” [citation omitted].) 9
Lo’s argument that the Board should draw an adverse inference against Fan 10
because Fan did not provide testimony of Dr. Quake or of other collaborators and 11
coauthors is similarly unpersuasive. (Lo Opp. 5, Paper 119, at 13:2-10 and FN 1.) 12
On the facts of this case, we decline to infer anything from the testimony not 13
presented by Fan in light of the strength of the testimony that was provided. (Cf. 14
Stampa v. Jackson, 77 U.S.P.Q.2d 1105, 1220 (B.P.A.I. 2005) (“However, because 15
Stampa's case is so weak, we find it unnecessary to draw an inference [on 16
testimony not presented] one way or the other.”) Fan has presented evidence to 17
support Dr. Fan’s testimony about the work she did to conduct a non-invasive test 18
for fetal aneuploidy, including Dr. Detter’s testimony that the manuscript describes 19
each element of the Count. Because Lo does not direct us to evidence that casts 20
doubt on either the facts presented by Dr. DeRisi and Blumenfeld or on the 21
opinions presented by Dr. Detter, we are persuaded by Fan’s argument for priority 22
without other evidence. 23

-17-
As a final matter, we find the testimony of the Fan witnesses to be highly 1
credible and supported by the record—including contemporaneous documentation. 2
Accordingly, we have given that testimony considerable weight. 3
IV. Conclusion 4
Fan has persuaded us that Dr. Fan actually reduced to practice an 5
embodiment within the scope of the Count by 19 June 2008, which is earlier than 6
Lo’s asserted earliest conception and reduction to practice of 23 July 2008, the 7
filing date of its priority application. (Lo Priority Statement, Paper 24.) 8
Accordingly, priority is awarded to Fan. 9
Judgment will be entered separately. 10
11
cc (via electronic delivery): 12
13
Attorney for Fan: 14
15
R. Danny Huntington 16
Sharon E. Crane 17
Rothwell, Figg, Ernst & Manbeck, PC 18
Email: dhuntington@rfem.com 19
Email: scrane@rfem.com 20
21
Attorney for Lo: 22
23
Michele C. Bosch 24
Steven P. O’Connor 25
Finnegan, Henderson, Farabow, Garrett & Dunner, LLP 26
Email: michele.bosch@finnegan.com 27
Email: steven.oconnor@finnegan.com 28
29
Michael J. Wise 30
Perkins Coie, LLP 31
E-mail: mwise@perkinscoie.com 32
33