104, IPR2014-00788 at 3–4 (attached hereto as Exhibit F); Corrected Petition for Inter Partes Review of Claims 1–9 of U.S. Patent No. 6,738,155 under 35 USC §312 and 37 C.F.R. §42.104, IPR2014-00789 at 4 (attached hereto as Exhibit G). Defendants were not involved, in any way, with the preparation or filing of these Petitions.

Once the petitioner files its petition, it cannot raise additional grounds for review. See, e.g., SAS Inst., Inc., 825 F.3d at 1355 (Newman, J., concurring in part and dissenting in part); Amerigen Pharma Ltd., IPR2016-00286, Paper 14 at 16-17; 157 Cong. Rec. S1376; see also 37 C.F.R. § 42.104(b). Thus, even if the word “during” could be interpreted to limit the relevant timeframe to the post- institution period, the proper focus would remain on the grounds that were raised, or reasonably could have been raised, in the petition.

Both inter partes reexamination and IPR are limited to §§ 102 and 103 challenges to validity based on patents and printed publications. 37 C.F.R. § 42.104. Both allow the third-party Case 3:11-cv-06391-SI Document 187 Filed 05/15/13 Page 9 of 25 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 ARIOSA DIAGNOSTICS, INC.’S OPPOSITION TO SEQUENOM, INC.’S MOTION TO CLARIFY OR, ALTERNATIVELY, MODIFY PROTECTIVE ORDER - 6 - Case No. 3:11-cv-06391-SI challenger to participate in the proceedings.