The detailed information for PTAB case with proceeding number IPR2019-00738 filed by Laboratory Corporation of America Holdings against Quest Diagnostics Investments LLC et al. on Feb 25, 2019. This includes filing dates, application numbers, tech centers, patent numbers, and current case status.

Case Details

Proceeding Number
IPR2019-00738
Filing Date
Feb 25, 2019
Petitioner
Laboratory Corporation of America Holdings
Respondent
Quest Diagnostics Investments LLC et al.
Status
Final Written Decision
Respondent Application Number
12946785
Respondent Tech Center
1600
Respondent Patent Number
8409862
Institution Decision Date
Sep 4, 2019
Termination Date
Sep 1, 2020

Proceeding Documents

The table below shows documents filed in the case, listing each document name, filing date, document type, and filing party. Tracking these filings indicates the activity of the parties involved in the case, and the types of documents filed can provide insights into the legal strategies being employed.


Document NameFiling DateCategoryFiling Party

Alert me when new update on this case

Trial Certificate Checklist

Aug 11, 2022PAPERBOARD

Other: fed circuit mandate

Aug 3, 2022PAPERBOARD

Other: other court decision

Aug 3, 2022PAPERBOARD

Patent Owner's Notice of Appeal

Oct 26, 2020PAPERPATENT OWNER

Termination Decision Document

Sep 1, 2020PAPERBOARD

Hearing Transcript

Jun 18, 2020PAPERBOARD

Petitioner's Demonstratives

May 27, 2020EXHIBITPETITIONER

Patent Owner's Hearing Demonstratives

May 27, 2020PAPERPATENT OWNER

Patent Owner's Updated Hearing Demonstratives

May 27, 2020PAPERPATENT OWNER

Granting Request for Oral Argument 37 C.F.R. § 42.70

May 15, 2020PAPERBOARD

Petitioner's Request for Oral Argument

Apr 22, 2020PAPERPETITIONER

Patent Owner's Request for Oral Argument

Apr 22, 2020PAPERPATENT OWNER

Patent Owner's Sur-Reply

Apr 8, 2020PAPERPATENT OWNER

Patent Owner's Objections to Evidence

Mar 4, 2020PAPERPATENT OWNER

Petitioner's Reply to Patent Owner's Response

Feb 26, 2020PAPERPETITIONER

Supplemental Declaration of Rachel J. Watters

Feb 26, 2020EXHIBITPETITIONER

Gillingwater et al., High Throughput Analysis of Plasma Testosterone Using LC-MS/MS

Feb 26, 2020EXHIBITPETITIONER

Deposition Transcript of Patrick M. Sluss, Ph.D.

Feb 26, 2020EXHIBITPETITIONER

Declaration of Christopher Butler

Feb 26, 2020EXHIBITPETITIONER

Soldin & Soldin, Steroid Hormone Analysis by Tandem Mass Spectrometry

Feb 26, 2020EXHIBITPETITIONER

Tornoe et al., Population Pharmacokinetic/Pharmacodynamic (PK/PD) Modelling of theHypothalamic-Pituitary-Gonadal Axis Following Treatment with GnRH Analogues

Feb 26, 2020EXHIBITPETITIONER

Quest Diagnostics v. Lab. Corp.of Am. Holdings, No. 1:18-CV-01436-UNA - Memorandum Order

Feb 26, 2020EXHIBITPETITIONER

Petitioner's Updated Mandatory Notices Pursuant to 37 C.F.R. Section 42.8

Feb 18, 2020PAPERPETITIONER

Patent Owner's Updated Mandatory Notices

Feb 10, 2020PAPERPATENT OWNER

Petitioner's Notice of Deposition of Patrick M. Sluss, PH.D.

Dec 16, 2019PAPERPETITIONER

Joint Stipulation to Adjust the Scheduling Order

Dec 16, 2019PAPERPETITIONER

Petitioner's Objections to Evidence Submitted with Patent Owner's Response

Dec 5, 2019PAPERPETITIONER

Patent Owner's Updated Exhibit List

Dec 5, 2019PAPERPATENT OWNER

Declaration of Robert D. Voyksner, Ph.D. in Support of Actavis¿¿¿s Answering Claim Construction Brief in C.A. No. 16-333 (SLR)(SRF)(D. Delaware)

Nov 27, 2019EXHIBITPATENT OWNER

Kushnir, M. M., Rockwood, A. L., Roberts, W. L., Pattison, E. G., Bunker, A. M., Fitzgerald, R. L., & Meikle, A. W., Performance characteristics of a novel tandem mass spectrometry assay for serum testosterone. Clinical Chemistry, 52(1), 120-128 (2006).

Nov 27, 2019EXHIBITPATENT OWNER

Fitzgerald, R. L., et al., Analysis of testosterone in serum using mass spectrometry. In Clinical Applications of Mass Spectrometry (pp. 489-500). Humana Press (2010)

Nov 27, 2019EXHIBITPATENT OWNER

October 31, 2019 Deposition Transcript of Robert L. Fitzgerald, Ph.D.

Nov 27, 2019EXHIBITPATENT OWNER

Declaration of Dr. Patrick M. Sluss, Ph.D. in Support of Patent Owner¿¿¿s Response to Inter Partes Review of U.S. Patent No. 8,409,862

Nov 27, 2019EXHIBITPATENT OWNER

Annesley, T. M., Ion suppression in mass spectrometry. Clinical chemistry, 49(7), 1041-1044 (2003).

Nov 27, 2019EXHIBITPATENT OWNER

Patent Owner's Response

Nov 27, 2019PAPERPATENT OWNER

Curriculum Vitae of Robert D. Voyksner, Ph.D.

Nov 27, 2019EXHIBITPATENT OWNER

October 10, 2019 Deposition Transcript of Robert D. Voyksner, Ph.D.

Nov 27, 2019EXHIBITPATENT OWNER

October 16, 2019 Deposition Transcript of Rachel J. Watters

Nov 27, 2019EXHIBITPATENT OWNER

Chambers, E., et al., Systematic and comprehensive strategy for reducing matrix effects in LC/MS/MS analyses. Journal of Chromatography B, 852(1-2), 22-34 (2007).

Nov 27, 2019EXHIBITPATENT OWNER

Stone, J. A., & Fitzgerald, R. L., Liquid Chromatography¿¿¿Mass Spectrometry Education for Clinical Laboratory Scientists. Clinics in laboratory medicine, 38(3), 527-537 (2018).

Nov 27, 2019EXHIBITPATENT OWNER

Sciex API LC/MS/MS TurboIonSpray Ion Source Manual (2006).

Nov 27, 2019EXHIBITPATENT OWNER

Biotage SPE Method Development Recommendations

Nov 27, 2019EXHIBITPATENT OWNER

Chapter 1: Overview of Solid-Phase Extraction from Thurman, E. M., Solid-phase extraction: principles and practice. Chemical analysis; 147 (1998).

Nov 27, 2019EXHIBITPATENT OWNER

Wang, C., et al. Measurement of total serum testosterone in adult men: comparison of current laboratory methods versus liquid chromatography-tandem mass spectrometry. The Journal of Clinical Endocrinology & Metabolism 89.2: 534-543 (2004).

Nov 27, 2019EXHIBITPATENT OWNER

Carvalho, V. M. The coming of age of liquid chromatography coupled to tandem mass spectrometry in the endocrinology laboratory. Journal of Chromatography B, 883, 50-58 (2012).

Nov 27, 2019EXHIBITPATENT OWNER

NCCLS, Protocols for Determination of Limits of Detection and Limits of Quantitation; Approved Guideline. 1-39 (2004).

Nov 27, 2019EXHIBITPATENT OWNER

Owen, L. J., and B. G. Keevil. Testosterone measurement by liquid chromatography tandem mass spectrometry: the importance of internal standard choice. Annals of Clinical Biochemistry 49.6: 600-602 (2012).

Nov 27, 2019EXHIBITPATENT OWNER

Soma, L. R., et al. Plasma concentrations of testosterone and 19¿¿¿nortestosterone (nandrolone) in the nonracing intact male horse by liquid chromatography¿¿¿mass spectrometry. Journal of veterinary pharmacology and therapeutics 31.6 587-590 (2008).

Nov 27, 2019EXHIBITPATENT OWNER

Rosner, W., et al. Utility, limitations, and pitfalls in measuring testosterone: an Endocrine Society position statement. The Journal of Clinical Endocrinology & Metabolism 92.2: 405-413 (2006).

Nov 27, 2019EXHIBITPATENT OWNER

Ho, E. N., et al., Control of the misuse of testosterone in castrated horses based on an international threshold in plasma. Drug Testing and Analysis, 7(5): 414-419 (2015).

Nov 27, 2019EXHIBITPATENT OWNER

Van Eeckhaut, A., et al. Validation of bioanalytical LC¿¿¿MS/MS assays: evaluation of matrix effects. Journal of Chromatography B, 877(23), 2198-2207 (2009).

Nov 27, 2019EXHIBITPATENT OWNER

Fitzgerald RL, et al. Analysis of Testosterone in Serum Using Mass Spectrometry. Methods Mol Biol, 603:489-500 (2010).

Nov 27, 2019EXHIBITPATENT OWNER

Patent Owner's Notice of Deposition of Dr. Robert L. Fitzgerald

Oct 15, 2019PAPERPATENT OWNER

Patent Owner's Notice of Deposition of Rachel J. Watters

Sep 26, 2019PAPERPATENT OWNER

Patent Owner's Notice of Deposition of Dr. Robert Voyksner

Sep 26, 2019PAPERPATENT OWNER

Patent Owner's Objections to Evidence

Sep 18, 2019PAPERPATENT OWNER

Institution of Inter Partes Review 35 U.S.C. sec 314(a)

Sep 4, 2019PAPERBOARD

SCHEDULING ORDER

Sep 4, 2019PAPERBOARD

ORDER Granting Patent Owner¿¿¿s Motion for Pro Hac Vice Admission of Thomas H. Wintner

Jul 30, 2019PAPERBOARD

Patent Owner's Sur-Reply to Petitioner's Reply

Jul 15, 2019PAPERPATENT OWNER

Unopposed Motion of Quest Diagnostics Investments LLC for Pro Hac Vice Admission of Thomas H. Wintner

Jul 12, 2019PAPERPATENT OWNER

Petitioner's Updated Exhibit List

Jul 8, 2019PAPERPETITIONER

Transcript of Teleconference Proceedings, held June 27, 2019

Jul 8, 2019EXHIBITPETITIONER

Petitioner's Reply to Patent Owner's Preliminary Response

Jul 8, 2019PAPERPETITIONER

Declaration of Dr. Robert Voyksner

Jul 8, 2019EXHIBITPETITIONER

ORDER Conduct of Proceeding 37 C.F.R. sec 42.5

Jun 27, 2019PAPERBOARD

Declaration of Thomas H. Wintner

Jun 26, 2019EXHIBITPATENT OWNER

Patent Owner's Preliminary Response

Jun 17, 2019PAPERPATENT OWNER

Excerpt from the File History of U.S. Patent No. 7,348,137: January 10, 2007 Non-Final Office Action.

Jun 17, 2019EXHIBITPATENT OWNER

Excerpt from the File History of U.S. Patent No. 7,754,419: April 29, 2009 Non-Final Office Action.

Jun 17, 2019EXHIBITPATENT OWNER

Patent Owner's Updated Mandatory Notices

Jun 17, 2019PAPERPATENT OWNER

Excerpt from the File History of U.S. Patent No. 6,977,143: March 4, 2005 Non-Final Office Action.

Jun 17, 2019EXHIBITPATENT OWNER

Excerpt from the File History of U.S. Patent No. 7,754,419: February 18, 2010 Final Rejection.

Jun 17, 2019EXHIBITPATENT OWNER

Patent Owner's Power of Attorney

Mar 18, 2019PAPERPATENT OWNER

Patent Owner's Mandatory Notices

Mar 18, 2019PAPERPATENT OWNER

Notice of Accord Filing Date

Mar 15, 2019PAPERBOARD

Petition for Inter Partes Review

Feb 25, 2019PAPERPETITIONER

Draisci et al., Quantitation of Anabolic Hormones and Their Metabolites in Bovine Serum and Urine by Liquid Chromatography-Tandem Mass Spectrometry, J. Chromatog

Feb 25, 2019EXHIBITPETITIONER

Fitzgerald and Herold, Serum Total Testosterone: Immunoassay Compared with Negative Chemical Ionization Gas Chromatography, Mass Spectrometry, Clin. Chem

Feb 25, 2019EXHIBITPETITIONER

U.S. Patent. No. 6,977,143 to Caulfield et al.

Feb 25, 2019EXHIBITPETITIONER

U.S. Patent. No. 7,348,137 to Caulfield et al.

Feb 25, 2019EXHIBITPETITIONER

U.S. Patent. No. 8,318,418 to Caulfield et al.

Feb 25, 2019EXHIBITPETITIONER

U.S. Patent. No. 8,329,392 to Caulfield et al.

Feb 25, 2019EXHIBITPETITIONER

Patent Owner Response dated June 11, 2007 for U.S. Patent No. 7,348,137

Feb 25, 2019EXHIBITPETITIONER

Patent Owner Response dated March 16, 2010 for U.S. Patent No. 7,754,419

Feb 25, 2019EXHIBITPETITIONER

Patent Owner Response dated October 28, 2009 for U.S. Patent No. 7,754,419

Feb 25, 2019EXHIBITPETITIONER

U.S. Patent. No. 8,409,862 to Caulfield et al.

Feb 25, 2019EXHIBITPETITIONER

Declaration of Robert L. Fitzgerald, Ph.D., DABCC

Feb 25, 2019EXHIBITPETITIONER

Clarke et al., Determination of Suppressed Testosterone Levels in Human Serum by LC-MS/MS, Proceedings of the 49th ASMS Conference on Mass Spectrometry and Allied Topics, Chicago, Illinois

Feb 25, 2019EXHIBITPETITIONER

U.S. Patent. No. 7,754,419 to Caulfield et al.

Feb 25, 2019EXHIBITPETITIONER

Office Action dated January 10, 2007 for U.S. Patent No. 7,348,137

Feb 25, 2019EXHIBITPETITIONER

Declaration of Christopher Butler

Feb 25, 2019EXHIBITPETITIONER

Armbruster and Pry, Limit of Blank, Limit of Detection and Limit of Quantitation, Clin. Biochem. Rev. 29:S49-S52 (Suppl. 1 2008)

Feb 25, 2019EXHIBITPETITIONER

Herbert and Johnstone, Mass Spectrometry Basics, CRC Press LLC, Boca Raton, Florida, pp. 225-35, 245-52, 261-68, and 413-15 (2002)

Feb 25, 2019EXHIBITPETITIONER

Power of Attorney

Feb 25, 2019PAPERPETITIONER

Examiner¿¿¿s Amendment dated April 12, 2010 for U.S. Patent No. 7,754,419

Feb 25, 2019EXHIBITPETITIONER

File History of U.S. Patent No. 8,409,862

Feb 25, 2019EXHIBITPETITIONER

Declaration of Rachel J. Watters

Feb 25, 2019EXHIBITPETITIONER

Declaration of Catherine Vassilkova

Feb 25, 2019EXHIBITPETITIONER

Taieb et al., Testosterone Measured by 10 Immunoassays and by Isotope-Dilution Gas Chromatography-Mass Spectrometry in Sera from 116 Men, Women, and Children, Clin. Chem. 49(8):1381-95 (2003)

Feb 25, 2019EXHIBITPETITIONER

Fuqua et al., Assay of Plasma Testosterone During the First Six Months of Life: Importance of Chromatographic Purification Of Steroids, Clin. Chem. 41(8):1146-49 (1995)

Feb 25, 2019EXHIBITPETITIONER

Fitzgerald et al., Broad Spectrum Drug Identification Directly from Urine,, Using Liquid Chromatography-Tandem Mass Spectrometry, Clin. Chem. 45(8):1224-34 (1999)

Feb 25, 2019EXHIBITPETITIONER

Legrand et al., Measurement of plasma testosterone by gas chromatography-negative-ion mass spectrometry using pentafluoropropionic derivatives, J. Chromatog. 663:187-92, 189 (1995)

Feb 25, 2019EXHIBITPETITIONER

Vogeser et al., Liquid Chromatography-Tandem Mass Spectrometry, Application in the Clinical Laboratory, Clin. Chem. Lab. Med. 41(2):117-126, 119 (2003)

Feb 25, 2019EXHIBITPETITIONER

U.S. Patent No. 4,452,903 to Lee and Yi

Feb 25, 2019EXHIBITPETITIONER