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Illumina, Inc. vs The Trustees of Columbia University in the City of New York

The detailed information for PTAB case with proceeding number IPR2020-01125 filed by Illumina, Inc. against The Trustees of Columbia University in the City of New York on Jun 19, 2020. This includes filing dates, application numbers, tech centers, patent numbers, and current case status.

Case Details

Proceeding Number: IPR2020-01125
Filing Date: Jun 19, 2020
Petitioner: Illumina, Inc.
Respondent: The Trustees of Columbia University in the City of New York
Status: Terminated-Settled
Respondent Application Number: 16150180
Respondent Tech Center: 1600
Respondent Patent Number: 10457984
Institution Decision Date: Jan 6, 2021
Termination Date: Aug 9, 2021

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.

Show Exhibit Documents

Document Name	Filing Date	Category	Filing Party
Alert me when new update on this case
TERMINATION Due to Settlement After Institution of Trial	Aug 9, 2021	PAPER	BOARD
[Confidential] 2017 Settlement Agreement	Jul 29, 2021	EXHIBIT	PETITIONER
Illumina Updated Exhibit List	Jul 29, 2021	PAPER	PETITIONER
Renewed Joint Motion to Terminate Proceedings	Jul 29, 2021	PAPER	PETITIONER
Renewed Joint Request to File Settlement Agreement as Business Confidential and Keep It Separate From the Patent Files	Jul 29, 2021	PAPER	PETITIONER
Decision - Denying without Prejudice Joint Motion to Terminate Proceedings - Denying without Prejudice Joint Request to File Settlement Agreement as Business Confidential - 35 USC 317; 37 CFR 42.72, 42.74	Jul 23, 2021	PAPER	BOARD
Joint Motion to Terminate Pursuant to 35 U.S.C. 317 AND 37 C.F.R. 42.74	Jul 20, 2021	PAPER	PETITIONER
Joint Request To File Settlement Agreement As Business Confidential And To Keep It Separate From The Patent Files	Jul 20, 2021	PAPER	PETITIONER
Illumina Updated Exhibit List	Jul 20, 2021	PAPER	PETITIONER
Confidential Settlement Agreement	Jul 20, 2021	EXHIBIT	PETITIONER
Notice of Stipulation to Modify Due Date 2	Jul 7, 2021	PAPER	PETITIONER
Notice of Stipulation to Modify Due Dates 2 and 3	Jun 3, 2021	PAPER	PETITIONER
Order Conduct of Proceeding (Revised Scheduling Order)	Apr 29, 2021	PAPER	BOARD
Illumina Objections to Columbia Evidence	Apr 6, 2021	PAPER	PETITIONER
Excerpts from the Ex Parte Reexamination History of U.S. Patent No. 5,808,045	Mar 30, 2021	EXHIBIT	PATENT OWNER
Tabor, S. & C. C. Richardson (1995)	Mar 30, 2021	EXHIBIT	PATENT OWNER
Declaration of Kenneth A. Johnson	Mar 30, 2021	EXHIBIT	PATENT OWNER
Deposition Transcript for Videotaped Deposition of Floyd Romesberg, Ph.D.	Mar 30, 2021	EXHIBIT	PATENT OWNER
Curriculum Vitae of Kenneth A. Johnson, Ph.D.	Mar 30, 2021	EXHIBIT	PATENT OWNER
Columbia EP627 patent	Mar 30, 2021	EXHIBIT	PATENT OWNER
Illumina October 29, 2019 Opposition against Columbia EP627 patent	Mar 30, 2021	EXHIBIT	PATENT OWNER
Illumina March 25, 2021 Response in support of its Opposition against Columbia EP627 patent	Mar 30, 2021	EXHIBIT	PATENT OWNER
Barnes	Mar 30, 2021	EXHIBIT	PATENT OWNER
Johnson, K. A. (1993)	Mar 30, 2021	EXHIBIT	PATENT OWNER
Preliminary Opinion of Opposition Division re: Illumina Opposition against Columbia EP627 patent	Mar 30, 2021	EXHIBIT	PATENT OWNER
Sluis-Cremer, N., D. Arion & M. A. Parniak (2000)	Mar 30, 2021	EXHIBIT	PATENT OWNER
Koshland JR., D. E. (1959)	Mar 30, 2021	EXHIBIT	PATENT OWNER
IPR2018-00291, -00318, -00322, -00385, -00797, March 5, 2019 Oral Hearing Transcript (Paper 62)	Mar 30, 2021	EXHIBIT	PATENT OWNER
Timsit, Y (1999)	Mar 30, 2021	EXHIBIT	PATENT OWNER
Goodman, M. F. & D. K. Fygenson (1998)	Mar 30, 2021	EXHIBIT	PATENT OWNER
Goodman, M. F. & B. Tippin (2000)	Mar 30, 2021	EXHIBIT	PATENT OWNER
Kunkel, T. A. (1985)	Mar 30, 2021	EXHIBIT	PATENT OWNER
Wong, I., S. S. Patel & K. A. Johnson (1991)	Mar 30, 2021	EXHIBIT	PATENT OWNER
Tan, X., C. K. Chu & F. D. Boudinot (1999)	Mar 30, 2021	EXHIBIT	PATENT OWNER
Ito, J. & D. K. Braithwaite (1991)	Mar 30, 2021	EXHIBIT	PATENT OWNER
Updated Exhibit List	Mar 30, 2021	PAPER	PATENT OWNER
Patent Owner Response	Mar 30, 2021	PAPER	PATENT OWNER
Notice of Stipulation	Mar 29, 2021	PAPER	PATENT OWNER
Notice of Deposition	Mar 2, 2021	PAPER	PATENT OWNER
Notice of Stipulation	Feb 26, 2021	PAPER	PATENT OWNER
Illumina's Objections to Admissibility of Columbia Evidence Submitted Before Trial Institution	Jan 22, 2021	PAPER	PETITIONER
Granting Institution of Inter Partes Review 35 U.S.C. sec. 314	Jan 6, 2021	PAPER	BOARD
SCHEDULING ORDER	Jan 6, 2021	PAPER	BOARD
Exhibit 3002	Jan 6, 2021	EXHIBIT	BOARD
Illumina Updated Exhibit List	Dec 28, 2020	PAPER	PETITIONER
Stipulation and Order, DI 74, D. Del.	Dec 28, 2020	EXHIBIT	PETITIONER
Patent Owner Sur-Reply to Petitioner Reply	Nov 19, 2020	PAPER	PATENT OWNER
Patent Owner Updated Exhibit List	Nov 19, 2020	PAPER	PATENT OWNER
Protective Order	Nov 19, 2020	EXHIBIT	PATENT OWNER
Illumina Updated Exhibit List	Nov 12, 2020	PAPER	PETITIONER
DI 31 extension of time	Nov 12, 2020	EXHIBIT	PETITIONER
DI 17 district court scheduling order	Nov 12, 2020	EXHIBIT	PETITIONER
DI 54 joint claim construction brief	Nov 12, 2020	EXHIBIT	PETITIONER
DI 64 Illumina response to motion for reconsideration	Nov 12, 2020	EXHIBIT	PETITIONER
Illumina claim construction presentation	Nov 12, 2020	EXHIBIT	PETITIONER
DI 54 Columbia reply ISO motion for judicial notice	Nov 12, 2020	EXHIBIT	PETITIONER
Illumina Reply to POPR	Nov 12, 2020	PAPER	PETITIONER
DI 7 extension of time	Nov 12, 2020	EXHIBIT	PETITIONER
DI 34 extension of time	Nov 12, 2020	EXHIBIT	PETITIONER
DI 39 extension of time	Nov 12, 2020	EXHIBIT	PETITIONER
DI 45 extension of time	Nov 12, 2020	EXHIBIT	PETITIONER
DI 50 extension of time	Nov 12, 2020	EXHIBIT	PETITIONER
DI 65 extension of time	Nov 12, 2020	EXHIBIT	PETITIONER
Court docket in 19-cv-01681 D. Del. as of 2020-11-11	Nov 12, 2020	EXHIBIT	PETITIONER
District of Delaware standing order	Nov 12, 2020	EXHIBIT	PETITIONER
DI 60 Claim construction order	Nov 12, 2020	EXHIBIT	PETITIONER
DI 55 joint claim construction appendix	Nov 12, 2020	EXHIBIT	PETITIONER
DI 63 Columbia motion for reconsideration	Nov 12, 2020	EXHIBIT	PETITIONER
District court claim construction hearing transcript	Nov 12, 2020	EXHIBIT	PETITIONER
Columbia claim construction presentation	Nov 12, 2020	EXHIBIT	PETITIONER
DI 51 Columbia motion for judicial notice	Nov 12, 2020	EXHIBIT	PETITIONER
DI 53 Illumina opposition to motion for judicial notice	Nov 12, 2020	EXHIBIT	PETITIONER
ORDER - Conduct of the Proceedings - Authorizing Reply and Sur-Reply to Patent Owner's Preliminary Response	Nov 5, 2020	PAPER	BOARD
Email from Petitioner Requesting Authorization to File a Reply Brief (10/30/2020)	Nov 5, 2020	EXHIBIT	BOARD
Defendant Illumina, Inc.¿¿¿s Response to Plaintiffs¿¿¿ Opening Claim Construction Brief	Oct 16, 2020	EXHIBIT	PATENT OWNER
Metzker, et al.,1998	Oct 16, 2020	EXHIBIT	PATENT OWNER
Stemple	Oct 16, 2020	EXHIBIT	PATENT OWNER
Defendant Illumina, Inc. Initial Invalidity Contentions	Oct 16, 2020	EXHIBIT	PATENT OWNER
Rosenthal	Oct 16, 2020	EXHIBIT	PATENT OWNER
Welch & Burgess, 1999	Oct 16, 2020	EXHIBIT	PATENT OWNER
Canard & Sarfati, 1994	Oct 16, 2020	EXHIBIT	PATENT OWNER
IPR2017-02172 Petition for Inter Partes Review of U.S. Patent No. 7,566,537	Oct 16, 2020	EXHIBIT	PATENT OWNER
IPR2017-02172 Preliminary Response of Patent Owner Illumina Cambridge Ltd.	Oct 16, 2020	EXHIBIT	PATENT OWNER
Patent Owner's Preliminary Response	Oct 16, 2020	PAPER	PATENT OWNER
IPR2013-00517 Final Written Decision	Oct 16, 2020	EXHIBIT	PATENT OWNER
U.S. Patent No. 5,808,045	Oct 16, 2020	EXHIBIT	PATENT OWNER
Curriculum Vitae of Kenneth A. Johnson, Ph.D.	Oct 16, 2020	EXHIBIT	PATENT OWNER
IPR2018-00291, IPR2018-00318, IPR2018-00322, IPR2018-00385, IPR2018-00797 Illumina Reply to Patent Owner Opposition to Motion to Exclude	Oct 16, 2020	EXHIBIT	PATENT OWNER
Ronaghi, et al., 1998	Oct 16, 2020	EXHIBIT	PATENT OWNER
Albrecht	Oct 16, 2020	EXHIBIT	PATENT OWNER
Exhibit 8 to Complaint for Patent Infringement	Oct 16, 2020	EXHIBIT	PATENT OWNER
IPR2018-00291, Petition for Inter Partes Review of U.S. Patent No. 9,718,852	Oct 16, 2020	EXHIBIT	PATENT OWNER
U.S. Patent No. 7,566,537	Oct 16, 2020	EXHIBIT	PATENT OWNER
Excerpts of Joint Claim Construction Appendix	Oct 16, 2020	EXHIBIT	PATENT OWNER
IPR2012-00007 Illumina Petition	Oct 16, 2020	EXHIBIT	PATENT OWNER
Docket (D. Del.)	Oct 16, 2020	EXHIBIT	PATENT OWNER
IPR2017-02174 Preliminary Response of Patent Owner Illumina Cambridge Ltd.	Oct 16, 2020	EXHIBIT	PATENT OWNER
IPR2013-00517 Illumina Patent Owner Response	Oct 16, 2020	EXHIBIT	PATENT OWNER
IPR2013-00517 Deposition of Floyd Romesberg, Ph.D., July 8, 2014	Oct 16, 2020	EXHIBIT	PATENT OWNER
IPR2018-00291 Petitioner Reply	Oct 16, 2020	EXHIBIT	PATENT OWNER
IPR2018-00291, IPR2018-00318, IPR2018-00322, IPR2018-00385, IPR2018-00797 Illumina Demonstratives for Oral Hearing	Oct 16, 2020	EXHIBIT	PATENT OWNER
IPR2018-00291 Institution Decision	Oct 16, 2020	EXHIBIT	PATENT OWNER
Kwiatkowski	Oct 16, 2020	EXHIBIT	PATENT OWNER
Brief of Patent Owner-Appellant Illumina Cambridge Ltd.	Oct 16, 2020	EXHIBIT	PATENT OWNER
Jones	Oct 16, 2020	EXHIBIT	PATENT OWNER
Excerpts from the Prosecution History of U.S. Patent No. 9,718,852	Oct 16, 2020	EXHIBIT	PATENT OWNER
Complaint for Patent Infringement	Oct 16, 2020	EXHIBIT	PATENT OWNER
Amended Complaint for Patent Infringement	Oct 16, 2020	EXHIBIT	PATENT OWNER
Exhibit 7 to Complaint for Patent Infringement	Oct 16, 2020	EXHIBIT	PATENT OWNER
Docket (Fed. Cir.)	Oct 16, 2020	EXHIBIT	PATENT OWNER
Zhu, Z., et al., 1994	Oct 16, 2020	EXHIBIT	PATENT OWNER
Joint Claim Construction Brief	Oct 16, 2020	EXHIBIT	PATENT OWNER
IPR2012-00007 Illumina Reply	Oct 16, 2020	EXHIBIT	PATENT OWNER
IPR2012-00007 Illumina Expert Declaration	Oct 16, 2020	EXHIBIT	PATENT OWNER
Claim Construction Order	Oct 16, 2020	EXHIBIT	PATENT OWNER
Plaintiffs Motion for Reconsideration of the Court Claim Construction Order	Oct 16, 2020	EXHIBIT	PATENT OWNER
Defendant Illumina, Inc. Answer to Plaintiffs Motion for Reconsideration of the Court Claim Construction Order	Oct 16, 2020	EXHIBIT	PATENT OWNER
Declaration of Kenneth A. Johnson	Oct 16, 2020	EXHIBIT	PATENT OWNER
Illumina Supplemental Mandatory Notice Adding Counsel	Oct 8, 2020	PAPER	PETITIONER
Decision - Granting Petitioner's Motion for Pro Hac Vice Admission of William R. Zimmerman - 37 CFR 42.10	Oct 1, 2020	PAPER	BOARD
Illumina Unopposed Motion for Wm. Zimmerman to Appear Pro Hac Vice	Aug 28, 2020	PAPER	PETITIONER
Illumina Supplemental Power of Attorney	Aug 28, 2020	PAPER	PETITIONER
Zimmerman Declaration ISO Pro Hac Vice Motion	Aug 28, 2020	EXHIBIT	PETITIONER
Illumina Updated Exhibit List	Aug 28, 2020	PAPER	PETITIONER
Illumina Supplemental Mandatory Notice - Related Matters	Jul 29, 2020	PAPER	PETITIONER
Illumina Supplemental Mandatory Notices	Jul 17, 2020	PAPER	PETITIONER
Notice of Accord Filing Date	Jul 16, 2020	PAPER	BOARD
Patent Owner Mandatory Notices	Jun 30, 2020	PAPER	PATENT OWNER
Patent Owner Power of Attorney	Jun 30, 2020	PAPER	PATENT OWNER
USP 10,407,458	Jun 19, 2020	EXHIBIT	PETITIONER
USP 7,713,698	Jun 19, 2020	EXHIBIT	PETITIONER
USP 9,718,852	Jun 19, 2020	EXHIBIT	PETITIONER
USP 10,407,459	Jun 19, 2020	EXHIBIT	PETITIONER
USP 10,457,984	Jun 19, 2020	EXHIBIT	PETITIONER
USP 7,790,869	Jun 19, 2020	EXHIBIT	PETITIONER
USP 8,088,575	Jun 19, 2020	EXHIBIT	PETITIONER
USP 9,868,985	Jun 19, 2020	EXHIBIT	PETITIONER
IPR2012-00007 FWD	Jun 19, 2020	EXHIBIT	PETITIONER
IPR2013-00011 FWD	Jun 19, 2020	EXHIBIT	PETITIONER
IPR2018-00797 FWD	Jun 19, 2020	EXHIBIT	PETITIONER
USP 5,547,839 - Dower	Jun 19, 2020	EXHIBIT	PETITIONER
Sanger 1977	Jun 19, 2020	EXHIBIT	PETITIONER
USP 5,302,509 - Cheeseman	Jun 19, 2020	EXHIBIT	PETITIONER
Stryer 1995	Jun 19, 2020	EXHIBIT	PETITIONER
Trainor depo transcript excerpts	Jun 19, 2020	EXHIBIT	PETITIONER
USP 9,719,139	Jun 19, 2020	EXHIBIT	PETITIONER
USP 9,708,358	Jun 19, 2020	EXHIBIT	PETITIONER
USP 9,725,480	Jun 19, 2020	EXHIBIT	PETITIONER
IPR2012-00006 FWD	Jun 19, 2020	EXHIBIT	PETITIONER
FWD for IPR2018-00291, -00318, -00322, -00385	Jun 19, 2020	EXHIBIT	PETITIONER
2015-07-17 Federal Circuit Opinion	Jun 19, 2020	EXHIBIT	PETITIONER
WO 91_06678 - Tsien	Jun 19, 2020	EXHIBIT	PETITIONER
Welch 1999	Jun 19, 2020	EXHIBIT	PETITIONER
Alberts, Molecular Biology of the Cell	Jun 19, 2020	EXHIBIT	PETITIONER
Metzker, NAR 1994	Jun 19, 2020	EXHIBIT	PETITIONER
Prober, Science 1987	Jun 19, 2020	EXHIBIT	PETITIONER
USP 5,763,594 - Hiatt	Jun 19, 2020	EXHIBIT	PETITIONER
Pelletier 1994	Jun 19, 2020	EXHIBIT	PETITIONER
Rosenblum 1997	Jun 19, 2020	EXHIBIT	PETITIONER
Menchen depo transcript excerpts	Jun 19, 2020	EXHIBIT	PETITIONER
IPR2018-00385 POPR	Jun 19, 2020	EXHIBIT	PETITIONER
Canard 1995	Jun 19, 2020	EXHIBIT	PETITIONER
Yu 1994	Jun 19, 2020	EXHIBIT	PETITIONER
Livak 1992	Jun 19, 2020	EXHIBIT	PETITIONER
Watson and Crick 1953	Jun 19, 2020	EXHIBIT	PETITIONER
USP 5,151,507 - Hobbs	Jun 19, 2020	EXHIBIT	PETITIONER
Hovinen 1994	Jun 19, 2020	EXHIBIT	PETITIONER
Excerpt from USP 10,428,380 FH	Jun 19, 2020	EXHIBIT	PETITIONER
Ruparel 2005	Jun 19, 2020	EXHIBIT	PETITIONER
2016-05-09 Federal Circuit Opinion	Jun 19, 2020	EXHIBIT	PETITIONER
WO 98_33939 - Anazawa	Jun 19, 2020	EXHIBIT	PETITIONER
WO 98_33939 Anazawa translation	Jun 19, 2020	EXHIBIT	PETITIONER
Greene and Wuts 1999	Jun 19, 2020	EXHIBIT	PETITIONER
Kamal 1999	Jun 19, 2020	EXHIBIT	PETITIONER
IPR2013-00128 FWD	Jun 19, 2020	EXHIBIT	PETITIONER
IPR2013-00266 FWD	Jun 19, 2020	EXHIBIT	PETITIONER
Bi 2006	Jun 19, 2020	EXHIBIT	PETITIONER
Excerpt from USP 9,725,480 FH	Jun 19, 2020	EXHIBIT	PETITIONER
Ireland 1986	Jun 19, 2020	EXHIBIT	PETITIONER
Ju, PNAS 2006	Jun 19, 2020	EXHIBIT	PETITIONER
IPR2013-00517 FWD	Jun 19, 2020	EXHIBIT	PETITIONER
USP 5,449,767 - Ward	Jun 19, 2020	EXHIBIT	PETITIONER
Boss 1976	Jun 19, 2020	EXHIBIT	PETITIONER
Qian 1998	Jun 19, 2020	EXHIBIT	PETITIONER
2016-01-29 Federal Circuit Opinion	Jun 19, 2020	EXHIBIT	PETITIONER
IPR2017-02172 DDI	Jun 19, 2020	EXHIBIT	PETITIONER
IPR2017-02174 DDI	Jun 19, 2020	EXHIBIT	PETITIONER
Meng 2006	Jun 19, 2020	EXHIBIT	PETITIONER
Wu 2007	Jun 19, 2020	EXHIBIT	PETITIONER
Meng Thesis	Jun 19, 2020	EXHIBIT	PETITIONER
Zhang Thesis	Jun 19, 2020	EXHIBIT	PETITIONER
Guo 2008	Jun 19, 2020	EXHIBIT	PETITIONER
Guo Thesis	Jun 19, 2020	EXHIBIT	PETITIONER
Yu Thesis	Jun 19, 2020	EXHIBIT	PETITIONER
Qui Thesis	Jun 19, 2020	EXHIBIT	PETITIONER
Lipshutz 1982	Jun 19, 2020	EXHIBIT	PETITIONER
Romesberg CV	Jun 19, 2020	EXHIBIT	PETITIONER
USP 7,270,951 Stemple	Jun 19, 2020	EXHIBIT	PETITIONER
Gullier Review 2000	Jun 19, 2020	EXHIBIT	PETITIONER
Fields 1994	Jun 19, 2020	EXHIBIT	PETITIONER
IUPAC Nomenclature	Jun 19, 2020	EXHIBIT	PETITIONER
McGraw-Hill dictionary excerpt	Jun 19, 2020	EXHIBIT	PETITIONER
Solomons 1988	Jun 19, 2020	EXHIBIT	PETITIONER
Morrison 1973	Jun 19, 2020	EXHIBIT	PETITIONER
Kim Thesis	Jun 19, 2020	EXHIBIT	PETITIONER
Wu Thesis	Jun 19, 2020	EXHIBIT	PETITIONER
Kraevskii 1987	Jun 19, 2020	EXHIBIT	PETITIONER
Seitz 1997	Jun 19, 2020	EXHIBIT	PETITIONER
Greenberg 1998	Jun 19, 2020	EXHIBIT	PETITIONER
Gigg 1968	Jun 19, 2020	EXHIBIT	PETITIONER
CRC Handbook	Jun 19, 2020	EXHIBIT	PETITIONER
Vollhardt 1994	Jun 19, 2020	EXHIBIT	PETITIONER
Ito 1991	Jun 19, 2020	EXHIBIT	PETITIONER
Sidorova 1997	Jun 19, 2020	EXHIBIT	PETITIONER
Stromskaya 1995	Jun 19, 2020	EXHIBIT	PETITIONER
Dominguez 2000	Jun 19, 2020	EXHIBIT	PETITIONER
Collins 1995	Jun 19, 2020	EXHIBIT	PETITIONER
Haber 1995	Jun 19, 2020	EXHIBIT	PETITIONER
Ikeda 1995	Jun 19, 2020	EXHIBIT	PETITIONER
List of documents Romesberg reviewed	Jun 19, 2020	EXHIBIT	PETITIONER
Ju Declaration and documents from USP 10,457,984 FH	Jun 19, 2020	EXHIBIT	PETITIONER
Bechtereva 1989	Jun 19, 2020	EXHIBIT	PETITIONER
Asakura 1993	Jun 19, 2020	EXHIBIT	PETITIONER
Romesberg Declaration	Jun 19, 2020	EXHIBIT	PETITIONER
2019-04-02 OA from USP 10,457,984 FH	Jun 19, 2020	EXHIBIT	PETITIONER
2019-05-02 applicant arguments from USP 10,457,984 FH	Jun 19, 2020	EXHIBIT	PETITIONER
Petition for Inter Partes Review of U.S. Patent No. 10,457,984	Jun 19, 2020	PAPER	PETITIONER
Petitioner Illumina, Inc. Power of Attorney	Jun 19, 2020	PAPER	PETITIONER