Throughout this application, various publications are referenced in parentheses by author and year. Full citations for these references may be found at the end of the specification immediately preceding the claims. The disclosures of these publications in their entireties are hereby incorporated by reference into this application to more fully describe the state of the art to which this invention pertains.
The ability to sequence deoxyribonucleic acid (DNA) accurately and rapidly is revolutionizing biology and medicine. The confluence of the massive Human Genome Project is driving an exponential growth in the development of high throughput genetic analysis technologies. This rapid technological development involving chemistry, engineering, biology, and computer science makes it possible to move from studying single genes at a time to analyzing and comparing entire genomes.
With the completion of the first entire human genome sequence map, many areas in the genome that are highly polymorphic in both exons and introns will be known. The pharmacogenomics challenge is to comprehensively identify the genes and functional polymorphisms associated with the variability in drug response (Roses, 2000). Resequencing of polymorphic areas in the genome that are linked to disease development will contribute greatly to the understanding of diseases, such as cancer, and therapeutic development. Thus, high-throughput accurate methods for resequencing the highly variable intron/exon regions of the genome are needed in order to explore the full potential of the complete human genome sequence map. The current state-of-the-art technology for high throughput DNA sequencing, such as used for the Human Genome Project (Pennisi 2000), is capillary array DNA sequencers using laser induced fluorescence detection (Smith et al., 1986; Ju et al. 1995, 1996; Kheterpal et al. 1996; Salas-Solano et al. 1998). Improvements in the polymerase that lead to uniform termination efficiency and the introduction of thermostable polymerases have also significantly improved the quality of sequencing data (Tabor and Richardson, 1987, 1995). Although capillary array DNA sequencing technology to some extent addresses the throughput and read length requirements of large scale DNA sequencing projects, the throughput and accuracy required for mutation studies needs to be improved for a wide variety of applications ranging from disease gene discovery to forensic identification. For example, electrophoresis based DNA sequencing methods have difficulty detecting heterozygotes unambiguously and are not 100% accurate in regions rich in nucleotides comprising guanine or cytosine due to compressions (Bowling et al. 1991; Yamakawa et al. 1997). In addition, the first few bases after the priming site are often masked by the high fluorescence signal from excess dye-labeled primers or dye-labeled terminators, and are therefore difficult to identify. Therefore, the requirement of electrophoresis for DNA sequencing is still the bottleneck for high-throughput DNA sequencing and mutation detection projects.
The concept of sequencing DNA by synthesis without using electrophoresis was first revealed in 1988 (Hyman, 1988) and involves detecting the identity of each nucleotide as it is incorporated into the growing strand of DNA in a polymerase reaction. Such a scheme coupled with the chip format and laser-induced fluorescent detection has the potential to markedly increase the throughput of DNA sequencing projects. Consequently, several groups have investigated such a system with an aim to construct an ultra high-throughput DNA sequencing procedure (Cheeseman 1994, Metzker et al. 1994). Thus far, no complete success of using such a system to unambiguously sequence DNA has been reported. The pyrosequencing approach that employs four natural nucleotides (comprising a base of adenine (A), cytosine (C), guanine (G), or thymine (T)) and several other enzymes for sequencing DNA by synthesis is now widely used for mutation detection (Ronaghi 1998). In this approach, the detection is based on the pyrophosphate (PPi) released during the DNA polymerase reaction, the quantitative conversion of pyrophosphate to adenosine triphosphate (ATP) by sulfurylase, and the subsequent production of visible light by firefly luciferase. This procedure can only sequence up to 30 base pairs (bps) of nucleotide sequences, and each of the 4 nucleotides needs to be added separately and detected separately. Long stretches of the same bases cannot be identified unambiguously with the pyrosequencing method.
More recent work in the literature exploring DNA sequencing by a synthesis method is mostly focused on designing and synthesizing a photocleavable chemical moiety that is linked to a fluorescent dye to cap the 3′-OH group of deoxynucleoside triphosphates (dNTPs) (Welch et al. 1999). Limited success for the incorporation of the 3′-modified nucleotide by DNA polymerase is reported. The reason is that the 3′-position on the deoxyribose is very close to the amino acid residues in the active site of the polymerase, and the polymerase is therefore sensitive to modification in this area of the deoxyribose ring. On the other hand, it is known that modified DNA polymerases (Thermo Sequenase and Taq FS polymerase) are able to recognize nucleotides with extensive modifications with bulky groups such as energy transfer dyes at the 5-position of the pyrimidines (T and C) and at the 7-position of purines (G and A) (Rosenblum et al. 1997, Zhu et al. 1994). The ternary complexes of rat DNA polymerase, a DNA template-primer, and dideoxycytidine triphosphate (ddCTP) have been determined (Pelletier et al. 1994) which supports this fact. As shown in
The approach disclosed in the present application is to make nucleotide analogues by linking a unique label such as a fluorescent dye or a mass tag through a cleavable linker to the nucleotide base or an analogue of the nucleotide base, such as to the 5-position of the pyrimidines (T and C) and to the 7-position of the purines (G and A), to use a small cleavable chemical moiety to cap the 3′-OH group of the deoxyribose to make it nonreactive, and to incorporate the nucleotide analogues into the growing DNA strand as terminators. Detection of the unique label will yield the sequence identity of the nucleotide. Upon removing the label and the 3′-OH capping group, the polymerase reaction will proceed to incorporate the next nucleotide analogue and detect the next base.
It is also desirable to use a photocleavable group to cap the 3′-OH group. However, a photocleavable group is generally bulky and thus the DNA polymerase will have difficulty to incorporate the nucleotide analogues containing a photocleavable moiety capping the 3′-OH group. If small chemical moieties that can be easily cleaved chemically with high yield can be used to cap the 3′-OH group, such nucleotide analogues should also be recognized as substrates for DNA polymerase. It has been reported that 3′-O-methoxy-deoxynucleotides are good substrates for several polymerases (Axelrod et al. 1978). 3′-O-allyl-dATP was also shown to be incorporated by Ventr(exo−) DNA polymerase in the growing strand of DNA (Metzker et al. 1994). However, the procedure to chemically cleave the methoxy group is stringent and requires anhydrous conditions. Thus, it is not practical to use a methoxy group to cap the 3′-OH group for sequencing DNA by synthesis. An ester group was also explored to cap the 3′-OH group of the nucleotide, but it was shown to be cleaved by the nucleophiles in the active site in DNA polymerase (Canard et al. 1995). Chemical groups with electrophiles such as ketone groups are not suitable for protecting the 3′-OH of the nucleotide in enzymatic reactions due to the existence of strong nucleophiles in the polymerase. It is known that MOM (—CH2OCH3) and allyl (—CH2CH═CH2) groups can be used to cap an —OH group, and can be cleaved chemically with high yield (Ireland et al. 1986; Kamal et al. 0.1999). The approach disclosed in the present application is to incorporate nucleotide analogues, which are labeled with cleavable, unique labels such as fluorescent dyes or mass tags and where the 3′-OH is capped with a cleavable chemical moiety such as either a MOM group (—CH2OCH3) or an allyl group (—CH2CH═CH2), into the growing strand DNA as terminators. The optimized nucleotide set (3′-RO-A-LABEL1, 3′-RO-C-LABEL2, 3′-RO-G-LABEL3, 3′-RO-T-LABEL4, where R denotes the chemical group used to cap the 3′-OH) can then be used for DNA sequencing by the synthesis approach.
There are many advantages of using mass spectrometry (MS) to detect small and stable molecules. For example, the mass resolution can be as good as one dalton. Thus, compared to gel electrophoresis sequencing systems and the laser induced fluorescence detection approach which have overlapping fluorescence emission spectra, leading to heterozygote detection difficulty, the MS approach disclosed in this application produces very high resolution of sequencing data by detecting the cleaved small mass tags instead of the long DNA fragment. This method also produces extremely fast separation in the time scale of microseconds. The high resolution allows accurate digital mutation and heterozygote detection. Another advantage of sequencing with mass spectrometry by detecting the small mass tags is that the compressions associated with gel based systems are completely eliminated.
In order to maintain a continuous hybridized primer extension product with the template DNA, a primer that contains a stable loop to form an entity capable of self-priming in a polymerase reaction can be ligated to the 3′ end of each single stranded DNA template that is immobilized on a solid surface such as a chip. This approach will solve the problem of washing off the growing extension products in each cycle.
Saxon and Bertozzi (2000) developed an elegant and highly specific coupling chemistry linking a specific group that contains a phosphine moiety to an azido group on the surface of a biological cell. In the present application, this coupling chemistry is adopted to create a solid surface which is coated with a covalently linked phosphine moiety, and to generate polymerase chain reaction (PCR) products that contain an azido group at the 5′ end for specific coupling of the DNA template with the solid surface. One example of a solid surface is glass channels which have an inner wall with an uneven or porous surface to increase the surface area. Another example is a chip.
The present application discloses a novel and advantageous system for DNA sequencing by the synthesis approach which employs a stable DNA template, which is able to self prime for the polymerase reaction, covalently linked to a solid surface such as a chip, and 4 unique nucleotides analogues (3′-RO-A-LABEL1, 3′-RO-C-LABEL2, 3′-RO-G-LABEL3, 3′-RO-T-LABEL4). The success of this novel system will allow the development of an ultra high-throughput and high fidelity DNA sequencing system for polymorphism, pharmacogenetics applications and for whole genome sequencing. This fast and accurate DNA resequencing system is needed in such fields as detection of single nucleotide polymorphisms (SNPs) (Chee et al. 1996), serial analysis of gene expression (SAGE) (Velculescu et al. 1995), identification in forensics, and genetic disease association studies.
This invention is directed to a method for sequencing a nucleic acid by detecting the identity of a nucleotide analogue after the nucleotide analogue is incorporated into a growing strand of DNA in a polymerase reaction, which comprises the following steps:
The invention provides a method of attaching a nucleic acid to a solid surface which comprises:
The invention provides a nucleotide analogue which comprises:
The invention provides a parallel mass spectrometry system, which comprises a plurality of atmospheric pressure chemical ionization mass spectrometers for parallel analysis of a plurality of samples comprising mass tags.
The following definitions are presented as an aid in understanding this invention.
As used herein, to cap an —OH group means to replace the “H” in the —OH group with a chemical group. As disclosed herein, the —OH group of the nucleotide analogue is capped with a cleavable chemical group. To uncap an —OH group means to cleave the chemical group from a capped —OH group and to replace the chemical group with “H”, i.e., to replace the “R” in —OR with “H” wherein “R” is the chemical group used to cap the —OH group.
The nucleotide bases are abbreviated as follows: adenine (A), cytosine (C), guanine (G), thymine (T), and uracil (U).
An analogue of a nucleotide base refers to a structural and functional derivative of the base of a nucleotide which can be recognized by polymerase as a substrate.
That is, for example, an analogue of adenine (A) should form hydrogen bonds with thymine (T), a C analogue should form hydrogen bonds with G, a G analogue should form hydrogen bonds with C, and a T analogue should form hydrogen bonds with A, in a double helix format. Examples of analogues of nucleotide bases include, but are not limited to, 7-deaza-adenine and 7-deaza-guanine, wherein the nitrogen atom at the 7-position of adenine or guanine is substituted with a carbon atom.
A nucleotide analogue refers to a chemical compound that is structurally and functionally similar to the nucleotide, i.e. the nucleotide analogue can be recognized by polymerase as a substrate. That is, for example, a nucleotide analogue comprising adenine or an analogue of adenine should form hydrogen bonds with thymine, a nucleotide analogue comprising C or an analogue of C should form hydrogen bonds with G, a nucleotide analogue comprising G or an analogue of G should form hydrogen bonds with C, and a nucleotide analogue comprising T or an analogue of T should form hydrogen bonds with A, in a double helix format. Examples of nucleotide analogues disclosed herein include analogues which comprise an analogue of the nucleotide base such as 7-deaza-adenine or 7-deaza-guanine, wherein the nitrogen atom at the 7-position of adenine or guanine is substituted with a carbon atom. Further examples include analogues in which a label is attached through a cleavable linker to the 5-position of cytosine or thymine or to the 7-position of deaza-adenine or deaza-guanine. Other examples include analogues in which a small chemical moiety such as —CH2OCH3 or —CH2CH═CH2 is used to cap the —OH group at the 3′-position of deoxyribose. Analogues of dideoxynucleotides can similarly be prepared.
As used herein, a porous surface is a surface which contains pores or is otherwise uneven, such that the surface area of the porous surface is increased relative to the surface area when the surface is smooth.
The present invention is directed to a method for sequencing a nucleic acid by detecting the identity of a nucleotide analogue after the nucleotide analogue is incorporated into a growing strand of DNA in a polymerase reaction, which comprises the following steps:
In one embodiment of any of the nucleotide analogues described herein, the nucleotide base is adenine. In one embodiment, the nucleotide base is guanine. In one embodiment, the nucleotide base is cytosine. In one embodiment, the nucleotide base is thymine. In one embodiment, the nucleotide base is uracil. In one embodiment, the nucleotide base is an analogue of adenine. In one embodiment, the nucleotide base is an analogue of guanine. In one embodiment, the nucleotide base is an analogue of cytosine. In one embodiment, the nucleotide base is an analogue of thymine. In one embodiment, the nucleotide base is an analogue of uracil.
In different embodiments of any of the inventions described herein, the solid surface is glass, silicon, or gold. In different embodiments, the solid surface is a magnetic bead, a chip, a channel in a chip, or a porous channel in a chip. In one embodiment, the solid surface is glass. In one embodiment, the solid surface is silicon. In one embodiment, the solid surface is gold. In one embodiments, the solid surface is a magnetic bead. In one embodiment, the solid surface is a chip. In one embodiment, the solid surface is a channel in a chip. In one embodiment, the solid surface is a porous channel in a chip. Other materials can also be used as long as the material does not interfere with the steps of the method.
In one embodiment, the step of attaching the nucleic acid to the solid surface comprises:
In one embodiment, the step of coating the solid surface with the phosphine moiety comprises:
In one embodiment, the nucleic acid that is attached to the solid surface is a single-stranded deoxyribonucleic acid (DNA). In another embodiment, the nucleic acid that is attached to the solid surface in step (i) is a double-stranded DNA, wherein only one strand is directly attached to the solid surface, and wherein the strand that is not directly attached to the solid surface is removed by denaturing before proceeding to step (ii). In one embodiment, the nucleic acid that is attached to the solid surface is a ribonucleic acid (RNA), and the polymerase in step (iii) is reverse transcriptase.
In one embodiment, the primer is attached to a 3′ end of the nucleic acid in step (ii), and the attached primer comprises a stable loop and an —OH group at a 3′-position of a deoxyribose capable of self-priming in the polymerase reaction. In one embodiment, the step of attaching the primer to the nucleic acid comprises hybridizing the primer to the nucleic acid or ligating the primer to the nucleic acid. In one embodiment, the primer is attached to the nucleic acid through a ligation reaction which links the 3′ end of the nucleic acid with the 5′ end of the primer.
In one embodiment, one or more of four different nucleotide analogs is added in step (iii), wherein each different nucleotide analogue comprises a different base selected from the group consisting of thymine or uracil or an analogue of thymine or uracil, adenine or an analogue of adenine, cytosine or an analogue of cytosine, and guanine or an analogue of guanine, and wherein each of the four different nucleotide analogues comprises a unique label.
In one embodiment, the cleavable chemical group that caps the —OH group at the 3′-position of the deoxyribose in the nucleotide analogue is —CH2OCH3 or —CH2CH═CH2. Any chemical group could be used as long as the group 1) is stable during the polymerase reaction, 2) does not interfere with the recognition of the nucleotide analogue by polymerase as a substrate, and 3) is cleavable.
In one embodiment, the unique label that is attached to the nucleotide analogue is a fluorescent moiety or a fluorescent semiconductor crystal. In further embodiments, the fluorescent moiety is selected from the group consisting of 5-carboxyfluorescein, 6-carboxyrhodamine-6G, N,N,N′,N′-tetramethyl-6-carboxyrhodamine, and 6-carboxy-X-rhodamine. In one embodiment, the fluorescent moiety is 5-carboxyfluorescein. In one embodiment, the fluorescent moiety is 6-carboxyrhodamine-6G, N,N,N′,N′-tetramethyl-6-carboxyrhodamine. In one embodiment, the fluorescent moiety is 6-carboxy-X-rhodamine.
In one embodiment, the unique label that is attached to the nucleotide analogue is a fluorescence energy transfer tag which comprises an energy transfer donor and an energy transfer acceptor. In further embodiments, the energy transfer donor is 5-carboxyfluorescein or cyanine, and wherein the energy transfer acceptor is selected from the group consisting of dichlorocarboxyfluorescein, dichloro-6-carboxyrhodamine-6G, dichloro-N,N,N′,N′-tetramethyl-6-carboxyrhodamine, and dichloro-6-carboxy-X-rhodamine. In one embodiment, the energy transfer acceptor is dichlorocarboxyfluorescein. In one embodiment, the energy transfer acceptor is dichloro-6-carboxyrhodamine-6G. In one embodiment, the energy transfer acceptor is dichloro-N,N,N′,N′-tetramethyl-6-carboxyrhodamine. In one embodiment, the energy transfer acceptor is dichloro-6-carboxy-X-rhodamine.
In one embodiment, the unique label that is attached to the nucleotide analogue is a mass tag that can be detected and differentiated by a mass spectrometers: In further embodiments, the mass tag is selected from the group consisting of a 2-nitro-α-methyl-benzyl group, a 2-nitro-α-methyl-3-fluorobenzyl group, a 2-nitro-α-methyl-3,4-difluorobenzyl group, and a 2-nitro-α-methyl-3,4-dimethoxybenzyl group. In one embodiment, the mass tag is a 2-nitro-α-methyl-benzyl group. In one embodiment, the mass tag is a 2-nitro-α-methyl-3-fluorobenzyl group. In one embodiment, the mass tag is a 2-nitro-α-methyl-3,4-difluorobenzyl group. In one embodiment, the mass tag is a 2-nitro-α-methyl-3,4-dimethoxybenzyl group. In one embodiment, the mass tag is detected using a parallel mass spectrometry system which comprises a plurality of atmospheric pressure chemical ionization mass spectrometers for parallel analysis of a plurality of samples comprising mass tags.
In one embodiment, the unique label is attached through a cleavable linker to a 5-position of cytosine or thymine or to a 7-position of deaza-adenine or deaza-guanine. The unique label could also be attached through a cleavable linker to another position in the nucleotide analogue as long as the attachment of the label is stable during the polymerase reaction and the nucleotide analog can be recognized by polymerase as a substrate. For example, the cleavable label could be attached to the deoxyribose.
In one embodiment, the linker between the unique label and the nucleotide analogue is cleaved by a means selected from the group consisting of one or more of a physical means, a chemical means, a physical chemical means, heat, and light. In one embodiment, the linker is cleaved by a physical means. In one embodiment, the linker is cleaved by a chemical means. In one embodiment, the linker is cleaved by a physical chemical means. In one embodiment, the linker is cleaved by heat. In one embodiment, the linker is cleaved by light. In one embodiment, the linker is cleaved by ultraviolet light. In a further embodiment, the cleavable linker is a photocleavable linker which comprises a 2-nitrobenzyl moiety.
In one embodiment, the cleavable chemical group used to cap the —OH group at the 3′-position of the deoxyribose is cleaved by a means selected from the group consisting of one or more of a physical means, a chemical means, a physical chemical means, heat, and light. In one embodiment, the linker is cleaved by a physical chemical means. In one embodiment, the linker is cleaved by heat. In one embodiment, the linker is cleaved by light. In one embodiment, the linker is cleaved by ultraviolet light.
In one embodiment, the chemical compounds added in step (vi) to permanently cap any unreacted —OH group on the primer attached to the nucleic acid or on the primer extension strand are a polymerase and one or more different dideoxynucleotides or analogues of dideoxynucleotides. In further embodiments, the different dideoxynucleotides are selected from the group consisting of 2′,3′-dideoxyadenosine 5′-triphosphate, 2′,3′-dideoxyguanosine 5′-triphosphate, 2′,3′-dideoxycytidine 5′-triphosphate, 2′,3′-dideoxythymidine 5′-triphosphate, 2′,3′-dideoxyuridine 5′-triphosphase, and their analogues. In one embodiment, the dideoxynucleotide is 2′,3′-dideoxyadenosine 5′-triphosphate. In one embodiment, the dideoxynucleotide is 2′,3′-dideoxyguanosine 5′-triphosphate. In one embodiment, the dideoxynucleotide is 2′,3′-dideoxycytidine 5′-triphosphate. In one embodiment, the dideoxynucleotide is 2′,3′-dideoxythymidine 5′-triphosphate. In one embodiment, the dideoxynucleotide is 2′,3′-dideoxyuridine 5′-triphosphase. In one embodiment, the dideoxynucleotide is an analogue of 2′,3′-dideoxyadenosine 5′-triphosphate. In one embodiment, the dideoxynucleotide is an analogue of 2′,3′-dideoxyguanosine 5′-triphosphate. In one embodiment, the dideoxynucleotide is an analogue of 2′,3′-dideoxycytidine 5′-triphosphate. In one embodiment, the dideoxynucleotide is an analogue of 2′,3′-dideoxythymidine 5′-triphosphate. In one embodiment, the dideoxynucleotide is an analogue of 2′,3′-dideoxyuridine 5′-triphosphase.
In one embodiment, a polymerase and one or more of four different dideoxynucleotides are added in step (vi), wherein each different dideoxynucleotide is selected from the group consisting of 2′,3′-dideoxyadenosine 5′-triphosphate or an analogue of 2′,3′-dideoxyadenosine 5′-triphosphate; 2′,3′-dideoxyguanosine 5′-triphosphate or an analogue of 2′,3′-dideoxyguanosine 5′-triphosphate; 2′,3′-dideoxycytidine 5′-triphosphate or an analogue of 2′,3′-dideoxycytidine 5′-triphosphate; and 2′,3′-dideoxythymidine 5′-triphosphate or 2′,3′-dideoxyuridine 5′-triphosphase or an analogue of 2′,3′-dideoxythymidine 5′-triphosphate or an analogue of 2′,3′-dideoxyuridine 5′-triphosphase. In one embodiment, the dideoxynucleotide is 2′,3′-dideoxyadenosine 5′-triphosphate. In one embodiment, the dideoxynucleotide is an analogue of 2′,3′-dideoxyadenosine 5′-triphosphate. In one embodiment, the dideoxynucleotide is 2′,3′-dideoxyguanosine 5′-triphosphate. In one embodiment, the dideoxynucleotide is an analogue of 2′,3′-dideoxyguanosine 5′-triphosphate. In one embodiment, the dideoxynucleotide is 2′,3′-dideoxycytidine 5′-triphosphate. In one embodiment, the dideoxynucleotide is an analogue of 2′,3′-dideoxycytidine 5′-triphosphate. In one embodiment, the dideoxynucleotide is 2′,3′-dideoxythymidine 5′-triphosphate. In one embodiment, the dideoxynucleotide is 2′,3′-dideoxyuridine 5′-triphosphase. In one embodiment, the dideoxynucleotide is an analogue of 2′,3′-dideoxythymidine 5′-triphosphate. In one embodiment, the dideoxynucleotide is an analogue of 2′,3′-dideoxyuridine 5′-triphosphase.
Another type of chemical compound that reacts specifically with the —OH group could also be used to permanently cap any unreacted —OH group on the primer attached to the nucleic acid or on an extension strand formed by adding one or more nucleotides or nucleotide analogues to the primer.
The invention provides a method for simultaneously sequencing a plurality of different nucleic acids, which comprises simultaneously applying any of the methods disclosed herein for sequencing a nucleic acid to the plurality of different nucleic acids. In different embodiments, the method can be used to sequence from one to over 100,000 different nucleic acids simultaneously.
The invention provides for the use of any of the methods disclosed herein for detection of single nucleotide polymorphisms, genetic mutation analysis, serial analysis of gene expression, gene expression analysis, identification in forensics, genetic disease association studies, DNA sequencing, genomic sequencing, translational analysis, or transcriptional analysis.
The invention provides a method of attaching a nucleic acid to a solid surface which comprises:
In one embodiment, the step of coating the solid surface with the phosphine moiety comprises:
In different embodiments, the solid surface is glass, silicon, or gold. In different embodiments, the solid surface is a magnetic bead, a chip, a channel in an chip, or a porous channel in a chip.
In different embodiments, the nucleic acid that is attached to the solid surface is a single-stranded or double-stranded DNA or a RNA. In one embodiment, the nucleic acid is a double-stranded DNA and only one strand is attached to the solid surface. In a further embodiment, the strand of the double-stranded DNA that is not attached to the solid surface is removed by denaturing.
The invention provides for the use of any of the methods disclosed herein for attaching a nucleic acid to a surface for gene expression analysis, microarray based gene expression analysis, or mutation detection, translational analysis, transcriptional analysis, or for other genetic applications.
The invention provides a nucleotide analogue which comprises:
In one embodiment of the nucleotide analogue, the cleavable chemical group that caps the —OH group at the 3′-position of the deoxyribose is —CH2OCH3 or —CH2CH═CH2.
In one embodiment, the unique label is a fluorescent moiety or a fluorescent semiconductor crystal. In further embodiments, the fluorescent moiety is selected from the group consisting of 5-carboxyfluorescein, 6-carboxyrhodamine-6G, N,N,N′,N′-tetramethyl-6-carboxyrhodamine, and 6-carboxy-X-rhodamine.
In one embodiment, the unique label is a fluorescence energy transfer tag which comprises an energy transfer donor and an energy transfer acceptor. In further embodiments, the energy transfer donor is 5-carboxyfluorescein or cyanine, and wherein the energy transfer acceptor is selected from the group consisting of dichlorocarboxyfluorescein, dichloro-6-carboxyrhodamine-6G, dichloro-N,N,N′,N′-tetramethyl-6-carboxyrhodamine, and dichloro-6-carboxy-X-rhodamine.
S In one embodiment, the unique label is a mass tag that can be detected and differentiated by a mass spectrometer. In further embodiments, the mass tag is selected from the group consisting of a 2-nitro-α-methyl-benzyl group, a 2-nitro-α-methyl-3-fluorobenzyl group, a 2-nitro-α-methyl-3,4-difluorobenzyl group, and a 2-nitro-α-methyl-3,4-dimethoxybenzyl group.
In one embodiment, the unique label is attached through a cleavable linker to a 5-position of cytosine or thymine or to a 7-position of deaza-adenine or deaza-guanine. The unique label could also be attached through a cleavable linker to another position in the nucleotide analogue as long as the attachment of the label is stable during the polymerase reaction and the nucleotide analog can be recognized by polymerase as a substrate. For example, the cleavable label could be attached to the deoxyribose.
In one embodiment, the linker between the unique label and the nucleotide analogue is cleavable by a means selected from the group consisting of one or more of a physical means, a chemical means, a physical chemical means, heat, and light. In a further embodiment, the cleavable linker is a photocleavable linker which comprises a 2-nitrobenzyl moiety.
In one embodiment, the cleavable chemical group used to cap the —OH group at the 3′-position of the deoxyribose is cleavable by a means selected from the group consisting of one or more of a physical means, a chemical means, a physical chemical means, heat, and light.
In different embodiments, the nucleotide analogue is selected from the group consisting of:
In different embodiments, the nucleotide analogue is selected from the group consisting of:
In different embodiments, the nucleotide analogue is selected from the group consisting of:
In different embodiments, the nucleotide analogue is selected from the group consisting of:
The invention provides for the use any of the nucleotide analogues disclosed herein for detection of single nucleotide polymorphisms, genetic mutation analysis, serial analysis of gene expression, gene expression analysis, identification in forensics, genetic disease association studies, DNA sequencing, genomic sequencing, translational analysis, or transcriptional analysis.
The invention provides a parallel mass spectrometry system, which comprises a plurality of atmospheric pressure chemical ionization mass spectrometers for parallel analysis of a plurality of samples comprising mass tags. In one embodiment, the mass spectrometers are quadrupole mass spectrometers. In one embodiment, the mass spectrometers are time-of-flight mass spectrometers. In one embodiment, the mass spectrometers are contained in one device. In one embodiment, the system further comprises two turbo-pumps, wherein one pump is used to generate a vacuum and a second pump is used to remove undesired elements. In one embodiment, the system comprises at least three mass spectrometers. In one embodiment, the mass tags have molecular weights between 150 daltons and 250 daltons. The invention provides for the use of the system for DNA sequencing analysis, detection of single nucleotide polymorphisms, genetic mutation analysis, serial analysis of gene expression, gene expression analysis, identification in forensics, genetic disease association studies, DNA sequencing, genomic sequencing, translational analysis, or transcriptional analysis.
This invention will be better understood from the Experimental Details which follow. However, one skilled in the art will readily appreciate that the specific methods and results discussed are merely illustrative of the invention as described more fully in the claims which follow thereafter.
1. The Sequencing by Synthesis Approach
Sequencing DNA by synthesis involves the detection of the identity of each nucleotide as it is incorporated into the growing strand of DNA in the polymerase reaction. The fundamental requirements for such a system to work are: (1) the availability of 4 nucleotide analogues (aA, aC, aG, aT) each labeled with a unique label and containing a chemical moiety capping the 3′-OH group; (2) the 4 nucleotide analogues (aA, aC, aG, aT) need to be efficiently and faithfully incorporated by DNA polymerase as terminators in the polymerase reaction; (3) the tag and the group capping the 3′-OH need to be removed with high yield to allow the incorporation and detection of the next nucleotide; and (4) the growing strand of DNA should survive the washing, detection and cleavage processes to remain annealed to the DNA template.
The sequencing by synthesis approach disclosed herein is illustrated in
As shown in
It is a routine procedure now to immobilize high density (>10,000 spots per chip) single stranded DNA on a 4 cm×1 cm glass chip (Schena et al. 1995). Thus, in the DNA sequencing system disclosed herein, more than 10,000 bases can be identified after each cycle and after 100 cycles, a million base pairs will be generated from one sequencing chip.
Possible DNA polymerases include Thermo Sequenase, Taq FS DNA polymerase, T7 DNA polymerase, and Vent (exo−) DNA polymerase. The fluorescence emission from each specific dye can be detected using a fluorimeter that is equipped with an accessory to detect fluorescence from a glass slide. For large scale evaluation, a multi-color scanning system capable of detecting multiple different fluorescent dyes (500 nm-700 nm) (GSI Lumonics ScanArray 5000 Standard Biochip Scanning System) on a glass slide can be used.
An example of the sequencing by synthesis approach using mass tags is shown in
Since the development of new ionization techniques such as matrix assisted laser desorption ionization (MALDI) and electrospray ionization (ESI), mass spectrometry has become an indispensable tool in many areas of biomedical research. Though these ionization methods are suitable for the analysis of bioorganic molecules, such as peptides and proteins, improvements in both detection and sample preparation are required for implementation of mass spectrometry for DNA sequencing applications. Since the approach disclosed herein uses small and stable mass tags, there is no need to detect large DNA sequencing fragments directly and it is not necessary to use MALDI or ESI methods for detection. Atmospheric pressure chemical ionization (APCI) is an ionization method that uses a gas-phase ion-molecular reaction at atmospheric pressure (Dizidic et al. 1975). In this method, samples are introduced by either chromatography or flow injection into a pneumatic nebulizer where they are converted into small droplets by a high-speed beam of nitrogen gas. When the heated gas and solution arrive at the reaction area, the excess amount of solvent is ionized by corona discharge. This ionized mobile phase acts as the ionizing agent toward the samples and yields pseudo molecular (M+H)+ and (M−H)− ions. Due to the corona discharge ionization method, high ionization efficiency is attainable, maintaining stable ionization conditions with detection sensitivity lower than femtomole region for small and stable organic compounds. However, due to the limited detection of large molecules, ESI and MALDI have replaced APCI for analysis of peptides and nucleic acids. Since in the approach disclosed the mass tags to be detected are relatively small and very stable organic molecules, the ability to detect large biological molecules gained by using ESI and MALDI is not necessary. APCI has several advantages over ESI and MALDI because it does not require any tedious sample preparation such as desalting or mixing with matrix to prepare crystals on a target plate. In ESI, the sample nature and sample preparation conditions (i.e. the existence of buffer or inorganic salts) suppress the ionization efficiency. MALDI requires the addition of matrix prior to sample introduction into the mass spectrometer and its speed is often limited by the need to search for an ideal irradiation spot to obtain interpretable mass spectra. These limitations are overcome by APCI because the mass tag solution can be injected directly with no additional sample purification or preparation into the mass spectrometer. Since the mass tagged samples are volatile and have small mass numbers, these compounds are easily detectable by APCI ionization with high sensitivity. This system can be scaled up into a high throughput operation.
Each component of the sequencing by synthesis system is described in more detail below.
2. Construction of a Surface Containing Immobilised Self-Primed DNA Moiety
The single stranded DNA template immobilized on a surface is prepared according to the scheme shown in rigure 3. The surface can be, for example, a glass chip, such as a 4 cm×1 cm glass chip, or channels in a glass chip. The surface is first treated with 0.5 M NaOH, washed with water, and then coated with high density 3-aminopropyltrimethoxysilane in aqueous ethanol (Woolley et al. 1994) forming a primary amine surface. N-Hydroxy Succinimidyl (NHS) ester of triarylphosphine (1) is covalently coupled with the primary amine group converting the amine surface to a novel triarylphosphine surface, which specifically reacts with DNA containing an azido group (2) forming a chip with immobilized DNA. Since the azido group is only located at the 5′ end of the DNA and the coupling reaction is through the unique reaction of the triarylphosphine moiety with the azido group in aqueous solution (Saxon and Bertozzi 2000), such a DNA surface will provide an optimal condition for hybridization.
The NHS ester of triarylphosphine (1) is prepared according to the scheme shown in
The azido labeled DNA (2) is synthesized according to the scheme shown in
The self-primed DNA template moiety on the sequencing chip is constructed as shown in
3. Sequencing by Synthesis Evaluation Using Nucleotide Analogues 3′-HO-A-Dye1, 3′-HO-CD-Dye2, 3′-HO-G-Dye3, 3′-HO-T-Dye4
A scheme has been developed for evaluating the photocleavage efficiency using different dyes and testing the sequencing by synthesis approach. Four nucleotide analogues 3′-HO-A-Dye1, 3′-HO-C-Dye2, 3′-HO-G-Dy3, 3′-HO-T=Dye4 each labeled with a unique fluorescent dye through a photocleavable linker are synthesized and used in the sequencing by synthesis approach. Examples of dyes include, but are not limited to: Dye1=FAM, 5-carboxyfluorescein; Dye2=R6G, 6-carboxyrhodamine-6G; Dye3=TAM, N,N,N′,N′-tetramethyl-6-carboxyrhodamine; and Dye4=ROX, 6-carboxy-X-rhodamine. The structures of the 4 nucleotide analogues are shown in
The photocleavable 2-nitrobenzyl moiety has been used to link biotin to DNA and protein for efficient removal by UV light (˜350 nm) (Olejnik et al. 1995, 1999). In the approach disclosed herein the 2-nitrobenzyl group is used to bridge the fluorescent dye and nucleotide together to form the dye labeled nucleotides as shown in
As a representative example, the synthesis of 3′-HO-G-Dye3 (Dye3=Tam) is shown in
Results on Photochemical Cleavage Efficiency
The expected photolysis products of DNA containing a photocleavable fluorescent dye at the 3′ end of the DNA are shown in
A photolysis setup can be used which allows a high throughput of monochromatic light from a 1000 watt high pressure xenon lamp (LX1000UV, ILC) in conjunction with a monochromator (Kratos, Schoeffel Instruments). This instrument allows the evaluation of the photocleavage of model systems as a function of the intensity and excitation wavelength of the absorbed light. Standard analytical analysis is used to determine the extent of photocleavage. From this information, the efficiency of the photocleavage as a function of wavelength can be determined. The wavelength at which photocleavage occurs most efficiently can be selected as for use in the sequencing system.
Photocleavage results have been obtained using a model system as shown in
4. Sequencing by Synthesis Evaluation Using Nucleotide Analogues 3′-Ro-A-Dye1, 3′-RO-C-Dye2, 3′-Ro-G-Dye3, 3′-RO-T-Dye4
Once the steps and conditions in Section 3 are optimized, the synthesis of nucleotide analogues 3′-RO-A-Dye1, 3′-ROC-Dye2, 3′-RO-G-Dye3, 3′-RO-T-Dye4 can be pursued for further study of the system. Here the 3′-OH is capped in all four nucleotide analogues, which then can be mixed together with DNA polymerase and used to evaluate the sequencing system using the scheme in
5. Using Energy Transfer Coupled Dyes to Optimize the Sequencing by Synthesis System
The spectral property of the fluorescent tags can be optimized by using energy transfer (ET) coupled dyes. The ET primer and ET dideoxynucleotides have been shown to be a superior set of reagents for 4-color DNA sequencing that allows the use of one laser to excite multiple sets of fluorescent tags (Ju et al. 1995). It has been shown that DNA polymerase (Thermo Sequenase and Taq FS) can efficiently incorporate the ET dye labeled dideoxynucleotides (Rosenblum et al. 1997). These ET dye-labeled sequencing reagents are now widely used in large scale DNA sequencing projects, such as the human genome project. A library of ET dye labeled nucleotide analogues can be synthesized as shown in
6. Sequencing by Synthesis Evaluation Using Nucleotide Analogues 3′-HO-A-Tag1, 3′-HO-C-Tag2, 3′-HO-G-Tag3, 3′-HO-T-Tag4
The precursors of four examples of mass tags are shown in
Different combinations of mass tags and nucleotides can be used, as indicated by the general scheme: 3′-HO-A-Tag1, 3′-HO-C-Tag2, 3′-HO-G-Tag3, 3′-HO-T-Tag4 where Tag1, Tag2, Tag3, and Tag4 are four different unique cleavable mass tags. Four specific examples of nucleotide analogues are shown in
As a representative example, the synthesis of the NHS ester of one mass tag (Tag-3) is shown in
The sequencing by synthesis approach can be tested using mass tags using a scheme similar to that show for dyes in
The synthesis of nucleotide analogues 3′-RO-A-Tag1, 3′-RO-C-Tag2, 3′-RO-G-Tag3, 3′-RO-T-Tag4 can be pursued for further study of the system a discussed above for the case where the unique labels are dyes. Here the 3′-OH is capped in all four nucleotide analogues, which then can be mixed together with DNA polymerase and used to evaluate the sequencing system using a scheme similar to that in
7. Parallel Channel System for Sequencing by Synthesis
The sequencing system also permits a number of channels other than 96 to be used. 96 channel devices for separating DNA sequencing and sizing fragments have been reported (Woolley and Mathies 1994, Woolley et al. 1997, Simpson et al. 1998). The chip is made by photolithographic masking and chemical etching techniques. The photolithographically defined channel patterns are etched in a silica glass substrate, and then capillary channels (id˜100 μm) are formed by thermally bonding the etched substrate to a second silica glass slide. Channels are porous to increase surface area. The immobilized single stranded DNA template chip is prepared according to the scheme shown in
b. Parallel Mass Tag Sequencing by Synthesis System
The approach disclosed herein comprises detecting four unique photoreleased mass tags, which can have molecular weights from 150 to 250 daltons, to decode the DNA sequence, thereby obviating the issue of detecting large DNA fragments using a mass spectrometer as well as the stringent sample requirement for using mass spectrometry to directly detect long DNA fragments. It takes 10 seconds or less to analyze each mass tag using the APCI mass spectrometer. With 8 miniaturized APCI mass spectrometers in a system, close to 100,000 bp of high quality digital DNA sequencing data could be generated each day by each instrument using this approach. Since there is no separation and purification requirements using this approach, such a system is cost effective.
To make mass spectrometry competitive with a 96 capillary array method for analyzing DNA, a parallel mass spectrometer approach is needed. Such a complete system has not been reported mainly due to the fact that most of the mass spectrometers are designed to achieve adequate resolution for large biomolecules. The system disclosed herein requires the detection of four mass tags, with molecular weight range between 150 and 250 daltons, coding for the identity of the four nucleotides (A, C, G, T). Since a mass spectrometer dedicated to detection of these mass tags only requires high resolution for the mass range of 150 to 250 daltons instead of covering a wide mass range, the mass spectrometer can be miniaturized and have a simple design. Either quadrupole (including ion trap detector) or time-of-flight mass spectrometers can be selected for the ion optics. While modern mass spectrometer technology has made it possible to produce miniaturized mass spectrometers, most current research has focused on the design of a single stand-alone miniaturized mass spectrometer. Individual components of the mass spectrometer has been miniaturized for enhancing the mass spectrometer analysis capability (Liu et al. 2000, Zhang et al. 1999). A miniaturized mass spectrometry system using multiple analyzers (up to 10) in parallel has been reported (Badman and Cooks 2000). However, the mass spectrometer of Badman and Cook was designed to measure only single samples rather than multiple samples in parallel. They also noted that the miniaturization of the ion trap limited the capability of the mass spectrometer to scan wide mass ranges. Since the approach disclosed herein focuses on detecting four small stable mass tags (the mass range is less than 300 daltons), multiple miniaturized APCI mass spectrometers are easily constructed and assembled into a single unit for parallel analysis of the mass tags for DNA sequencing analysis.
A complete parallel mass spectrometry system includes multiple APCI sources interfaced with multiple analyzers, coupled with appropriate electronics and power supply configuration. A mass spectrometry system with parallel detection capability will overcome the throughput bottleneck issue for application in DNA analysis. A parallel system containing multiple mass spectrometers in a single device is illustrated in
As illustrated in
9. Validate the Complete Sequencing by Synthesis System by Sequencing P53 Genes
The tumor suppressor gene p53 can be used as a model system to validate the DNA sequencing system. The p53 gene is one of the most frequently mutated genes in human cancer (O'Connor et al. 1997). First, a base pair DNA template (shown below) is synthesized containing an azido group at the 5′ end and a portion of the sequences from exon 7 and exon 8 of the p53 gene:
This template is chosen to explore the use of the sequencing system for the detection of clustered hot spot single base mutations. The potentially mutated bases are underlined (A, G, C and T) in the synthetic template. The synthetic template is immobilized on a sequencing chip or glass channels, then the loop primer is ligated to the immobilized template as described in
This application is a continuation of U.S. Ser. No. 14/670,748, filed Mar. 27, 2015, now pending, which is a continuation of U.S. Ser. No. 13/959,660, filed Aug. 5, 2013, now U.S. Pat. No. 9,133,511, issued Sep. 15, 2015, which is a continuation of U.S. Ser. No. 13/672,437, filed Nov. 8, 2012, now abandoned, which is a continuation of U.S. Ser. No. 13/339,089, filed Dec. 28, 2011, now abandoned, which is a continuation of U.S. Ser. No. 12/804,284, filed Jul. 19, 2010, now U.S. Pat. No. 8,088,575, issued Jan. 3, 2012, which is a continuation of U.S. Ser. No. 11/810,509, filed Jun. 5, 2007, now U.S. Pat. No. 7,790,869, issued Sep. 7, 2010, which is a continuation of U.S. Ser. No. 10/702,203, filed Nov. 4, 2003, now U.S. Pat. No. 7,345,159, issued Mar. 18, 2008, which is a divisional of U.S. Ser. No. 09/972,364, filed Oct. 5, 2001, now U.S. Pat. No. 6,664,079, issued Dec. 16, 2003, claiming the benefit of U.S. Provisional Application No. 60/300,894, filed Jun. 26, 2001, and is a continuation-in-part of U.S. Ser. No. 09/684,670, filed Oct. 6, 2000, now abandoned, the contents of each of which are hereby incorporated their entireties into this application.
This invention was made with government support under grant no. BES0097793 awarded by the National Science Foundation. The government has certain rights in the invention.
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WO 2004055160 | Jul 2004 | WO |
WO 2005084367 | Sep 2005 | WO |
WO 200673436 | Jul 2006 | WO |
WO 2007002204 | Jan 2007 | WO |
WO 200762105 | May 2007 | WO |
WO 2008069973 | Jun 2008 | WO |
WO 2012083249 | Jun 2012 | WO |
WO 2012162429 | Nov 2012 | WO |
WO 2013154999 | Oct 2013 | WO |
WO 2013191793 | Dec 2013 | WO |
WO 2014144883 | Sep 2014 | WO |
WO 2014144898 | Sep 2014 | WO |
WO 2015123430 | Aug 2015 | WO |
WO 2015148402 | Oct 2015 | WO |
WO 2015179284 | Nov 2015 | WO |
Entry |
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Trustees of Columbia University in the City of New York v. Illumina, Inc., Nos. 2014-1547, 2014-1548, and 2014-1550 (Fed. Cir. Jul. 17, 2015). |
Illumina Cambridge Ltd. v. Intelligent Bio-Systems, Inc., Nos. 167. 2015-1123 and 2015-1243 (Fed. Cir. Jan. 29, 2016). |
Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., No. 2015-1693 (Fed. Cir. May 9, 2016). |
Declaration of Michael Metzker in Opposition to Plaintiffs' Motion for Preliminary Injunction, Illumina, Inc. v. Qiagen, N.V., No. 3:16-cv-02788-WHA (N.D. Cal. Jul. 25, 2016) (Doc. 76), first made publicly available Aug. 25, 2016. |
Notice of Motion to Stay Injunction Pending Appeal or, Alternatively, Pending Decision by the Federal Circuit on Stay Pending Appeal, Illumina, Inc. v. Qiagen, N.V., No. 3:16-cv-02788-WHA (N.D. Cal. Sep. 15, 2016) (Doc. 122) (Redacted Version of Document Sought to be Sealed), first made publicly available Sep. 22, 2016. |
Sep. 23, 2016 Response to May 24, 2016 Communication Pursuant to Article 94(3) EPC filed with the European Patent Office in connection with European Patent Application No. 15195765.1. |
Oct. 3, 2012 Petition for Inter Partes Review of U.S. Pat. No. 8,088,575. |
Oct. 3, 2012 Motion to Waive Page Limit and Proposed Petition in connection with Petition for Inter Partes Review of U.S. Pat. No. 8,088,575. |
Jan. 7, 2013 Preliminary Response under 37 C.F.R. 42.107 in connection with IPR2013-00011. |
Mar. 12, 2013 Decision on Petition for Inter Partes Review in connection with IPR2013-00011. |
Mar. 26, 2013 Request for Reconsideration in connection with IPR2013-00011. |
Mar. 26, 2013 Request for Rehearing under 37 C.F.R. 42.71 of Decision to Institute Inter Partes Review in connection with IPR2013-00011. |
Apr. 26, 2013 Opposition to Request for Reconsideration (Rehearing) Under 37 C.F.R. 42.71.(C) in connection with IPR2013-00011. |
May 10, 2013 Decision on Request for Rehearing in connection with IPR2013-00011. |
Jun. 25, 2013 Motion to Amend Under 37 C.F.R. 42.121 in connection with IPR2013-00011. |
Aug. 30, 2013 Substitute Patent Owner Response Under 37 C.F.R. 42.120 in connection with IPR2013-00011. |
Sep. 27, 2013 Petitioner Opposition to Motion to Amend in connection with IPR2013-00011. |
Sep. 27, 2013 Petitioner Reply to Response to Petition in connection with IPR2013-00011. |
Nov. 18, 2013 Substitute Patent Owner Reply on Motion to Amend in connection with IPR2013-00011. |
Exhibit 1021, filed Oct. 3, 2012 in connection with IPR2013-00011: Oct. 2, 2012 Declaration of George Weinstock Under Rule 37 C.F.R. §1.132. |
Exhibit 1022, filed Oct. 3, 2012 in connection with IPR2013-00011: Excerpts of File History of U.S. Pat. No. 8,088,575. |
Exhibit 1053, filed Sep. 27, 2013 in connection with IPR2013-00011: Sep. 27, 2013 Declaration of Kevin Burgess. |
Exhibit 2033, filed Aug. 30, 2013 in connection with IPR2013-00011: Jun. 25, 2013 Substitute Declaration of Dr. George L. Trainor [redacted]. |
Nov. 12, 2013 Petitioner Motion to Exclude Evidence in connection with IPR2012-00007. |
Nov. 12, 2013 Patent Owner Motion for Observations on the Cross-Examination Testimony of Kevin Burgess, Ph.D. in connection with IPR2012-00007. |
Nov. 12, 2013 Patent Owner Motion to Exclude Evidence in connection with IPR2012-00007. |
Nov. 26, 2013 Petitioner's Response to Motion for Observations in connection with IPR2013-00011. |
Nov. 26, 2013 Patent Owner's Opposition to Petitioner's Motion to Exclude in connection with IPR2013-00011. |
Nov. 26, 2013 Petitioner's Opposition to Motion to Exclude in connection with IPR2013-00011. |
Dec. 3, 2013 Petitioner Reply to Patent Owner's Opposition to Motion to Exclude in connection with IPR2013-00011. |
Dec. 3, 2013 Patent Owner Reply on Motion to Exclude in connection with IPR2013-00011. |
Mar. 6, 2014 Final Written Decision in connection with IPR2013-00011. |
Amendment in Response to the Jul. 3, 2017 Summons to Attend Oral Proceedings Pursuant to Rule 115(1) EPC, filed on Mar. 12, 2018 with the European Patent Office in connection with a European counterpart of the subject application, European Patent Application No. EP15195765.1. |
Result of Consultation, issued on Mar. 20, 2018 in connection with a European counterpart of the subject application, European Patent Application No. EP15195765.1. |
Amendment in Response to the Jul. 3, 2017 Summons to Attend Oral Proceedings Pursuant to Rule 115(1) EPC, filed on Apr. 5, 2018 in connection with a European counterpart of the subject application, European Patent Application No. EP15195765.1. |
Notice of Allowance dated Jun. 23, 2017 by the United States Patent Office in connection with U.S. Appl. No. 15/167,917, Ju et al. |
Preliminary Amendment filed on Jul. 12, 2017 in connection with U.S. Appl. No. 15/647,657, Jingyue Ju et al. |
Patent Owner Response (Public version) filed by the Trustees of Columbia University in the City of New York (“Columbia”) dated Oct. 26, 2018, in connection with IPRs Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322, and IPR2018-00385. |
Patent Owner Response (Public version) filed by Columbia on Oct. 26, 2018, in connection with IPR No. IPR2018-00797. |
Transcript for the Deposition of Dr. Floyd Romesberg, Sep. 19-20, 2018, in IPR2018-00291, -00318, -00322, and -00385 (Original Transcript) (Exhibit 2096 filed by Columbia in connection with IPRs Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322, IPR2018-00385, and IPR2018-00797). |
Transcript for the Deposition of Dr. Floyd Romesberg, Oct. 9, 2018, in IPR2018-00797 (Exhibit 2113 filed by Columbia in connection with IPRs Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322, IPR2018-00385, and IPR2018-00797). |
Transcript for the Deposition of Dr. Floyd Romesberg, Sep. 19-20, 2018, in IPR2018-00291, -00318, -00322, and -00385 (Exhibit 2126 (Revised transcript) filed by Columbia in connection with IPRs Nos. IPR2018-00291, IPR2018-00318 , IPR2018-00322 , IPR2018-00385 , and IPR2018-00797). |
Declaration of Steven M. Menchen, Ph.D., Oct. 26, 2018 (IPR2018-00291, -00318, -00322, and -00385) (Exhibit 2116 filed by Columbia in connection with IPRs Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322, and IPR2018-00385). |
Declaration of Steven M. Menchen, Ph.D., Oct. 26, 2018 (IPR2018-00797) (Exhibit 2114 filed by Columbia in connection with IPR No. IPR2018-00797). |
Documents Considered by Dr. Menchen for Declaration of Steven M. Menchen, Ph.D., Oct. 26, 2018 (Items 6 and 7) (Exhibit 2108 file by Columbia in connection with IPRs Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322, IPR2018-00385, and IPR2018-00797). |
Sep. 16, 2012 Petition for Inter Partes Review of U.S. Pat. No. 7,790,869. |
Sep. 17, 2012 Motion to Waive Page Limit and Proposed Petition in connection with Petition for Inter Partes Review of U.S. Pat. No. 7,790,869. |
Dec. 21, 2012 Preliminary Response under 37 C.F.R. 42.107 in connection with IPR2012-00007. |
Mar. 12, 2013 Decision on Petition for Inter Partes Review in connection with IPR2012-00007. |
Mar. 26, 2013 Request for Reconsideration in connection with IPR2012-00007. |
Mar. 26, 2013 Request for Rehearing under 37 C.F.R. 42.71 of Decision to Institute Inter Partes Review in connection with IPR2012-00007. |
Apr. 26, 2013 Opposition to Request for Reconsideration (Rehearing) Under 37 C.F.R. 42.71.(C) in connection with IPR2012-00007. |
May 10, 2013 Decision on Request for Rehearing in connection with IPR2012-00007. |
Aug. 30, 2013 Substitute Patent Owner Response Under 37 C.F.R. 42.120 in connection with IPR2012-00007. |
Aug. 30, 2013 Substitute Patent Owner Motion to Amend Under 37 C.F.R. 42.121 in connection with IPR2012-00007. |
Sep. 27, 2013 Petitioner Opposition to Motion to Amend in connection with IPR2012-00007. |
Sep. 27, 2013 Petitioner Reply to Response to Petition in connection with IPR2012-00007. |
Nov. 18, 2013 Substitute Patent Owner Reply on Motion to Amend in connection with IPR2012-00007. |
Exhibit 1022, filed Sep. 16, 2012 in connection with IPR2012-00007: Excerpts of File History of U.S. Pat. No. 7,790,869. |
Exhibit 1053, filed Sep. 27, 2013 in connection with IPR2012-00007: Sep. 27, 2013 Declaration of Kevin Burgess. |
Exhibit 2001, filed Dec. 21, 2012 in connection with IPR2012-00007: Composition of a Nucleotide. |
Exhibit 2033, filed Aug. 30, 2013 in connection with IPR2012-00007: Jun. 25, 2013 Substitute Declaration of Dr. George L. Trainor [redacted]. |
Nov. 26, 2013 Petitioner's Response to Motion for Observations in connection with IPR2012-00007. |
Nov. 26, 2013 Patent Owner's Opposition to Petitioner's Motion to Exclude in connection with IPR2012-00007. |
Nov. 26, 2013 Petitioner's Opposition to Motion to Exclude in connection with IPR2012-00007. |
Dec. 3, 2013 Petitioner Reply to Patent Owner's Opposition to Motion to Exclude in connection with IPR2012-00007. |
Dec. 3, 2013 Patent Owner Reply on Motion to Exclude in connection with IPR2012-00007. |
Mar. 6, 2014 Final Written Decision in connection with IPR2012-00007. |
Final Written Decision entered dated Jun. 21, 2019, in connection with IPRs Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322, and IPR2018-00385. |
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Notification of Transmittal of International Search Report and Written Opinion, dated May 22, 2008 in connection with International Application No. PCT/US06/45180. |
International Preliminary Report on Patentability dated Sep. 5, 2006 in connection with PCT/US05/06960. |
International Search Report dated Oct. 29, 2007 in connection with PCT International Application No. PCT/US07/13559. |
Supplementary European Search Report dated Feb. 9, 2007 in connection with European Patent Application No. 03764568.6. |
Supplementary European Search Report dated Sep. 9, 2008 in connection with PCT International Application No. PCT/US05/06960. |
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International Preliminary Examination Report dated Mar. 17, 2003 in connection with PCT/US02/09752. |
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Written Opinion of the International Searching Authority dated Oct. 27, 2005 in connection with PCT/US05/06960. |
Written Opinion of the International Searching Authority dated Dec. 15, 2006 in connection with PCT/US05/13883. |
International Search Report dated Jun. 8, 2004 in connection with PCT/US03/39354. |
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U.S. Appl. No. 12/804,025, filed Jul. 13, 2010, Balasubramanian et al. |
U.S. Appl. No. 10/227,131, filed Aug. 23, 2002, Barnes et al. |
May 4, 2013 Petition for Inter Partes Review of U.S. Pat. No. 8,158,346, dated Apr. 17, 2012. |
Aug. 5, 2013 Patent Owner Preliminary Response to Petition for Inter Partes Review of U.S. Pat. No. 8,158,346, issued Apr. 17, 2012. |
Exhibit 1012, filed May 4, 2013 in connection with IPR2013-00266: Excerpts from the '346 Patent File History. |
Exhibit 1013, filed May 4, 2013 in connection with IPR2013-00266: Excerpts from the file history of European Patent Application No. 02781434.2. |
Oct. 28, 2013 Decision Instituting Inter Partes Review in connection with IPR2013-00266. |
Dec. 30, 2013 Illumina Motion to Amend Under 37 C.F.R. §42.121 in connection with IPR2013-00266. |
Exhibits 2004, 2005, and 2028, filed Dec. 30, 2013 in connection with IPR2013-00266: Floyd Romesburg Declaration, CV, and List of Documents Considered by Romesburg. |
Exhibit 2021, filed Dec. 30, 2013 in connection with IPR2013-00266: Bystrom, Branchaud et al., “ATP Analogs with Non-transferable Groups in the g Position as Inhibitors of Glycerol Kinase” Bioorganic & Medicinal Chemistry Letters, 7:2613-2616 (1997). |
Exhibit 2024, filed Dec. 30, 2013 in connection with IPR2013-00266: Excerpts from Oct. 3, 2013 Bruce Branchaud Deposition Transcript in IPR2013-00128. |
Petitioner's Feb. 28, 2014 Opposition to Patentee Motion to Amend in connection with IPR2013-00266. |
May 4, 2013 Petition for Inter Partes Review of U.S. Pat. No. 8,158,346, issued Apr. 17, 2012. |
Aug. 5, 2013 Patent Owner Preliminary Response to Petition for Inter Partes Review of U.S. Pat. No. 8,158,246, issued Apr. 17, 2012. |
Exhibit 1021, filed Feb. 28, 2014 in connection with IPR2013-00266: Second Declaration of Dr. Bruce Branchaud in support of Intelligent Bio-Systems, Inc.'s Opposition to Illumina's Motion to Amend, from Feb. 28, 2014. |
Exhibit 1022, filed Feb. 28, 2014 in connection with IPR2013-00266: Deposition of Floyd Romesberg, Ph.D., from Jan. 14, 2014. |
Exhibit 1029, filed Feb. 28, 2014 in connection with IPR2013-00266: Deposition of Eric Vermaas from Jan. 13, 2014. |
Exhibit 1035, filed Feb. 28, 2014 in connection with IPR2013-00266: Excerpts from Protective Groups in Organic Synthesis (Theodora W. Greene & Peter G. M. Wuts eds., John Wiley & Sons, Inc. 3rd ed. 1999) (1991). |
Exhibit 1038, filed Feb. 28, 2014 in connection with IPR2013-00266: Zavgorodny et al., “1-Alkylthioalkylation of Nucleoside Hydroxyl Functions and Its Synthetic Applications: A New Versatile Method in Nucleoside Chemistry” 32 Tetrahedron Letters 7593 (1991). |
Mar. 21, 2014 Patent Owner's Reply to Petitioner's Opposition to Patent Owner's Motion to Amend in connection with IPR2013-00266. |
Exhibit 2030, filed Mar. 21, 2014 in connection with IPR2013-00266: Mar. 11, 2014 Bruce Branchaud Deposition Transcript. |
Exhibit 2032, filed Mar. 21, 2014 in connection with IPR2013-00266: Excerpts from Feb. 11, 2014 Bruce Branchaud Deposition Transcript in related IPR2013-00128. |
Exhibit 2043, filed Mar. 21, 2014 in connection with IPR2013-00266: English translation of Loubinoux et al., “Protection of Phenols by the Azidomethylene Group Application to the Synthesis of Unstable Phenols” Tetrahedron, 44:6055-6064 (1988). |
Exhibit 2044, filed Mar. 21, 2014 in connection with IPR2013-00266: Excerpts from Oct. 3, 2013 Bruce Branchaud Deposition Transcript in related Inter Partes Review IPR2013-00128. |
Exhibit 2045, filed Mar. 21, 2014 in connection with IPR2013-00266: Welch et al., “Syntheses of Nucleosides Designed for Combinatorial DNA Sequencing” Chem. Eur. J., 5:951-960 (1999). |
Exhibit 2046, filed Mar. 21, 2014 in connection with IPR2013-00266: Welch et al., Corrigenda to “Syntheses of Nucleosides Designed for Combinatorial DNA Sequencing” Chem. Eur. J., 11:7145 (2005). |
Exhibit 2047, filed Mar. 21, 2014 in connection with IPR2013-00266: Wu et al., “Termination of DNA synthesis by N6-alkylated, not 3′-0-alkylated, photocleavable 2′-deoxyadenosine triphosphates”, Nucleic Acids Research 35:6339-6349 (2007). |
Exhibit 2048, filed Mar. 21, 2014 in connection with IPR2013-00266: Taylor et al., “Rise per base pair in helices of double-stranded rotavirus RNA determined by electron microscopy” Virus Research, 2:175-182 (1985). |
Exhibit 2049, filed Mar. 21, 2014 in connection with IPR2013-00266: Watson et al., Molecular Biology of the Gene, Fifth Edition, Chapter 6 (2004). |
Exhibit 2050, filed Mar. 21, 2014 in connection with IPR2013-00266: Shen et al., “RNA structure at high resolution” FASEB J., 9:1023-1033 (1995). |
Exhibit 2051, filed Mar. 21, 2014 in connection with IPR2013-00266: Holtzman et al., “Electron microscopy of complexes of isolated acetylcholine receptor, biotinyl-toxin, and avidin” Proc. Natl. Acad. Sci. USA, 79:310-314 (1982). |
Exhibit 2052, filed Mar. 21, 2014 in connection with IPR2013-00266: Pugliese et al., “Three-dimensional Structure of the Tetragonal Crystal Form of Egg-white Avidin in its Functional Complex with Biotin at 2.7 Angstrom Resolution” Journal of Molecular Biology, 231:698-710 (1993). |
Exhibit 2053, filed Mar. 21, 2014 in connection with IPR2013-00266: Fersht, “Fidelity of replication of phage ΦX174 DNA by DNA polymerase III holoenzyme: Spontaneous mutation by misincorporation” Proc. Natl. Acad. Sci. USA, 76:4946-4950 (1979). |
Exhibit 2054, filed Mar. 21, 2014 in connection with IPR2013-00266: Fersht et al., “DNA polymerase accuracy and spontaneous mutation rates: Frequencies of purine-purine, purine-pyrimidine, and pyrimidine-pyrimidine mismatches during Dna replication” Proc. Natl. Acad. Sci. USA, 78:4251-4255 (1981). |
Exhibit 2055, filed Mar. 21, 2014 in connection with IPR2013-00266: Bebenek et al., “Frameshift errors initiated by nucleotide misincorporation” Proc. Natl. Acad. Sci. USA, 87:4946-4950 (1990). |
Exhibit 2056, filed Mar. 21, 2014 in connection with IPR2013-00266: Bebenek et al., “The Effects of dNTP Pool Imbalances on Frameshift Fidelity during DNA Replication” J. Biol. Chem., 267:3589-3596 (1992). |
Exhibit 2057, filed Mar. 21, 2014 in connection with IPR2013-00266: Greene and Wuts, Protective Groups in Organic Synthesis, 3rd ed., Chapter 1 (1999). |
Apr. 18, 2014 Petitioner Motion for Observations on the Cross-Examination Testimony of Dr. Romesberg, in connection with IPR2013-00266. |
Apr. 18, 2014 Petitioner Motion to Exclude Evidence in connection with IPR2013-00266. |
Exhibit 1042, filed Apr. 18, 2014 in connection with IPR2013-00266: Apr. 10, 2014 transcript of Deposition of Floyd Romesberg. |
Apr. 18, 2014 Patentee Motion to Exclude Evidence in connection with IPR2013-00266. |
May 2, 2014 Patentee Response to Petitioner Motion for Observations on Romesberg Testimony, in connection with IPR 2013-00266. |
Exhibit 1045, filed May 22, 2014 in connection with IPR2013-00266: Petitioner Demonstratives for May 28, 2014 Oral Hearing. |
Exhibit 2060, filed May 22, 2014 in connection with IPR2013-00266: Patentee Demonstratives for May 28, 2014 Oral Hearing. |
Transcript of May 28, 2014 Oral Hearing in IPR2013-00266, entered Jul. 8, 2014. |
Oct. 28, 2014 Final Written Decision in connection with IPR2013-00266. |
Patent Owner Preliminary Response filed by the Trustees of Columbia University in the City of New York Mar. 27, 2018, in connection with Case No. IPR2018-00291. |
Patent Owner Preliminary Response filed by the Trustees of Columbia University in the City of New York Apr. 9, 2018, in connection with Case No. IPR2018-00318. |
Patent Owner Preliminary Response filed by the Trustees of Columbia University in the City of New York Apr. 9, 2018, in connection with Case No. IPR2018-00322. |
Patent Owner Preliminary Response filed by the Trustees of Columbia University in the City of New York May 4, 2018, in connection with Case No. IPR2018-00385. |
Patent Owner Preliminary Response filed by the Trustees of Columbia University in the City of New York Jul. 6, 2018, in connection with Case No. IPR2018-00797. |
Decision on Institution of Inter Partes Review Under 35 U.S.C. § 314(a) of U.S. Pat. No. 9,718,852 B2, issued on Jun. 25, 2018 in connection with Case No. IPR2018-00291. |
Decision on Institution of Inter Partes Review Under 35 U.S.C. § 314(a) of U.S. Pat. No. 9,719,139 B2, issued on Jul. 3, 2018 in connection with Case No. IPR2018-00318. |
Decision on Institution of Inter Partes Review Under 35 U.S.C. § 314(a) of U.S. Pat. No. 9,708,358 B2, issued on Jul. 3, 2018 in connection with Case No. IPR2018-00322. |
Jun. 4, 2013 Petition for Inter Partes Review of U.S. Pat. No. 7,057,026. |
Exhibit 1004, filed Jun. 4, 2013 in connection with IPR2013-00324: J. Meinwald, An Approach to the Synthesis of Pederin, 49 Pure and Appl. Chem. 1275 (1977). |
Exhibit 1005, filed Jun. 4, 2013 in connection with IPR2013-00324: Takeshi Matsumoto et al., A Revised Structure of Pederin, 60 Tetrahedron Letters 6297 (1968). |
Exhibit 1009, filed Jun. 4, 2013 in connection with IPR2013-00324: Jun. 4, 2013 Declaration of Dr. Bruce. |
Exhibit 1010, filed Jun. 4, 2013 in connection with IPR2013-00324: Excerpts from the '026 Patent File History. |
Exhibit 1011, filed Jun. 4, 2013 in connection with IPR2013-00324: Excerpts from the file history of European Patent Application No. 02781434.2. |
Nov. 21, 2013 Decision Denying Institution of Inter Partes Review of U.S. Pat. No. 7,057,026 in connection with IPR2013-00324. |
Decision on Institution of Inter Partes Review Under 35 U.S.C. § 314(a) U.S. Pat. No. 9,725,480 B2, issued on Jul. 27, 2018 in connection with Case No. IPR2018-00385. |
U.S. Appl. No. 09/684,670, filed Oct. 6, 2000, Ju et al. |
Aug. 19, 2013 Petition 1 of 2 for Inter Partes Review of U.S. Pat. No. 7,566,537, issued Jul. 28, 2009. |
Aug. 30, 2013 Revised Petition 1 of 2 for Inter Partes Review of U.S. Pat. No. 7,566,537, issued Jul. 28, 2009. |
Exhibit 1011, filed Aug. 19, 2013 in connection with IPR2013-00517: Aug. 16, 2013 Declaration of Dr. Bruce Branchaud. |
Exhibit 1012, filed Aug. 19, 2013 in connection with IPR2013-00517: Excerpts from the Mar. 20, 2013 Deposition Transcript of Dr. Xiaohai Liu. |
Feb. 13, 2014 Decision of Institution of Inter Partes Review IPR2013-00517. |
May 5, 2014 Patent Owner Response in connection with IPR2013-00517. |
Exhibit 2005, filed May 5, 2014 in connection with IPR2013-00517: IBS's Answer, Affirmative Defenses & Counterclaims to Illumina, Inc. and Illumina Cambridge Ltd.'s Second Amended Counterclaims to Amended Complaint, Columbia v. Illumina, No. 12-CV-00376 (D. Del). |
Exhibit 2010, filed May 5, 2014 in connection with IPR2013-00517: Excerpts from prosecution history of U.S. Pat. No. 7,566,537, issued Jul. 28, 2009, Barnes et al. |
Exhibit 2011, filed May 5, 2014 in connection with IPR2013-00517: May 5, 2014 Declaration of Floyd Romesberg, Ph.D. |
Exhibit 2013, filed May 5, 2014 in connection with IPR2013-00517: Ranganathan et al., “Facile Conversion of Adenosine into New 2′-Substituted-2′-Deoxy-Arabinofuranosyladenine Derivatives: Stereospecific Syntheses of 2′-Asido-2′-Deoxy-, 2′-Amino-2′-Deoxy-, and 2′-Mercapto-2′-Deoxy-β-D-Arabinofuranosyladenines” Tetrahedron Letters 45:4341-44 (1978). |
Exhibit 2014, filed May 5, 2014 in connection with IPR2013-00517: Mungall et al., “Use of the Azido Group in the Synthesis of 5′ Terminal Aminodeoxythymidine Oligonucleotides” J. Org. Chem., 40:1659-1662 (1975). |
Exhibit 2016, filed May 5, 2014 in connection with IPR2013-00517: Pilard et al., “A Stereospecific Synthesis of (+), α-Conhydrine and (+) β-Conhydrine)” Tet. Lett., 25:1555- 1556 (1984). |
Exhibit 2017, filed May 5, 2014 in connection with IPR2013-00517: “Synthesis of a Novel Stable GM3-Lactone Analogue as Hapten for a Possible Immunization against Cancer” Tietze et al., Angew. Chem. Int. Ed., 36:1615, 1616 (1997). |
Exhibit 2018, filed May 5, 2014 in connection with IPR2013-00517: Kit, “Deoxyribonucleic Acids” Annual Rev. Biochem, 32:43 (1963). |
Exhibit 2019, filed May 5, 2014 in connection with IPR2013-00517: Canard et al., “Catalytic editing properties of DNA polymerases” PNAS USA 92:10859 (1995). |
Exhibit 2020, filed May 5, 2014 in connection with IPR2013-00517: The Merck Index, p. 9815 (entry for Triphenylphosphine) (13th Edition, 2001). |
Exhibit 2021, filed May 5, 2014 in connection with IPR2013-00517: Lee et al., “Unwinding of double-stranded DNA helix by dehydration” PNAS 78:2838-42 (1981). |
Exhibit 2022, filed May 5, 2014 in connection with IPR2013-00517: Christensen et al., “Specific Chemical Synthesis of Ribonucleoside O-Benzyl Ethers” J. Am. Chem. Soc., 37:3398 (1972). |
Exhibit 2023, filed May 5, 2014 in connection with IPR2013-00517: Watkins et al., “Synthesis of Oligodeoxyribonucleotides Using N-Benzyloxycarbonyl-Blocked Nucleosides”, J. Am. Chem. Soc. 104:5702-08 (1982). |
Exhibit 2025, filed May 5, 2014 in connection with IPR2013-00517: Yoshimoto et al., “Tris(2,4,6-trimethoxyphenyl)phosphine (TTMPP): A Novel Catalyst for Selective Deacetylation” Chemistry Letters 30:934-35 (2001). |
Exhibit 2026, filed May 5, 2014 in connection with IPR2013-00517: Chapter 3 of Protective Groups in Organic Synthesis (Theodora W. Greene & Peter G. M. Wuts eds., John Wiley & Sons, Inc. 3rd ed. 1999) (1991). |
Exhibit 2027, filed May 5, 2014 in connection with IPR2013-00517: Bentley et al., “Accurate whole human genome sequencing using reversible terminator chemistry” Nature 456:53-59 (2008). |
Exhibit 2029, filed May 5, 2014 in connection with IPR2013-00517: Shendure et al., “Advanced Sequencing Technologies: Methods and Goals” Nature Reviews Genetics, 5:335-44 (2004). |
Exhibit 2039, filed May 5, 2014 in connection with IPR2013-00517: Transcript of Apr. 8, 2014 Deposition of Bruce Branchaud, Ph.D. |
Exhibit 2044, filed May 5, 2014 in connection with IPR2013-00517: Excerpts of Transcript of Mar. 20, 2013 Deposition of Dr. Xiaohai Liu in Columbia v. Illumina, 12-cv-376 (D. Del). |
Exhibit 2047, filed May 5, 2014 in connection with IPR2013-00517: Ruparel et al., “Design and synthesis of a 3-O-allyl photocleavable fluorescent nucleotide as a reversible terminator for DNA sequencing by synthesis” PNAS 102:5932-5937 (2005). |
Exhibit 2050, filed May 5, 2014 in connection with IPR2013-00517: Mardis, “A decade's perspective on DNA sequencing technology” Nature 470:198-203 (2011). |
Exhibit 2051, filed May 5, 2014 in connection with IPR2013-00517: Meng et al., “Design and Synthesis of a Photocleavable Fluorescent Nucleotide 3′-O-Allyl-dGTP-PC-Bodipy-FL-510 as a Reversible Terminator for DNA Sequencing by Synthesis” J. Org. Chem 71:3248-52 (2006). |
Exhibit 2052, filed May 5, 2014 in connection with IPR2013-00517: Bi et al., “Design and Synthesis of a Chemically Cleavable Fluorescent Nucleotide, 3′-0-Allyl-dGTP-allyl-Bodipy-FL-510, as a Reversible Terminator for DNA Sequencing by Synthesis” J Am Chem Soc, 128:2542-43 (2006). |
Exhibit 2053, filed May 5, 2014 in connection with 1PR2013-00517: Meng, “Tandem Aldol-Allylation Reactions Promoted by Strained Silacycles and Design and Synthesis of Modified Fluorescent Nucleotides for DNA Sequencing by Synthesis”, Student Thesis (2006). |
Exhibit 2054, filed May 5, 2014 in connection with IPR2013-00517: Wu et al., “3′-O-modified nucleotides as reversible terminators for pyrosequencing” PNAS, 104:16462-67 (2007). |
Exhibit 2055, filed May 5, 2014 in connection with IPR2013-00517: Kim, “Four-Color DNA Sequencing by Synthesis on a Chip Using Cleavable Fluorescent Nucleotide Reversible Terminators”, Student Thesis (2008). |
Exhibit 2056, filed May 5, 2014 in connection with IPR2013-00517: Wu, “Molecular Engineering of Novel Nucleotide Analogues for DNA Sequencing by Synthesis”, Student Thesis, Student Thesis (2008). |
Exhibit 2057, filed May 5, 2014 in connection with IPR2013-00517: Zhang, “Development of New DNA Sequencing Approaches and Investigation of Vision-related Proteins Using Synthetic Chemistry”, Student Thesis (2008). |
Exhibit 2058, filed May 5, 2014 in connection with IPR2013-00517: Guo et al., “Four-color DNA sequencing with 3′-O-modified nucleotide reversible terminators and chemically cleavable fluorescent dideoxynucleotides”, PNAS 105:9145. |
Exhibit 2059, filed May 5, 2014 in connection with IPR2013-00517: Guo, “Molecular Engineering of Novel Nucleotide Analogues for DNA Sequencing and Analysis”, Student Thesis (2009). |
Exhibit 2060, filed May 5, 2014 in connection with IPR2013-00517: Yu, “Novel Strategies to Increase Read Length and Accuracy for DNA Sequencing by Synthesis”, Student Thesis (2010). |
Exhibit 2062, filed May 5, 2014 in connection with IPR2013-00517: Qui, “Novel Molecular Engineering Approaches for Genotyping and DNA Sequencing”, Student Thesis (2010). |
Exhibit 2073, filed May 5, 2014 in connection with IPR2013-00517: Kraevskii et al., “Substrate Inhibitors of DNA Biosynthesis”, Molecular Biology 21:25-29 (1987). |
Exhibit 2074, filed May 5, 2014 in connection with IPR2013-00517: Dantas et al., “Stannous chloride mediates single strand breaks in plasmid DNA through reactive oxygen species formation”, Toxicology Ltrs. 110:129-36 (1999). |
Exhibit 2077, filed May 5, 2014 in connection with IPR2013-00517: Burgess et al., “An Approach to Photolabile, Fluorescent Protecting Groups”, J. Org. Chem 62:5165-68. |
Petitioner Reply to Patent Owner Response, filed Jul. 28, 2014 in connection with IPR2013-00517. |
Exhibit 1019, filed Jul. 28, 2014 in connection with IPR2013-00517: Ireland et al., Approach to the Total Synthesis of Chlorothricolide: Synthesis of (+)-19,20-Dihydro-24-O-methylchlorothricolide, Methyl Ester, Ethyl Carbonate, 51 J. Org. Chem. 635 (1986). |
Exhibit 1020, filed Jul. 28, 2014 in connection with IPR2013-00517: Gordon et al., Abstract, the Relationship of Structure to Effectiveness of Denaturing Agents for DNA, Biophysical Society 6th Annual Meeting (Washington, 1962). |
Exhibit 1022, filed Jul. 28, 2014 in connection with IPR2013-00517: p. 295 from Mar. 20, 2003 deposition of Dr. Xiaohai Liu, The Trustees of Columbia University and Intelligent Bio-Systems, Inc. v. Illumina, 12-376 (GMS) (D. Del.). |
Exhibit 1025, filed Jul. 28, 2014 in connection with IPR2013-00517: Transcript, Jul. 8, 2014 Deposition of Floyd Romesberg, Ph.D. |
Exhibit 1026, filed Jul. 28, 2014 in connection with IPR2013-00517: Transcript, Jul. 15, 2014 Deposition of Kevin Burgess, Ph.D. |
Exhibit 1030, filed Jul. 28, 2014 in connection with IPR2013-00517: Patent prosecution excerpt from file history of U.S. Pat. No. 7,566,537 (U.S. Appl. No. 11/301,578). |
Exhibit 1031, filed Jul. 28, 2014 in connection with IPR2013-00517: Second Declaration of Dr. Bruce Branchaud in Support of Intelligent Bio-Systems, Inc.'s Reply to Illumina's Patent Owner Response. |
Exhibit 1032, filed Jul. 28, 2014 in connection with IPR2013-00517: Gololobov and Kasukhin, Recent advances in the Staudinger reaction, Tetrahedron 48:1353-1406 (1992). |
Exhibit 1034, filed Jul. 28, 2014 in connection with IPR2013-00517: Saxon and Bertozzi, Cell Surface Engineering by a Modified Staudinger Reaction, Science 287:2007-2010 (2000). |
Exhibit 1036, filed Jul. 28, 2014 in connection with IPR2013-00517: Faucher and Grand-Maitre, tris(2-Carboxyethyl)phosphine (TCEP) for the Reduction of Sulfoxides, Sulfonylchlorides, N-Oxides, and Azides, Synthetic Communications 33:3503-3511 (2003). |
Exhibits 1037 and 1038, filed Jul. 28, 2014 in connection with IPR2013-00517: Knouzi et al., Reductions of Azides by Triphenylphosphine in the presence of water: a General and chemoselective method of access to primary amines, Bull. Soc. Chim. Fr., 1-12 (1985), and translation. |
Exhibit 1041, filed Jul. 28, 2014 in connection with IPR2013-00517: Mag and Engels, Synthesis and selective cleavage of oligodeoxyribonucleotides containing non-chiral internucleotide phosphoramidate linkages, Nucleic Acids Research 15:5973-5988 (1989). |
Exhibit 1043, filed Jul. 28, 2014 in connection with IPR2013-00517: Chang and Bollum, Molecular biology of terminal transferase, CRC Critical Reviews in Biochemistry 21:27-52 (1986). |
Exhibit 1044, filed Jul. 28, 2014 in connection with IPR2013-00517: Chen, DNA polymerases drive DNA sequencing-by-synthesis technologies: both past and present, Frontiers in Microbiology, vol. 5, Article 305, 1-11 (2014). |
Exhibit 1046, filed Jul. 28, 2014 in connection with IPR2013-00517: Declaration of Dr. Michael Metzker in Suppoert of Intelligent Bio-Systems, Inc's Reply to Illumina's Patent Owner Response. |
Exhibit 1047, filed Jul. 28, 2014 in connection with IPR2013-00517: Lebreton et al., Structure-Immunosuppressive Activity Relationships of New Analogues of 15-Deoxyspergualin. 2. Structural Modifications of the Spermidine Moiety, Journal of Medicinal Chemistry 42:4749-4763 (1999). |
Exhibit 1048, filed Jul. 28, 2014 in connection with IPR2013-00517: Levine et al., The Relationship of Structure to the Effectiveness of Denaturing Agents for Deoxyribonucleic Acid, Biochemistry 2:168-175 (1963). |
Exhibit 1049, filed Jul. 28, 2014 in connection with IPR2013-00517: Efimov et al., An azidomethyl protective group in the synthesis of oligoribonucleotides by the phosphotriester method, 35:250-253 (2009). |
Exhibit 1050, filed Jul. 28, 2014 in connection with IPR2013-00517: Kirby, A new method for the isolation of deoxyribonucleic acids: Evidence of the nature of bonds between deoxyribonucleic acids and proteins, Biochemical Journal 66:495-504 (1957). |
Exhibit 1051, filed Jul. 28, 2014 in connection with IPR2013-00517: Bentley et al., Accurate whole human genome sequencing using reversible terminator chemistry. Nature 456:53 (2008)—Supplementary Information. |
Petitioner Motion to Exclude Evidence, filed Sep. 2, 2014 in connection with IPR2013-00517. |
Patent Owner Motion to Exclude Evidence, filed Sep. 2, 2014 in connection with IPR2013-00517. |
Patent Owner Motion for Observations on the Cross-Examination Testimony of Bruce Branchaud, Ph.D. and Michael Metzker, Ph.D., filed Sep. 2, 2014 in connection with IPR2013-00517. |
Exhibit 2139, filed Sep. 2, 2014 in connection with IPR2013-00517: Metzker, “Sequencing Technologies—The Next Generation” Nature Reviews Genetics, 11:31-46 (2010). |
Exhibit 2140, filed Sep. 2, 2014 in connection with IPR2013-00517: Tsai et al., “Versatile and Efficient Synthesis of a New Class of Aza-Based Phosphinic Amide Ligands via Unusual P—C Cleavage” Helvetica Chimica Acta, 89:3007-3017 (2006). |
Exhibit 2141, filed Sep. 2, 2014 in connection with IPR2013-00517: Treinin, General and Theoretical Aspects, Chapter 1 (pp. 1-55) in the Chemistry of the Azido Group (Saul Fatal, Ed.) (1971). |
Exhibit 2142, filed Sep. 2, 2014 in connection with IPR2013-00517: Hanlon, “The Importance of London Dispersion Forces in the Maintenance of the Deoxyribonucleic Acid Helix” Biomedical and Biphysical Research Communications, 23:861-867 (1966). |
Exhibit 2144, filed Sep. 2, 2014 in connection with IPR2013-00517: “Phenol,” in the Merck Index, pp. 1299-1300 (13th Ed., 2001). |
Exhibit 2146, filed Sep. 2, 2014 in connection with IPR2013-00517: Metzker, “Emerging technologies in DNA sequencing” Genome Research, 15:1767-1776, (2005). |
Exhibit 2147, filed Sep. 2, 2014 in connection with IPR2013-00517: Gardner et al., “Rapid incorporation kinetics and improved fidelity of a novel class of 3′-OH unblocked reversible terminators” Nucleic Acids Research, 40:7404-7415 (2012). |
Exhibit 2148, filed Sep. 2, 2014 in connection with IPR2013-00517: Lander et al., “Initial sequencing and analysis of the human genome” Nature, 409:860-921 (2001). |
Exhibit 2150, filed Sep. 2, 2014 in connection with IPR2013-00517: Aldrich, Fine Chemicals catalogue, p. 1337 (1986). |
Exhibit 2151, filed Sep. 2, 2014 in connection with IPR2013-00517: Sebastian et al., “Dendrimers with N,N-Disubstituted Hydrazines as End Groups, Useful Precursors for the Synthesis of Water-Soluble Dendrimers Capped with Carbohydrate, Carboxylic or Boronic Acid Derivatives” Tetrahedron, 56:6269-6277 (2000). |
Exhibit 2152, filed Sep. 2, 2014 in connection with IPR2013-00517: Reardon et al., “Reduction of 3′-Azido-3′-deoxythymidine (AZT) and AZT Nucleotides by Thiols” The Journal of Biological Chemistry, 269:15999-16008 (1994). |
Exhibit 2154, filed Sep. 2, 2014 in connection with IPR2013-00517: Transcript, Aug. 12, 2014 Deposition of Michael L. Metzker, Ph.D. |
Exhibit 2155, filed Sep. 2, 2014 in connection with IPR2013-00517: Transcript, Aug. 26, 2014 Deposition of Bruce P. Branchaud, Ph.D. |
Petitioner Opposition to Patentee Motion to Exclude Evidence, filed Sep. 15, 2014 in connection with IPR2013-00517. |
Patentee Opposition to Petitioner Motion to Exclude Evidence, filed Sep. 15, 2014 in connection with IPR2013-00517. |
Patentee's Reply to Petitioner's Opposition to Patentee Motion to Exclude Evidence, filed Sep. 22, 2014 in connection with IPR2013-00517. |
Petitioner's Reply to Patentee's Opposition to Motion to Amend, filed Sep. 22, 2014 in connection with IPR2013-00517. |
Patentee Demonstratives for Oral Hearing, filed Oct. 3, 2014 in connection with IPR2013-00517. |
Petitioner Demonstratives for Oral Hearing, filed Oct. 3, 2014 in connection with IPR2013-00517. |
Transcript of Oct. 10, 2014 Oral Hearing, entered Feb. 2, 2015 in connection with IPR2013-00517. |
Feb. 11, 2015 Final Written Decision in connection with IPR2013-00517. |
Complaint for Patent Infringement on behalf of The Trustees of Columbia University in the City of New York and QIAGEN Waltham, Inc., filed Jul. 18, 2017 in connection with Trustees of Columbia University in the City of New York and QIAGEN Waltham, Inc. v. Illumina, Inc., C.A. No. 17-973 (GMS) (D. Del. Filed Jul. 18, 2017). |
Exhibit 1 of Complaint for Patent Infringement on behalf of The Trustees of Columbia University in the City of New York and QIAGEN Waltham, Inc., filed Jul. 18, 2017 in connection with Trustees of Columbia University in the City of New York and QIAGEN Waltham, Inc. v. Illumina, Inc., C.A. No. 17-973 (GMS) (D. Del. Filed Jul. 18, 2017). |
Amended Complaint for Patent Infringement on behlaf of The Trustees of Columbia University in the City of New York and QIAGEN Waltham, Inc., filed Aug. 1, 2017 in connection with Trustees of Columbia University in the City of New York and QIAGEN Waltham, Inc. v. Illumina, Inc., C.A. No. 17-973 (GMS) (D. Del. Filed Jul. 18, 2017). |
Exhibit 1 of Amended Complaint for Patent Infringement on behalf of The Trustees of Columbia University in the City of New York and QIAGEN Waltham, Inc., filed Aug. 1, 2017 in connection with Trustees of Columbia University in the City of New York and QIAGEN Waltham, Inc. v. Illumina, Inc., C.A. No. 17-973 (GMS) (D. Del. Filed Jul. 18, 2017). |
Exhibit 2 of Amended Complaint for Patent Infringement on behalf of The Trustees of Columbia University in the City of New York and QIAGEN Walthma, Inc., filed Aug. 1, 2017 in connection with Trustees of Columbia University in the City of New York and QIAGEN Waltham, Inc. v. Illumina, Inc., C.A. No. 17-973 (MGS) (D. Del. Filed Jul. 18, 2017). |
Exhibit 3 of Amended Complaint for Patent Infringement on behalf of The Trustees of Columbia University in the City of New York and QIAGEN Waltham, Inc., filed Aug. 1, 2017 in connection with Trustees of Columbia University in the City of New York and QIAGEN Waltham, Inc. v. Illumina, Inc. C.A. No. 17-973 (GMS) (D. Del. Filed Jul. 18, 2017). |
Exhibit 4 of Amended Complaint for Patent Infringement on behalf of The Trustees of Colubia University in the City of New York and QIAGEN Waltham, Inc., filed Aug. 1, 2017 in connection with Trustees of Columbia University in the City of New York and QIAGEN Waltham, Inc. v. Illumina, Inc,. C.A. No. 17-973 (GMS) (D. Del. Filed Jul. 18, 2017). |
Second Amended Complaint for Patent Infringement on behalf of The Trustees of Columbia University in the City of New York and QIAGEN Waltham, Inc., filed Aug. 8, 2017 in connection with Trustees of Columbia University in the City of New York and QIAGEN Waltham, Inc. v. Illumina, Inc., C.A. No. 17-973 (GMS) (D. Del. Filed Jul. 18, 2017). |
Exhibit 1 of Second Amended Complaint for Patent Infringement on behalf of The Trustees of Columbia University in the City of New York and QIAGEN Waltham, Inc., filed Aug. 8, 2017 in connection with Trustees of Columbia University in the City of New York and QIAGEN Waltham, Inc. v. Illumina, Inc., C.A. No. 17-973 (GMS) (D. Del. Filed Jul. 18, 2017). |
Illumina, Inc.'s Answer to The Trustees of Columbia University in the City of New York and QIAGEN Waltham, Inc.'s Second Amended Complaint, filed Oct. 2, 2017 in connection with Trustees of Columbia University in the City of New York and QIAGEN Waltham, Inc. v. Illumina, Inc., C.A. No. 17-973 (GMS) (D. Del. Filed Jul. 18, 2017). |
Petition for Inter Partes Review of U.S. Pat. No. 9,718,852, filed by Illumina, Inc. Dec. 8, 2017, in connection with Case No. IPR2018-00291. |
Declaration of Floyd Romesberg, Ph.D., filed by Illumina, Inc. Dec. 8, 2017 with the Petition for Inter Partes Review of U.S. Pat. No. 9,718,852, in connection with Case No. IPR2018-00291. |
Petition for Inter Partes Review of U.S. Pat. No. 9,719,139, filed by Illumine, Inc. Dec. 15, 2017, in connection with Case No. IPR2018-00318. |
Declaration of Floyd Romesberg, Ph.D., filed by Illumina, Inc. Dec. 15, 2017 with the Petition for Inter Partes Review of U.S. Pat. No. 9,719,139, in connection with Case No. IPR2018-00318. |
Petition for Inter Partes Review of U.S. Pat. No. 9,708,358, filed by Illumina, Inc. Dec. 18, 2017, in connection with Case No. IRR2018-00322. |
Declaration of Floyd Romesberg, Ph.D., filed by Illumina, Inc. Dec. 18, 2017 with the Petition for Inter Partes Review of U.S. Pat. No. 9,708,358, in connection with Case No. IPR2018-00322. |
Petition for Inter Partes Review of U.S. Pat. No. 9,725,480, filed by Illumina, Inc. Dec. 22, 2017, in connection with Case No. IPR2018-00385. |
Declaration of Floyd Romesberg, Ph.D., filed by Illumina, Inc. Dec. 22, 2017 with the Petition for Inter Partes Review of U.S. Pat. No. 9,725,480, in connection with Case No. IPR2018-00385. |
May 9, 2018 Office Action issued in connection with U.S. Appl. No. 14/670,748. |
Response to May 9, 2018 Office Action filed Aug. 9, 2018 in connection with U.S. Appl. No. 14/670,748. |
Aug. 9, 2018 Applicant-Initiated Interview Summary issued in connection with U.S. Appl. No. 14/670,748. |
Decision on Institution of Inter Partes Review Under 35 U.S.C. § 314 of U.S. Pat. No. 9,868,985 B2, issued on Sep. 18, 2018 in connection with Case No. IPR2018-00797. |
Jul. 12, 2017 Office Action issued in connection with U.S. Appl. No. 14/670,748. |
Response to Jul. 12, 2017 Office Action filed Aug. 4, 2017 in connection with U.S. Appl. No. 14/670,748. |
Oct. 2, 2017 Office Action issued in connection with U.S. Appl. No. 14/670,748. |
Response to Oct. 2, 2017 Office Action, including Exhibits 1-2 and Exhibits A-E, filed Mar. 2, 2018 in connection with U.S. Appl. No. 14/670,748. |
Third Amended Complaint for Patent Infringement on behalf of The Trustees of Colubmia University in the City of New York and Qiagen Sciences, LLC, filed Feb. 16, 2018 in connection with Trustees of Columbia University in the City of New York and QIAGEN Waltham, Inc. v. Illumina, Inc., C.A. No. 17-973 (GMS) (D. Del. Filed Jul. 18, 2017). |
Exhibit 4 of Third Amended Complaint for Patent Infringement on behalf of The Trustees of Columbia University in the City of New York and Qiagen Sciences, LLC, filed Feb. 16, 2018 in connection with Trustees of Columbia University in the City of New York and QIAGEN Walthamn, Inc. v. Illumina, Inc., C.A. No. 17-973 (GMS) (D. Del. Filed Jul. 18, 2017). |
Exhibit 5 of Third Amended Complaint for Patent Infringement on behalf of The Trustees of Columbia University in the City of New York and Qiagen Sciences, LLC, filed Feb. 16, 2018 in connection with Trustees of Columbia University in the City of New York and QIAGEN Walthamn, Inc. v. Illumina, Inc., C.A. No. 17-973 (GMS) (D. Del. Filed Jul. 18, 2017). |
Illumina, Inc.'s Answer to The Trustees of Columbia University in the City of New York and Qiagen Sciences, LLC's Third Amended Complaint, filed Mar. 2, 2018 in connection with Trustees of Columbia University in the city of New York and QIAGEN Waltham, Inc. v. Illumina, Inc., C.A. No. 17-973 (GMS) (D. Del. Filed Jul. 18, 2017). |
Petition for Inter Partes Review of U.S. Pat. No. 9,868,985 filed by Illumina, Inc. Mar. 16, 2018, in connection with Case No. IPR2018-00797. |
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Sep. 16, 2012 Motion to Waive Page Limit and Proposed Petition in connection with Petition for Inter Partes Review of U.S. Pat. No. 7,713,698, issued May 11, 2010. |
Dec. 20, 2012 Preliminary Response under 37 C.F.R. 42.107 in connection with IPR2012-00006. |
Mar. 12, 2013 Decision on Petition for Inter Partes Review in connection with IPR2012-00006. |
Mar. 26, 2013 Request for Reconsideration in connection with IPR2012-00006. |
Apr. 26, 2013 Opposition to Request for Reconsideration (Rehearing) Under 37 C.F.R. 42.71.(C) in connection with IPR2012-00006. |
Sep. 27, 2013 Petitioner Opposition to Motion to Amend in connection with IPR2012-00006. |
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Exhibit 1021, filed Sep. 16, 2012 in connection with IPR2012-00006: Sep. 15, 2012 Declaration of George Weinstock Under Rule 37 C.F.R. §1.132. |
Exhibit 1022, filed Sep. 16, 2012 in connection with IPR2012-00006: Excerpts of File History of U.S. Pat. No. 7,713,698. |
Exhibit 1025, filed Apr. 30, 2013 in connection with IPR2012-00006: Columbia's Amended Complaint from The Trustees of Columbia University in the City of New York v. Illumina, Inc., D. Del C.A. No. 12-376 (GMS), filed Apr. 11, 2012. |
Exhibit 1026, filed Apr. 30, 2013 in connection with IPR2012-00006: Illumina's Answer to Amended Complaint from The Trustees of Columbia University in the City of New York v. Illumina, Inc., D. Del C.A. No. 12-376 (GMS), filed Dec. 21, 2012. |
Exhibit 1030, filed Jun. 18, 2013 in connection with IPR2012-00006: Rosenblum et al., “New Dye-Labeled Terminators for Improved DNA Sequencing Patterns,” Nucleic Acid Research, 1997, vol. 25, No. 22, pp. 4500-4504. |
Exhibit 1034, filed Jun. 18, 2013 in connection with IPR2012-00006: Jun. 8, 2013 Videotaped Deposition Transcript of George M. Weinstock, Ph.D. |
Exhibit 1036, filed Sep. 27, 2013 in connection with IPR2012-00006: “Next Generation Genomics: World Map of High-throughput Sequencers,” Sep. 1, 2013. |
Exhibit 1039, filed Sep. 27, 2013 in connection with IPR2012-00006: Videotaped Deposition Transcript of Dr. Xiaohai Liu, Mar. 20, 2013. |
Exhibit 1040, filed Sep. 27, 2013 in connection with IPR2012-00006: Excerpt from videotaped Deposition Transcript of George M. Weinstock, Ph.D., Jun. 8, 2013. |
Exhibit 1041, filed Sep. 27, 2013 in connection with IPR2012-00006: Seela et al., “Oligonucleotide Duplex Stability Controlled by the 7-Substituents of 7-Deazaguanine Bases,” Bioorganic & Medicinal Chemistry Letters, vol. 5, No. 24, pp. 3049-3052, 1995. |
Exhibit 1042, filed Sep. 27, 2013 in connection with IPR2012-00006: Ramzaeva et al., “123. 7-Deazaguanine DNA: Oligonucleotides with Hydrophobic or Cationic Side Chains,” Helvetica Chimica Acta, vol. 80, pp. 1809-1822, 1997. |
Exhibit 1043, filed Sep. 27, 2013 in connection with IPR2012-00006: Ramzaeva et al., “88. 7-Substituted 7-Deaza-2′-deoxyguanosines: Regioselective Halogenation of Pyrrolo[2,3-d]pyrimidine Nucleosides,” Helvetica Chimica Acta, vol. 78, pp. 1083-1090, 1995. |
Exhibit 1044, filed Sep. 27, 2013 in connection with IPR2012-00006: Seela et al., “Duplex Stability of Oligonucleotides Containing 7-Substituted 7-Deaza- and 8-Aza-7-Deazapurine Nucleosides,” Nucleosides & Nucleotides, 16(7-9), pp. 963-966, 1997. |
Exhibit 1045, filed Sep. 27, 2013 in connection with IPR2012-00006: Burgess et al., “Syntheses of Nucleosides Designed for Combinatorial DNA Sequencing,” Chemistry—A European Journal, vol. 5, No. 3, pp. 951-960, 1999. |
Exhibit 1049, filed Sep. 27, 2013 in connection with IPR2012-00006: Jan. 28, 2013 Declaration of Dr. Bruce P. Branchaud in Support of Petition for Inter Partes Review of U.S. Pat. No. 7,057,026. |
Exhibit 1050, filed Sep. 27, 2013 in connection with IPR2012-00006: Lee et al., “DNA sequencing with dye-labeled terminators and T7 DNA polymerase: effect of dyes and dNTPs on incorporation of dye-terminators and probability analysis of termination fragments,” Nucleic Acids Research, vol. 20, No. 10, pp. 2471-2483, 1992. |
Exhibit 1051, filed Sep. 27, 2013 in connection with IPR2012-00006: http://www.answers.com/topic/incubate, Accessed Sep. 27, 2013. |
Exhibit 1052, filed Sep. 27, 2013 in connection with IPR2012-00006: http://en.wikipedia.org/wiki/Fluorenylmethyloxycarbonyl_chloride, Accessed Sep. 27, 2013. |
Exhibit 1053, filed Sep. 27, 2013 in connection with IPR2012-00006: Sep. 27, 2013 Declaration of Kevin Burgess. |
Exhibit 1054, filed Sep. 27, 2013 in connection with IPR2012-00006: Fuji, et al., “An Improved Method for Methoxymethylation of Alcohols under Mild Acidic Conditions,” Synthesis—The Journal of Synthetic Organic Chemistry, pp. 276-277, Apr. 1975. |
Exhibit 2006, filed Apr. 26, 2013 in connection with IPR2012-00006: Dower patent with highlights. |
Exhibit 2011, filed Jun. 24, 2013 in connection with IPR2012-00006: U.S. Pat. No. 7,713,698 (filed Aug. 20, 2007, issued May 11, 2010) (Exhibit 1001 in IPR2012-00006). |
Exhibit 2012, filed Jun. 24, 2013 in connection with IPR2012-00006: U.S. Pat. No. 7,790,869 (filed Jun. 5, 2007, issued Sep. 7, 2010) (Exhibit 1001 in IPR2012-00007). |
Exhibit 2013, filed Jun. 24, 2013 in connection with IPR2012-00006: Oct. 2, 2012 Declaration of George Weinstock Under 37 CFR 1.132 (Exhibit 1021 in IPR2013-00011). |
Exhibit 2014, filed Jun. 24, 2013 in connection with IPR2012-00006: Petition for Inter Partes Review of U.S. Pat. No. 8,088,575 (Paper 4 in IPR2013-00011). |
Exhibit 2015, filed Jun. 24, 2013 in connection with IPR2012-00006: Metzker et al. (1994) Termination of DNA synthesis by novel 3′modified-deoxyribonucleoside 5′-triphosphates. Nucleic Acids Res. 22:4259-4267. |
Exhibit 2016, filed Jun. 24, 2013 in connection with IPR2012-00006: Wu et al. (2007) Termination of DNA synthesis by N6-alkylated, not 3′-O-alkylated, photocleavable 2′-deoxyadenosine triphosphates. Nucleic Acids Res. 35:6339-6349. |
Exhibit 2017, filed Jun. 24, 2013 in connection with IPR2012-00006: Sep. 15, 2012 Declaration of George Weinstock Under 37 CFR 1.132 (Exhibit 1021 in IPR2012-00007). |
Exhibit 2018, filed Jun. 24, 2013 in connection with IPR2012-00006: Sep. 15, 2012 Declaration of George Weinstock Under 37 CFR 1.132 (Exhibit 1021 in IPR2012-00006). |
Exhibit 2019, filed Jun. 24, 2013 in connection with IPR2012-00006: Definition of “DNA microarray.” http://en/wikipedia.org/wiki/DNA_microarray. |
Exhibit 2020, filed Jun. 24, 2013 in connection with IPR2012-00006: Brettin et al. (2005) Expression capable library for studies of Neisseria gonorrhoeae, version 1.0 BMC Microbiology. 5:50. |
Exhibit 2021, filed Jun. 24, 2013 in connection with IPR2012-00006: George M. Weinstock, Handbook of Molecular Microbial Ecology, vol. 1—Chapter 18: The Impact of Next-Generation Sequencing Technologies on Metagenomics 141-147 Frans J. de Bruijn ed., John Wiley & Sons, Inc. (2011). |
Exhibit 2022, filed Jun. 24, 2013 in connection with IPR2012-00006: Sep. 16, 2012 Petition for Inter Partes Review of U.S. Pat. No. 7,713,698 (Paper 3 in IPR2012-00006). |
Exhibit 2023, filed Jun. 24, 2013 in connection with IPR2012-00006: Sep. 16, 2012 Petition for Inter Partes Review of U.S. Pat. No. 7,790,869 (Paper 5 in IPR2012-00007). |
Exhibit 2024, filed Jun. 24, 2013 in connection with IPR2012-00006: Maxam and Gilbert (1977) A new method for sequencing DNA, Proc. Natl. Acad. Sci. USA. 74:560-564. |
Jan. 29, 2013 Petition for Inter Partes Review of U.S. Pat. No. 7,057,026. |
Feb. 7, 2013 Revised Petition for Inter Partes Review of U.S. Pat. No. 7,057,026. |
May 1, 2013 Preliminary Response under 37 C.F.R. 42.107 in connection with IPR2013-00128. |
Jul. 29, 2013 Decision on Petition for Inter Partes Review in connection with IPR2013-00128. |
Oct. 24, 2013 Patent Owner Motion to Amend the Patent in connection with IPR2013-00128. |
Exhibit 1006, filed Jan. 29, 2013 in connection with IPR2013-00128: Beckman Coulter CEQTM 2000 DNA Analysis System User's Guide, Jun. 2000. |
Exhibit 1010, filed Jan. 29, 2013 in connection with IPR2013-00128: Kamal, Tetrahedron Letters 40(2):371-372, 1999. |
Exhibit 1011, filed Jan. 29, 2013 in connection with IPR2013-00128: Jung, J.C.S. Chem. Comm. (7):315-316, 1978. |
Exhibit 1015, filed Jan. 29, 2013 in connection with IPR2013-00128: Jan. 28, 2013 Declaration of Dr. Bruce Branchaud. |
Exhibit 1016, filed Jan. 29, 2013 in connection with IPR2013-00128: Excerpts from the '026 Patent File History. |
Exhibit 1020, filed Jan. 29, 2013 in connection with IPR2013-00128: Transcript of Initial Conference Call Held on Aug. 29, 2013. |
Exhibit 2001, filed May 1, 2013 in connection with IPR2013-00128: The Trustees of Columbia University in the City of New York v. Illumina, Inc., 1:12-cv-00376-GMS—Columbia's Amended Complaint. |
Exhibit 2002, filed May 1, 2013 in connection with IPR2013-00128: The Trustees of Columbia University in the City of New York v. Illumina, Inc., 1:12-cv-00376-GMS—Columbia's Amended Answer. |
Exhibit 2003, filed May 1, 2013 in connection with IPR2013-00128: The Trustees of Columbia University in the City of New York v. Illumina, Inc., 1:12-cv-00376-GMS—IBS's Responses to Illumina's Requests for Admission. |
Exhibit 2004, filed May 1, 2013 in connection with IPR2013-00128: The Trustees of Columbia University in the City of New York v. Illumina, Inc., 1:12-cv-00376-GMS—Columbia's Responses to Illumina's Requests for Admission. |
Exhibit 2006, filed Oct. 24, 2013 in connection with IPR2013-00128: Green & Wuts, Protective Groups in Organic Synthesis, excerpts from “Protection From the Hydroxyl Group,” (1999). |
Exhibit 2007, filed Oct. 24, 2013 in connection with IPR2013-00128: Katagiri et al., “Selective Protection of the Primary Hydroxyl Groups of Oxetanocin A,” Chem. Pharm. Bull. 43:884-886 (1995). |
Exhibit 1029, filed Jan. 24, 2014 in connection with IPR2013-00128: Jan. 9, 2014 Substitute Declaration of Floyd Romesberg, Ph.D. |
Exhibit 2012, filed Oct. 24, 2013 in connection with IPR2013-00128: Oct. 3, 2013 Deposition Transcript of Bruce Branchaud, Ph.D. |
Exhibit 2016, filed Oct. 24, 2013 in connection with IPR2013-00128: Ruby, Methods in Enzymology (1990). |
Exhibit 2025, filed Oct. 24, 2013 in connection with IPR2013-00128: U.S. Pat. No. 7,057,026 file history. |
Exhibit 1025, filed Jan. 24, 2014 in connection with IPR2013-00128: Substitute Eric Vermaas Declaration, Dec. 20, 2013. |
Exhibit 1021, filed Dec. 23, 2013 in connection with IPR2013-00128: Excerpts from Protective Groups in Organic Synthesis (Theodora W. Greene & Peter G. M. Wuts eds., John Wiley & Sons, Inc. 3rd ed. 1999) (1991). |
Exhibit 1022, filed Dec. 23, 2013 in connection with IPR2013-00128: Signed Deposition Transcript of Dr. Bruce Branchaud on Oct. 3, 2013. |
Jan. 24, 2014 Intelligent Bio-Systems Opposition to Illumina's Motion to Amend in connection with IPR2013-00128. |
Exhibit 1030, filed Jan. 24, 2014 in connection with IPR2013-00128: Dawson et al., “Affinity Isolation of Transcriptionally Active Murine Erythroleukemia cell DNA Using a Cleavable Biotinylated Nucleotide Analog” J. of Biol. Chem., 264, 12830-37 (1989). |
Exhibit 1032, filed Jan. 24, 2014 in connection with IPR2013-00128: Mitra et al., “Fluorescent in situ sequencing on polymerase colonies” Analytical Biochem. 320, 55-65 (2003). |
Exhibit 1033, filed Jan. 24, 2014 in connection with IPR2013-00128: Deposition of Floyd Romesberg, Ph.D., from Jan. 14, 2014. |
Exhibit 1034, filed Jan. 24, 2014 in connection with IPR2013-00128: 1999/2000 Pierce Chemical Company catalog (1999). |
Exhibit 1035, filed Jan. 24, 2014 in connection with IPR2013-00128: Second Declaration of Dr. Bruce Branchaud, dated Jan. 23, 2014. |
Exhibit 1039, filed Jan. 24, 2014 in connection with IPR2013-00128: Excerpts from the file history of European Patent Application No. 02781434.2. |
Exhibit 1041, filed Jan. 24, 2014 in connection with IPR2013-00128: Lukesh et al., “A Potent, Versatile Disulfide-Reducing Agent from Aspartic Acid” J. Am. Chem. Soc., 134, 4057-59 (2012). |
Exhibit 1042, filed Jan. 24, 2014 in connection with IPR2013-00128: Klausner, “Dupont's DNA Sequencer Uses New Chemistry” Nat. Biotech., 5, 1111-12 (1987). |
Exhibit 1043, filed Jan. 24, 2014 in connection with IPR2013-00128: Murakami et al., “Structure of a Plasmodium yoelii gene-encoded protein homologous to the Ca2+-ATPase of rabbit skeletal muscle sarcoplasmic reticulum” J. Cell Sci., 97, 487-95 (1990). |
Exhibit 1044, filed Jan. 24, 2014 in connection with IPR2013-00128: Letsinger et al., “2,4-Dinitrobenzenesulfenyl as a Blocking Group for Hydroxyl Functions in Nucleosides” J. Org. Chem., 29, 2615-2618. |
Exhibit 1045, filed Jan. 24, 2014 in connection with IPR2013-00128: Handlon & Oppenheimer, “Thiol Reduction of 3′-Azidothymidine to 3′-Aminothymidine: Kinetics and Biomedical Implications” Pharm. Res., 5, 297-99 (1988). |
Exhibit 1047, filed Jan. 24, 2014 in connection with IPR2013-00128: Burns et al., “Selective Reduction of Disulfides by Tris(2-carboxyethyl)phosphine” J. Org. Chem., 56, 2648-50. |
Feb. 19, 2014 Substitute Motion to Amend Under 37 C.F.R. §42.121. |
Exhibit 2009, filed Feb. 19, 2014 in connection with IPR2013-00128: Substitute Declaration of Floyd Romesberg, Ph.D., in Support of Patent Owner's Motion to Amend. |
Exhibit 2028, filed Feb. 19, 2014 in connection with IPR2013-00128: Substitute Declaration of Eric Vermaas Accompanying Patent Owner's Motion to Amend. |
Feb. 24, 2014 Patent Owner Illumina's Reply to Petitioner's Opposition to Illumina's Motion to Amend. |
Exhibit 2029, filed Feb. 24, 2014 in connection with IPR2013-00128: Supplementary information for Ex. 1032 (Mitra et al., Analytical Biochem. 320, 55-65, 2003). |
Exhibit 2032, filed Feb. 24, 2014 in connection with IPR2013-00128: ScanArray Express Line of Microarray Scanners—Brochure. |
Exhibit 2034, filed Feb. 24, 2014 in connection with IPR2013-00128: Feb. 11, 2014 Second Deposition Transcript of Bruce Branchaud, Ph.D. |
Exhibit 2037, filed Feb. 24, 2014 in connection with IPR2013-00128: Mullis et al., “Specific Synthesis of DNA in Vitro via a Polymerase-Catalyzed Chain Reaction,” pp. 335-350, in Methods in Enzymology, vol. 155, Recombinant DNA, Part F, ed. Wu, Academic Press, Inc., San Diego (1987). |
Exhibit 2038, filed Feb. 24, 2014 in connection with IPR2013-00128: Brown et al., “Modern machine-aided methods of oligodeoxyribonucleotide synthesis,” pp. 1-11; and Ruth, “Oligodeoxynucleotides with reporter groups attached to the base,” p. 255, in Oligonucleotides and Analogues, A Practical Approach, ed. Eckstein, Oxford Univ. Press, New York (1991). |
Exhibit 2039, filed Feb. 24, 2014 in connection with IPR2013-00128: Dawson and Herman et al., “Affinity isolation of active murine erythroleukemia cell chromatin: Uniform distribution of ubiquitinated histone H2A between active and inactive fractions”, Journal of Cellular Biochemistry 46:166-173 (1991). |
Exhibit 2040, filed Feb. 24, 2014 in connection with IPR2013-00128: Rigas et al., “Rapid plasmid library screening using RecA-coated biotinylated probes,” PNAS USA 83:9591-9595 (1986). |
Exhibit 2041, filed Feb. 24, 2014 in connection with IPR2013-00128: U.S. Pat. No. 4,888,274, issued Dec. 19, 1989 to Radding et al. |
Exhibit 2042, filed Feb. 24, 2014 in connection with IPR2013-00128: Westheimer et al., “Why nature chose phosphates” Science 235:1173-1178 (1987). |
Mar. 18, 2014 Petitioner's Motion to Exclude in connection with IPR2013-00128 (Exhibit 82). |
Exhibit 1048, filed Mar. 18, 2014 in connection with IPR2013-00128: Petitioner's Objections to Patentee's Exhibits submitted with its Reply to Petitioner's Opposition to Patentee's Motion to Amend (Exhibit 83). |
Mar. 18, 2014 Patentee's Motion to Exclude Petitioner's Evidence in connection with IPR2013-00128. |
Demonstrative Exhibits of Intelligent Bio-Systems, Inc., for Apr. 23, 2014 hearing, filed Apr. 18, 2014 in connection with IPR2013-00128. |
Demonstrative Exhibits of Illumina for Apr. 23, 2014 hearing, filed Apr. 21, 2014 in connection with IPR2013-00128. |
May 22, 2014 Record of Apr. 23, 2014 Oral Hearing in connection with IPR2013-00128. |
Jul. 25, 2014 Final Written Decision in connection with IPR2013-00128. |
Metzker, “Sequencing technologies—the next generation,” Nature Review, 11(1):31-46 (2010) (Exhibit 2053 filed by Columbia in connection with IPRs Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322, and IPR2018-00385). |
Ronaghi, et al., “A sequencing method based on real-time pyrophosphate,” Science, 281(5375):363-365 (1998) (Exhibit 2054 filed by Columbia in connection with IPRs Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322, and IPR2018-00385). |
Genomeweb, “Illumina Closes Solexa Acquisition,” Jan. 26, 2007 (Exhibit 2055 filed by Columbia in connection with IPRs Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322, and IPR2018-00385). |
Lindahl, “Instability and decay of the primary structure of DNA,” Nature, 362:709-715 (1993) (Exhibit 2057 filed by Columbia in connection with IPRs Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322, and IPR2018-00385). |
Johnson, “Rapid Quench Kinetic Analysis of Polymerases, Adenosinetriphosphatases, and Enzyme Intermediates,” Methods in Enzymology, 249:38-61 (1995) (Exhibit 2059 filed by Columbia in connection with IPRs Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322, and IPR2018-00385). |
IPR2013-00128, Exhibit 1033, Deposition of Floyd Romesberg, Ph.D. (Jan. 14, 2014) (Exhibit 2080 filed by Columbia in connection with IPRs Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322, IPR2018-00385, and IPR2018-00797). |
IPR2013-00266, Exhibit 2037, Second Declaration of Floyd Romesberg, Ph.D. (Mar. 21, 2014) (Exhibit 2081 filed by Columbia in connection with IPRs Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322, IPR2018-00385, and IPR2018-00797). |
IPR2013-00266, Exhibit 1042, Deposition of Floyd Romesberg, Ph.D. (Apr. 10, 2014) (Exhibit 2082 filed by Columbia in connection with IPRs Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322, IPR2018-00385, and IPR2018-00797). |
IPR2013-00128, Substitute Exhibit 2009, Substitute Declaration of Floyd Romesberg, Ph.D. in Support of Patent Owner's Motion to Amend (Feb. 19, 2014) (Exhibit 2083 filed by Columbia in connection with IPRs Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322, IPR2018-00385, and IPR2018-00797). |
Jannasch, “Deep sea hydrothermal vents: underwater oases,” The NEB Transcript (1992) (Exhibit 2084 filed by Columbia in connection with IPRs Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322, IPR2018-00385, and IPR2018-00797). |
Levine, et al. “The relationship of structure to the effectiveness of denaturing agents for deoxyribonucleic acid,” Biochem., 2(1):168-175 (1963) (Exhibit 2085 filed by Columbia in connection with IPRs Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322, IPR2018-00385, and IPR2018-00797). |
Kit, “Deoxyribonucleic acids,” Annu. Rev. Biochem., 32:43-82 (1963) (Exhibit 2086 filed by Columbia in connection with IPRs Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322, IPR2018-00385, and IPR2018-00797). |
Lindahl & Nyberg, “Rate of Depurination of Native Deoxyribonucleic Acid,” Biochem., 11(19):3610-3618 (1972) (Exhibit 2087 filed by Columbia in connection with IPRs Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322, IPR2018-00385, and IPR2018-00797). |
Hamed et al., “Palladium(II)-Catalyzed Oxidation of Aldehydes and Ketones. 1. Carbonylation of Ketones with Carbon Monoxide Catalyzed by Palladium(II) Chloride in Methanol,” J. Org. Chem., 66(1):180-185 (2001) (Exhibit 2089 filed by Columbia in connection with IPRs Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322, IPR2018-00385, and IPR2018-00797). |
Exhibit from Deposition of Dr. Floyd Romesberg, Sep. 19-20, 2018, in IPR2018-00291, -00318, -00322, and -00385 (Handwritten calculations) (Exhibit 2090 filed by Columbia in connection with IPRs Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322, IPR2018-00385, and IPR2018-00797). |
Pillai & Nandi, “Interaction of Palladium (II) With DNA,” Biochimica et Biophysica Acta, 474:11-16 (1977) (Exhibit 2094 filed by Columbia in connection with IPRs Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322, IPR2018-00385, and IPR2018-00797). |
Qian et al., “Chemoenzymatic synthesis of α-(1→3)-Gal(NAc)-terminating glycosides of complex tertiary sugar alcohols,” J. Am. Chem. Soc. 121:12063-12072 (1999) (Exhibit 2097 filed by Columbia in connection with IPRs Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322, IPR2018-00385, and IPR2018-00797). |
“Complete reverse regioselection in Wacker oxidation of acetonides and cyclic carbonates of allylic diols,” J. Org. Chem. 60:4678-4679 (1995) (Exhibit 2098 filed by Columbia in connection with IPRs Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322, IPR2018-00385, and IPR2018-00797). |
Tsuji, et al., “Regioselective oxidation of internal olefins bearing neighboring oxygen functions by means of palladium catalysts,” Tetrahedron Letters, 23(26):2679-2682 (1982) (Exhibit 2101 filed by Columbia in connection with IPRs Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322, IPR2018-00385, and IPR2018-00797). |
Qian, “Enzymatic and Chemical Synthesis of Oligosaccharide Analogs,” Thesis, University of Alberta (2000) (Exhibit 2102 filed by Columbia in connection with IPRs Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322, IPR2018-00385, and IPR2018-00797). |
Genomeweb, “Helicos and Columbia to Test Scripps' Improved Polymerase for Next-Gen Sequencing,” Oct. 3, 2006 (Exhibit 2104 filed by Columbia in connection with IPRs Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322, IPR2018-00385, and IPR2018-00797). |
Bieg et al., “Isomerization and cleavage of allyl ethers of carbohydrates by trans-[Pd(NH3)2 Cl2],” J. Carbohydrate Chem., 4(3):441-446 (1985) (Exhibit 2105 filed by Columbia in connection with IPRs Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322, IPR2018-00385, and IPR2018-00797). |
Ochiai, “Hypervalent (tert-butylperoxy) iodanes generate iodine-centered radicals at room temperature in solution,” J. Am. Chem. Soc., 118:7716-7730 (1996) (Exhibit 2106 filed by Columbia in connection with IPRs Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322, IPR2018-00385, and IPR2018-00797). |
Katritzky, “The origins of the benzotriazole project, its versatility illustrated by a new −−C=CHCH+OEt synthon, and novel syntheses of alpha beta-unsaturated aldehydes and ketones, furans, pyrroles and allyl ethers,” Synthesis, 1315-1323 (1995) (Exhibit 2107 filed by Columbia in connection with IPRs Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322, IPR2018-00385, and IPR2018-00797). |
Martinez et al., “Acyclic nucleoside triphosphate analogs as terminators in biocatalytic DNA replication,” Bioorganic & Medicinal Chemistry Letters, 7(23):3013-3016 (1997) (Exhibit 2111 filed by Columbia in connection with IPRs Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322, IPR2018-00385, and IPR2018-00797). |
Hawley's Condensed Chemical Dictionary, Thirteenth Edition (1997) (excerpts) (Exhibit 2112 filed by Columbia in connection with IPRs Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322, IPR2018-00385, and IPR2018-00797). |
Parshall, “Homogeneous Catalysis, the Applications and Chemistry of Catalysis by Soluble Transition Metal Complexes,” John Wiley and Sons (1980) (excerpts) (Exhibit 2115 filed by Columbia in connection with IPRs Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322, IPR2018-00385, and IPR2018-00797). |
IPR2017-02172, Paper 22, Decision Denying Petitioner's Request for Rehearing (Aug. 2, 2018) (Exhibit 2117 filed by Columbia in connection with IPRs Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322, IPR2018-00385, and IPR2018-00797). |
Dr. Romesberg NIH Grant, “Evolving Novel Polymerases for Genome Sequencing” (Exhibit 2118 filed by Columbia in connection with IPRs Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322, IPR2018-00385, and IPR2018-00797). |
Solexa, Inc.'s Form 425 Submission to the United States Securities and Exchange Commission (Nov. 14, 2006) (Exhibit 2119 filed by Columbia in connection with IPRs Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322, IPR2018-00385, and IPR2018-00797). |
Eckert et al., “DNA Polymerase Fidelity and the Polymerase Chain Reaction,” Genome Research, 1:17-24 (1991) (Exhibit 2125 filed by Columbia in connection with IPRs Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322, IPR2018-00385, and IPR2018-00797). |
Petitioner's Reply filed by Illumina, Inc. (“Illumina”) on Jan. 22, 2019, in connection with IPR No. IPR2018-00291. |
Illumina Updated Exhibit List filed by Illumina on Jan. 22, 2019, in connection with IPR No. IPR2018-00291. |
Petitioner's Reply filed by Illumina on Jan. 22, 2019, in connection with IPR No. IPR2018-00318. |
Illumina Updated Exhibit List filed by Illumina on Jan. 22, 2019, in connection with IPR No. IPR2018-00318. |
Petitioner's Reply filed by Illumina on Jan. 22, 2019, in connection with IPR No. IPR2018-00322. |
Illumina Updated Exhibit List filed by Illumina on Jan. 22, 2019, in connection with IPR No. IPR2018-00322. |
Petitioner's Reply filed by Illumina on Jan. 22, 2019, in connection with IPR No. IPR2018-00385. |
Illumina Updated Exhibit List filed by Illumina on Jan. 22, 2019, in connection with IPR No. IPR2018-00385. |
Petitioner's Reply filed by Illumina on Jan. 22, 2019, in connection with IPR No. IPR2018-00797. |
Illumina Updated Exhibit List filed by Illumina on Jan. 22, 2019, in connection with IPR No. IPR2018-00797. |
Ruparel et al., “Design and synthesis of a 3′-O-allyl photocleavable fluorescent nucleotide as a reversible terminator for DNA sequencing by synthesis,” Proc. Natl. Acad. Sci. USA, 102:5932-5937 (2005) (Exhibit 1093 filed by Illumina in connection with IPRs Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322, IPR2018-00385, and IPR2018-00797). |
Genet et al., “Practical Palladium-Mediated Deprotective Method of Allyloxycarbonyl in Aqueous Media,” Tetrahedron, 50:497-503 (1994) (Exhibit 1094 filed by Illumina in connection with IPRs Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322, IPR2018-00385, and IPR2018-00797). |
IPR2017-02174, Paper 20, Decision Denying Institution of Inter Partes Review (Apr. 20, 2018) (Exhibit 1095 filed by Illumina in connection with IPRs Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322, IPR2018-00385, and IPR2018-00797). |
IPR2017-02172, Paper 20, Decision Denying Institution of Inter Partes Review (Apr. 20, 2018) (Exhibit 1096 filed by Illumina in connection with IPRs Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322, IPR2018-00385, and IPR2018-00797). |
Nucleic Acids Research publication information for Metzker et al., “Termination of DNA synthesis by novel 3′-modifieddeoxyribonucleoside 5′-triphosphates,” 22:4259-67 (1994) (Exhibit 1097 filed by Illumina in connection with IPRs Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322, IPR2018-00385, and IPR2018-00797). |
IPR2012-00007, Deposition Transcript of Dr. George L. Trainor (Sep. 4-5, 2013) (Exhibit 1098 filed by Illumina in connection with IPRs Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322, IPR2018-00385, and IPR2018-00797). |
IUPAC, Nomenclature of Organic Chemistry, Eds. Rigaudy et al., International Union of Pure and Applied Chemistry, Organic Chemistry Division, Commission on Nomenclature of Organic Chemistry, Pergamon Press, 1979 (Exhibit 1099 filed by Illumina in connection with IPRs Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322, IPR2018-00385, and IPR2018-00797). |
Jensen and Thor, “Organizations for Standardization of Quantities and Units,” Metrologia, 31:503-509 (1994/1995) (Exhibit 1100 filed by Illumina in connection with IPRs Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322, IPR2018-00385, and IPR2018-00797). |
Greene and Wuts, “Protective Groups in Organic Synthesis,” third edition, John Wiley & Sons (1999) (Exhibit 1101 filed by Illumina in connection with IPRs Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322, IPR2018-00385, and IPR2018-00797). |
CRC Handbook of Chemistry and Physics, eds. Weast et al., 72nd edition, CRC Press (1991) (Exhibit 1102 filed by Illumina in connection with IPRs Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322, IPR2018-00385, and IPR2018-00797). |
McGraw-Hill Dictionary of Chemistry, ed. Parker, McGraw-Hill Book Co. (1984) (Exhibit 1103 filed by Illumina in connection with IPRs Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322, IPR2018-00385, and IPR2018-00797). |
Solomons, “Organic Chemistry”, Fourth Edition, John Wiley & Sons (1988) (Exhibit 1104 filed by Illumina in connection with IPRs Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322, IPR2018-00385, and IPR2018-00797). |
Morrison et al., “Organic Chemistry,” Third Edition, Allyn and Bacon, Inc. (1973) (Exhibit 1105 filed by Illumina in connection with IPRs Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322, IPR2018-00385, and IPR2018-00797). |
Cyclist® Exo-Pfu DNA Sequencing Kit, Instruction Manual, Stratagene (1998) (Exhibit 1108 filed by Illumina in connection with IPRs Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322, IPR2018-00385, and IPR2018-00797). |
Hedden et al., “DNA Sequence Determination Using Exonuclease-Deficient Pfu DNA Polymerase in a Cycle Sequencing Format,” 207th ACS National Meeting, Abstract 121, American Chemical Society, San Diego, CA, Mar. 13-17, 1994 (Exhibit 1109 filed by Illumina in connection with IPRs Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322, IPR2018-00385, and IPR2018-00797). |
Transcript for the Deposition of Steven M. Menchen, Jan. 14, 2019, in IPR2018-00291, -00318, -00322, -00385, and -00797 (Exhibit 1112 filed by Illumina in connection with IPRs Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322, IPR2018-00385, and IPR2018-00797). |
Transcript for the Deposition of Steven M. Menchen, Jan. 15, 2019, in IPR2018-00291, -00318, -00322, -00385, and -00797 (Exhibit 1113 filed by Illumina in connection with IPRs Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322, IPR2018-00385, and IPR2018-00797). |
Jannasch, “Deep Sea Hydrothermal Vents: Underwater Oases,” The NEB Transcript 4(1):11-13 (1992) (partial version) (Exhibit 2130 marked in Deposition of Steven M. Menchen, Jan. 15, 2019). |
Metzker et al., “Elimination of Residual Natural Nucleotides from 3′-O-Modified-dNTP Syntheses by Enzymatic Mop-Up,” BioTechniques, 25:814-817 (1998) (Exhibit 2131 marked in Deposition of Steven M. Menchen, Jan. 15, 2019). |
Jannasch, “Deep Sea Hydrothermal Vents: Underwater Oases,” The NEB Transcript 4(1):11-13 (1992) (full version) (Exhibit 2132 marked in Deposition of Steven M. Menchen, Jan. 15, 2019). |
Lemaire-Audoire et al., “Selective Deprotective Method using Palladium-Water Soluble Catalysts,” Tetrahedron Letters, 35:8783-8786 (1994) (Exhibit 1114 filed by Illumina in connection with IPRs Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322, IPR2018-00385, and IPR2018-00797). |
Lemaire-Audoire et al., “Chemoselective removal of allylic protecting groups using water-soluble Pd(OAc)2/TPPTS catalyst,” Journal of Molecular Catalysis A: Chemical, 116:247-258 (1997) (Exhibit 1115 filed by Illumina in connection with IPRs Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322, IPR2018-00385, and IPR2018-00797). |
Qinglin Meng thesis from Dr. Ju's laboratory at Columbia University (2006) (Exhibit 1116 filed by Illumina in connection with IPRs Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322, IPR2018-00385, and IPR2018-00797). |
Kutateladze et al., “3′-Hydroxymethyl 2′-deoxynucleoside 5′-triphosphates are inhibitors highly specific for reverse transcriptase,” FEBS, 207:205-212 (1986) (Exhibit 1118 filed by Illumina in connection with IPRs Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322, IPR2018-00385, and IPR2018-00797). |
Second Declaration of Floyd Romesberg, Ph.D. in Support of Petition for Inter Partes Review in IPR2018-00291, -00318, -00322, -00385, and -00797 (Exhibit 1119 filed by Illumina in connection with IPRs Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322, IPR2018-00385, and IPR2018-00797) ; 2019. |
Service, “The Race for the $1000 Genome,” Science, 311:1544-46 (2006) (Exhibit 1120 filed by Illumina in connection with IPRs Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322, IPR2018-00385, and IPR2018-00797). |
Gardner and Jack, “Determinants of nucleotide sugar recognition in an archaeon DNA polymerase,” Nucleic Acids Research, 27:2545-53 (1999) (Exhibit 1122 filed by Illumina in connection with IPRs Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322, IPR2018-00385, and IPR2018-00797). |
Kraevskii et al., “Substrate Inhibitors of DNA Biosynthesis,” Molecular Biology, 21:25-29 (1987) (Exhibit 1126 filed by Illumina in connection with IPRs Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322, and IPR2018-00385). |
IPR2012-00007, Paper 82, Petitioner Illumina's Opposition to Patent Owner Columbia's Motion to Amend (Sep. 27, 2013) (Exhibit 1127 filed by Illumina in connection with IPRs Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322, and IPR2018-00385). |
IPR2012-00007, Paper 83, Petitioner Illumina's Reply to Patent Owner Columbia's Response to Petition (Sep. 27, 2013) (Exhibit 1128 filed by Illumina in connection with IPRs Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322, and IPR2018-00385). |
Ju et al., “Four-color DNA sequencing by synthesis using cleavable fluorescent nucleotide reversible terminators,” PNAS USA, 103:19635-40 (2006) (Exhibit 1129 filed by Illumina in connection with IPRs Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322, and IPR2018-00385). |
Southworth et al., “Cloning of thermostable DNA polymerases from hyperthermophilic marine Archaea with emphasis on Thermococcus sp. 9ºN-7 and mutations affecting 3′-5′ exonuclease activity,” PNAS USA, 93:5281-85 (1996) (Exhibit 1133 filed by Illumina in connection with IPRs Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322, and IPR2018-00385). |
Takahashi et al., “Palladium-catalyzed Exchange of Allylic Groups of Ethers and Esters with Active Hydrogen Compounds,” Bulletin of the Chemical Society of Japan, 45:230-36 (1972) (Exhibit 1134 filed by Illumina in connection with IPRs Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322, and IPR2018-00385). |
Yamamoto et al., “Interaction of Palladium(0) Complexes with Allylic Acetates, Allyl Ethers, Allyl Phenyl Chalcogenides, Allylic Alcohols, and Allylamines. Oxidative Addition, Condensation, Disproportionation, and π-Complex Formation,” Organometallics, 5:1559-67 (1986) (Exhibit 1135 filed by Illumina in connection with IPRs Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322, and IPR2018-00385). |
Fields, “Methods for Removing the Fmoc Group,” Methods in Molecular Biology, vol. 35, Peptide Synthesis Protocols, Chapter 2, Humana Press (1994) (Exhibit 1136 filed by Illumina in connection with IPRs Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322, and IPR2018-00385). |
IPR2012-00007, Paper 79, Substitute Columbia Motion to Amend under 37 C.F.R. §42.121 (Filing Authorized to Replace Paper No. 66) (Aug. 30, 2013) (Exhibit 1137 filed by Illumina in connection with IPRs Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322, and IPR2018-00385). |
List of documents reviewed by Dr. Romesberg in IPR2018-00291, -00318, -00322, -00385, and -00797 (Exhibit 1138 filed by Illumina in connection with IPRs Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322, IPR2018-00385, and IPR2018-00797) ; 2019. |
Jan. 16, 2019 First Action Interview Pilot Program Pre-Interview Communication issued in connection with U.S. Appl. No. 16/149,098. |
Jan. 25, 2019 First Action Interview Pilot Program Pre-Interview Communication issued in connection with U.S. Appl. No. 16/149,114. |
Apr. 2, 2019 First Action Interview Pilot Program Pre-Interview Communication issued in connection with U.S. Appl. No. 16/150,180. |
Feb. 15, 2019 First Action Interview Pilot Program Pre-Interview Communication issued in connection with U.S. Appl. No. 16/150,185. |
Mar. 12, 2019 First Action Interview Pilot Program Pre-Interview Communication issued in connection with U.S. Appl. No. 16/150,191. |
Communication in Response to Jan. 16, 2019 First Action Interview Pilot Program Pre-Interview Communication filed Feb. 12, 2019 in connection with U.S. Appl. No. 16/149,098. |
Communication in Response to Jan. 25, 2019 First Action Interview Pilot Program Pre-Interview Communication filed Feb. 12, 2019 in connection with U.S. Appl. No. 16/149,114. |
Applicant Initiated Interview Request Form, including Communication in Response to Apr. 2, 2019 First Action Interview Pilot Program Pre-Interview Communication, filed May 2, 2019 in connection with U.S. Appl. No. 16/150,180. |
Communication in Response to Feb. 15, 2019 First Action Interview Pilot Program Pre-Interview Communication filed Feb. 26, 2019 in connection with U.S. Appl. No. 16/150,185. |
Applicant Initiated Interview Request Form, including Communication in Response to Mar. 12, 2019 First Action Interview Pilot Program Pre-Interview Communication, filed in connection with U.S. Appl. No. 16/150,191. |
Summary dated May 1, 2019 Examiner Interview filed May 8, 2019 in connection with U.S. Appl. No. 16/150,191. |
Supplemental Communication Supplementing Communication in Response to Jan. 16, 2019 First Action Interview Pilot Program Pre-Interview Communication filed May 9, 2019 in connection with U.S. Appl. No. 16/149,098. |
Supplemental Communication Supplementing Communication in Response to Jan. 25, 2019 First Action Interview Pilot Program Pre-Interview Communication filed May 13, 2019 in connection with U.S. Appl. No. 16/149,114. |
Supplemental Communication Supplementing Communication in Response to Feb. 15, 2019 First Action Interview Pilot Program Pre-Interview Communication filed May 13, 2019 in connection with U.S. Appl. No. 16/150,185. |
Apr. 4, 2019 First Action Interview Pilot Program Pre-Interview Communication issued in connection with U.S. Appl. No. 16/200,540. |
May 20, 2019 First Action Interview Pilot Program Pre-Interview Communication issued in connection with U.S. Appl. No. 16/200,549. |
Apr. 1, 2019 First Action Interview Pilot Program Pre-Interview Communication issued in connection with U.S. Appl. No. 16/200,557. |
Apr. 9, 2019 First Action Interview Pilot Program Pre-Interview Communication issued in connection with U.S. Appl. No. 16/200,564. |
Apr. 26, 2019 First Action Interview Pilot Program Pre-Interview Communication issued in connection with U.S. Appl. No. 16/200,571. |
Applicant Initiated Interview Request Form, including Communication in Response dated Apr. 4, 2019 First Action Interview Pilot Program Pre-Interview Communication, filed May 3, 2019 in connection with U.S. Appl. No. 16/200,540. |
Applicant Initiated Interview Request Form, including Communication in Response dated Apr. 1, 2019 First Action Interview Pilot Program Pre-Interview Communication, filed May 1, 2019 in connection with U.S. Appl. No. 16/200,557. |
Applicant Initiated Interview Request Form, including Communication in Response dated Apr. 9, 2019 First Action Interview Pilot. Program Pre-Interview Communication, filed May 8, 2019 in connection with U.S. Appl. No. 16/200,564. |
Applicant Initiated Interview Request Form, including Communication in Response dated Apr. 26, 2019 First Action Interview Pilot Program Pre-Interview Communication, filed May 15, 2019 in connection with U.S. Appl. No. 16/200,571. |
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Nov. 21, 2018 Office Action issued in connection with U.S. Appl. No. 14/670,748. |
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Aug. 19, 2013 Petition 2 of 2 for Inter Partes Review of U.S. Pat. No. 7,566,537, issued Aug. 19, 2013. |
Exhibit 1015, filed Aug. 19, 2013 in connection with IPR2013-00518: Aug. 16, 2013 Declaration of Dr. Bruce Branchaud. |
Exhibit 1016, filed Aug. 19, 2013 in connection with IPR2013-00518: Excerpts from the '537 Patent File History. |
Exhibit 1017, filed Aug. 19, 2013 in connection with IPR2013-00518: Excerpts from the file history of European Patent Application No. 02781434.2. |
Feb. 13, 2014 Decision of Institution of Inter Partes Review IPR2013-00518. |
May 5, 2014 Patentee Request for Adverse Judgment in IPR2013-00518. |
May 6, 2014 Decision of Adverse Judgment in IPR2013-00518. |
Notice of opposition to a European patent filed by Illumina, Inc. (“Illumina”) on Oct. 29, 2019, in connection with European Patent No. EP 3 034 627. |
Opposition filed by Illumina on Oct. 29, 2019, in connection with European Patent No. EP 3 034 627. |
Consolidated List of references cited by Illumina issued on Oct. 29, 2019, in connection with European Patent No. EP 3 034 627. |
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Applicant-Initiated Interview Summary, dated Nov. 11, 2017 in connection with U.S. Appl. No. 15/167,917, Ju et al. |
Second Office Action dated Jan. 4, 2017 in connection with U.S. Appl. No. 15/617,917, Ju et al. |
Response to Second Office Action, filed Jan. 10, 2017 in connection with U.S. Appl. No. 15/167,917. |
Terminal Disclaimer filed on Jan. 10, 2017 in connection with U.S. Appl. No. 15/167,917, Ju et al. |
Third Office Action, dated Mar. 30, 2017 in connection with U.S. Appl. No. 15/167,917, Ju et al. |
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First Office Action dated Feb. 9, 2017 in connection with U.S. Appl. No. 15/380,270, Ju et al. |
Applicant-Initiated Interview Summary, dated Apr. 24, 2017 in connection with U.S. Appl. No. 15/380,270, Ju et al. |
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Terminal Disclaimer filed on May 9, 2017 in connection with U.S. Appl. No. 15/380,270, Ju et al. |
Notice of Allowance, dated May 26, 2017 in connection with U.S. Appl. No. 15/380,270, Ju et al. |
First Office Action dated Feb. 8, 2017 in connection with U.S. Appl. No. 15/380,284, Ju et al. |
Applicant-Initiated Interview Summary, dated Apr. 25, 2017 in connection with U.S. Appl. No. 15/380,284, Ju et al. |
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Terminal Disclaimer filed on May 8, 2017 in connection with U.S. Appl. No. 15/380,284, Ju et al. |
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Applicant-Initiated Interview Summary, dated Apr. 25, 2017 in connection with U.S. Appl. No. 15/380,311, Ju et al. |
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Communication Pursuant to Article 94(3) EPC, dated May 24, 2016 in connection with European Patent Application No. 15195765.1. |
Sep. 23, 2016 Response to the May 24, 2016 Communication Pursuant to Article 94(3) EPC, issued by the EPO in connection with EP 15195765.1. |
Communication Pursuant to Article 94(3) EPC, dated Nov. 10, 2016 in connection with European Patent Application No. 15195765.1. |
Mar. 20, 2017 Response to Communication Pursuant to Article 94(3) EPC, dated Nov. 10, 2016 in connection with European Patent Application No. 15195765.1. |
Exhibit 2025, filed Jun. 24, 2013 in connection with IPR2012-00006: Sanger et al. (1977) DNA sequencing with chain-terminating inhibitors, Proc. Natl. Acad. Sci. USA. 74:5463-5467. |
Exhibit 2026, filed Jun. 24, 2013 in connection with IPR2012-00006: Pennisi (2000) DOE Team Sequences Three Chromosomes, Science. 288:417-419. |
Exhibit 2027, filed Jun. 24, 2013 in connection with IPR2012-00006: Welch and Burgess (1999) Synthesis of Fluorescent, Photolabile 3′-O-Protected nucleoside Triphosphates for the Base Addition Sequencing Scheme, nucleosides & Nucleotides. 18:197-201. |
Exhibit 2028, filed Jun. 24, 2013 in connection with IPR2012-00006: Hyman (1998) a New Method of Sequencing DNA, Analytical Biochemistry 174:423-436. |
Exhibit 2030, filed Jun. 24, 2013 in connection with IPR2012-00006: Canard and Sarfati (1994) DNA polymerase fluorescent substrates with reversible 3′-tags, Gene. 1481-6. |
Exhibit 2032, filed Jun. 24, 2013 in connection with IPR2012-00006: Sarfati et al. (1987) Synthesis of Fluorescent or Biotinylated Nucleoside Compounds, Tetrahedron Letters. 43:3491-3497. |
Exhibit 2033, filed Aug. 30, 2013 in connection with IPR2012-00006: Jun. 25, 2013 Substitute Declaration of Dr. George L. Trainor [redacted]. |
Exhibit 2034, filed Jun. 25, 2013 in connection with IPR2012-00006: Jingyue Ju et. al. (2006) Four-color DNA sequencing by synthesis using cleavable fluorescent nucleotide reversible terminators, Proceedings of the National Academy of Sciences. 103: 19635-19640. |
Exhibit 2035, filed Jun. 25, 2013 in connection with IPR2012-00006: Batista et al. (2008) PRG-1 and 21U-RNAs Interact to Form the piRNA Complex Required for Fertility in C. elegans. Molecular Cell 31:1-12. |
Exhibit 2036, filed Jun. 25, 2013 in connection with IPR2012-00006: Form 7 Review Context and Analysis, Biomedical Engineering and Research to Aid Persons with Disabilities Programs Dec. 19-20, 2000 Panel Review, Fluorescence Imaging Chip System for Massive Parallel DNA Sequencing. Proposal No. BES-0097793. |
Exhibit 2037, filed Jun. 25, 2013 in connection with IPR2012-00006: Oct. 1, 2006 Request for opinion on manuscript by J. Ju et. al., Proceedings of National Academy of Sciences, U.S.A. |
Exhibit 2038, filed Jun. 25, 2013 in connection with IPR2012-00006: Correspondence between George Rupp, Chancellor, Columbia University and Richard T. Schlossberg, President, The David and Lucile Packard Foundation (2001). |
Exhibit 2039, filed Jun. 25, 2013 in connection with IPR2012-00006: The David and Lucile Packard Foundation, Packard Fellowships for Science and Engineering, http://www.packard.org/what-wefund/conservation-and-science/packard-fellowships-for-science-andengineering/ (last visited Jun. 25, 2013). |
Exhibit 2040, filed Jun. 25, 2013 in connection with IPR2012-00006: “Chemistry for Next-Generation Sequencing.” http://www.illumina.com/technology/sequencing_technology.ilmn. |
Exhibit 2041, filed Jun. 25, 2013 in connection with IPR2012-00006: Chiang et al. (2010) Mammalian microRNAs: experimental evaluation of novel and previously annotated genes, Genes & Dev. 24:992, 993. |
Exhibit 2042, filed Jun. 25, 2013 in connection with IPR2012-00006: Seo et al. (2004) Photocleavable fluorescent nucleotides for DNA sequencing on a chip constructed by site-specific coupling chemistry, Proc. Natl Acad. Sci. 101 (15) :5488-5493. |
Exhibit 2043, filed Jun. 25, 2013 in connection with IPR2012-00006: Curriculum vitae of Mr. Raymond S. Sims. |
Exhibit 2044, filed Jun. 25, 2013 in connection with IPR2012-00006: Prior Testimony of Mr. Raymond S. Sims. |
Exhibit 2045, filed Jun. 25, 2013 in connection with IPR2012-00006: Documents reviewed by Mr. Raymond S. Sims in this Proceeding. |
Exhibit 2052, filed Jun. 25, 2013 in connection with IPR2012-00006: Gary Schroth Proof of Chiang Paper. |
Exhibit 2074, filed Jun. 25, 2013 in connection with IPR2012-00006: Information about Dr. Ju's intellectual property sent to Illumina. |
Exhibit 2090, filed Jun. 26, 2013 in connection with IPR2012-00006: IPR Default Protective Order. |
Exhibit 2091, filed Jun. 26, 2013 in connection with IPR2012-00006: Declaration of Raymond S. Sims. |
Exhibit 2092, filed Oct. 10, 2013 in connection with IPR2012-00006: Rough Transcript of the Sep. 4, 2013 deposition of Dr. George L. Trainor. |
Exhibit 2093, filed Oct. 1, 2013 in connection with IPR2012-00006: Excerpt from Protective Groups in Organic Synthesis, 3rd Ed. (Theodora W. Greene and Peter G.M. Wuts ed., John Wiley & Sons, Inc. 1999). |
Exhibit 2094, filed Oct. 1, 2013 in connection with IPR2012-00006: Final transcript of the Sep. 4-6, 2013 deposition of Dr. George L. Trainor. |
Exhibit 2095, filed Oct. 1, 2013 in connection with IPR2012-00006: Final transcript of the Sep. 3, 2013 deposition of Raymond S. Sims. |
Nov. 12, 2013 Petitioner Motion to Exclude Evidence in connection with IPR2012-00006. |
Exhibit 1056, filed Nov. 19, 2013 in connection with IPR2012-00006: Videotaped Deposition Transcript of Kevin Burgess, Ph.D., Oct. 28, 2013, signed with errata. |
Nov. 12, 2013 Patent Owner Motion for Observations on the Cross-Examination Testimony of Kevin Burgess, Ph.D. in connection with IPR2012-00006. |
Nov. 12, 2013 Patent Owner Motion to Exclude Evidence in connection with IPR2012-00006. |
Exhibit 2099, filed Nov. 12, 2013 in connection with IPR2012-00006: Welch, M., et al (2005) Corrigenda to Syntheses of Nucleosides Designed for Combinatorial DNA Sequencing Chem. Eur.J., 1999, 951-960. Published in Chem. Eur. J, 2005, 11, 7136-7145. |
Exhibit 2100, filed Nov. 12, 2013 in connection with IPR2012-00006: Welch, M (1999) “Base Additions Sequencing Scheme (BASS) and Studies Toward New Sequencing Methodologies.” PhD. Dissertation, Texas A&M University. |
Exhibit 2101, filed Nov. 12, 2013 in connection with IPR2012-00006: Lu and Burgess (2006) “A Diversity Oriented Synthesis of 3′-O-modified nucleoside triphosphates for DNA ‘Sequencing by Synthesis’.” Bioorganic & Medicinal Chemistry Letters, 16, 3902-3905. |
Exhibit 2102, filed Nov. 12, 2013 in connection with IPR2012-00006: Advanced Sequencing Technology Awards 2004. http://www.genome.gov/12513162 (accessed Oct. 14, 2013). |
Exhibit 2103, filed Nov. 12, 2013 in connection with IPR2012-00006: Welch and Burgess (2006) Erratum to Synthesis of Fluorescent, Photolabile 3′-O-Protected Nucleoside Triphosphates for the Base Addition Sequencing Scheme, Nucleosides & Nucleotides,18:197-201. Published in Nucleosides, Nucleotides and Nucleic Acids, 25:1, 119. |
Nov. 26, 2013 Petitioner Response to Motion for Observations in connection with IPR2012-00006. |
Nov. 26, 2013 Patent Owner Opposition to Petitioner's Motion to Exclude in connection with IPR2012-00006. |
Nov. 26, 2013 Petitioner Opposition to Motion to Exclude in connection with IPR2012-00006. |
Dec. 3, 2013 Petitioner Reply to Patent Owner's Opposition to Motion to Exclude in connection with IPR2012-00006. |
Dec. 3, 2013 Patent Owner Reply on Motion to Exclude in connection with IPR2012-00006. |
Exhibit 2105, filed Dec. 15, 2013 in connection with IPR2012-00006: Columbia's Demonstratives Under 42.70(b) for Dec. 17, 2013 Oral Hearing in connection with IPR2012-00006, IPR2012-00007, and IPR2013-00011. |
Exhibit 1057, filed Dec. 16, 2013 in connection with IPR2012-00006: Illumina's Invalidity Demonstratives for Final Hearing Dec. 17, 2013 in connection with IPR2012-00006, IPR2012-00007, and IPR2013-00011. |
Feb. 10, 2014 Record of Dec. 17, 2013 Oral Hearing in connection with IPR2012-00006, IPR2012-00007, and IPR2013-00011. |
Mar. 6, 2014 Final Written Decision in connection with IPR2012-00006. |
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Excerpts from the Ex Parte Reexamination History of U.S. Pat. No. 6,232,465 dated Aug. 4, 2006 (Exhibit 2065 filed with the Patent Owner Response by Columbia on Oct. 26, 2018, in connection with IPRs Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322, and IPR2018-00385). |
Curriculum Vitae of Steven M. Menchen, Ph.D. (Exhibit 2066 filed with the Patent Owner Response by Columbia on Oct. 26, 2018, in connection with IPRs Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322, and IPR2018-00385). |
Project Information for Dr. Romesberg Nih Grant, “Evolving Novel Polymerases for Genome Sequencing” (Exhibit 2103 filed with the Patent Owner Response by Columbia on Oct. 26, 2018, in connection with IPRs Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322, IPR2018-00385, and IPR2018-00797). |
Internal Solexa Email (Exhibit 2120 (Public version) filed with the Patent Owner Response by Columbia on Oct. 26, 2018, in connection with IPRs Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322, IPR2018-00385, and IPR2018-00797). |
Brief for Appellant filed by the Trustees of Columbia University in the City of New York (“Columbia”) on Jan. 21, 2020, in connection with Columbia v. Illumina, Inc., Nos. 2019-2302, 2019-2303, 2019-2304, 2019-2305, and 2019-2452 (Fed. Cir.). |
Declaration of Floyd Romesberg, Ph.D., filed by Illumina, Inc. Mar. 16, 2018 with the Petition for Inter Partes Review of U.S. Pat. No. 9,868,985, in connection with Case No. IPR2018-00797. |
Excerpts from the Prosecution History of U.S. Pat. No. 9,718,852 not included in Ex-1009 dated Dec. 19, 2016 (Exhibit 2005 filed by The Trustees of Columbia University in the City of New York with the Patent Owner Preliminary Response, in connection with Case No. IPR2018-00291). |
Excerpts from the Prosecution History of U.S. Pat. No. 9,725,480 not included in EX-1038 dated Jun. 23, 2017 (Exhibit 2006 filed by The Trustees of Columbia University in the City of New York with the Patent Owner Preliminary Response, in connection with Case Nos. IPR2018-00291, IPR2018-00318, and IPR2018-00322). |
IPR2013-00517, Ex. 2011, Declaration of Floyd Romesberg, Ph.D. (May 5, 2014) (Exhibit 2007 filed by the Trustees of Columbia University in the City of New York with the Patent Owner Preliminary Response, in connection, with Case Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322, IPR2018-00385, and IPR2018-00797). |
IPR2013-00517, Paper 32, Illumina's Patent Owner Response (May 5, 2014) (Exhibit 2008 filed by the Trustees of Columbia University in the City of New York with the Patent Owner Preliminary Response, in connection with Case Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322, IPR2018-00385, and IPR2018-00797). |
Excerpts from the Ex Parte Reexamination History of U.S. Pat. No. 5,808,045 dated Jun. 25, 2010 (Exhibit 2009 filed by the Trustees of Columbia University in the City of New York with the Patent Owner 'Preliminary Response, in connection with Case Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322, IPR2018-00385, and IPR2018-00797). |
Assignment data in connection with U.S. Pat. No. 5,808,045 dated Mar. 24, 2018 (Exhibit 2010 filed by the Trustees of Columbia University in the City of New York with the Patent Owner Preliminary Response, in connection with Case Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322, IPR2018-00385, and IPR2018-00797). |
Metzker, et al., “Elimination of Residual Natural Nucleotides from 3'-O-Modified-dNTP Syntheses by Enzymatic Mop-Up,” BioTechniques, 25:814-817 (1998) (Exhibit 2012 filed by the Trustees of Columbia University in the City of New York with the Patent Owner Preliminary Response, in connection with Case Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322, IPR2018-00385, and IPR2018-00797). |
Metzker, et al., “Stop-Start DNA Synthesis in the Base Addition Sequencing Scheme (BASS),” Genome Mapping & Sequencing (1994) (Exhibit 2014 filed by The Trustees of Columbia University in the City of New York with the Patent Owner Preliminary Response, in connection with Case Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322, IPR2018-00385, and IPR2018-00797). |
Boons, et al., “A New Procedure for the Isomerisation of Substituted and Unsubstituted Allyl Ethers of Carbohydrates,” Chemical Communications, 141-142 (1996) (Exhibit 2018 filed by The Trustees of Columbia University in the City of New York with the Patent Owner Preliminary Response, in connection with Case Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322, IPR2018-00385, and IPR2018-00797). |
Ochiai, et al., “Hypervalent (tert-Butylperoxy)iodanes Generate Iodine-Centered Radicals at Room Temperature in Solution: Oxidation and Deprotection of Benzyl and Allyl Ethers, and Evidence for Generation of α-Oxy Carbon Radicals,” J. Am. Chem. Soc., 118:7716-7730 (1996) (Exhibit 2019 filed by The Trustees of Columbia University in the City of New York with the Patent Owner Preliminary Response, in connection with Case Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322, IPR2018-00385, and IPR2018-00797). |
Olivero & Dunach, “Nickel-catalysed Electrochemical Reductive Deprotection of Allyl Ethers,” J. Chem. Soc., Chem. Commun., 2497-2498 (1995) (Exhibit 2020 filed by The Trustees of Columbia University in the City of New York with the Patent Owner Preliminary Response, in connection with Case Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322, IPR2018-00385, and IPR2018-O0797). |
Excerpts from the Ex Parte Reexamination History of U.S. Pat. No. 6,232,465 dated Aug. 3, 2006 (Exhibit 2022 filed by the Trustees of Columbia University in the City of New York with the Patent Owner Preliminary Response, in connection with Case Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322, and IPR2018-00385). |
Solexa, Inc.'s Fed. R. Civ. P. 7.1 Statement (Feb. 19, 2010) (Exhibit 2023 filed by the Trustees of Columbia University in the City of New York with the Patent Owner Preliminary Response, in connection with Case Nos. IPR2018-00291, IPR2018-00818, IPR2018-00322, and 1PR2018-00385). |
Solexa, Inc.'s Schedule 13D-A Submission to the United States Securities and Exchange Commission (Feb. 2, 2007) (Exhibit 2024 filed by The Trustees of Columbia University in the City of New York with the Patent Owner Preliminary Response, in connection with Case Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322, IPR2018-00385, and IPR2018-00797). |
Litosh, et al.; “Improved Nucleotide Selectivity and Termination Of 3'-OH Unblocked Reversible Terminators by Molecular Tuning of 2-Nitrcbenzyl Alkylated HOMedU Triphosphates,” Nucleic Acids Research, 39:1-13 (2011) (Exhibit 2025 filed by The Trustees of Columbia University in the City of New York with the Patent Owner Preliminary Response, in connection with Case Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322, IPR2018-00385, and IPR2018-00797). |
IPR2017-02172, Paper 6, Preliminary Response of Patent Owner Illumina Cambridge Ltd. (Jan. 23, 2018) (Exhibit 2026 filed by The. Trustees of Columbia University in the City of New York with the Patent Owner Preliminary Response, in connection with Case Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322, IPR2018-00385, and IPR2018-00797). |
IPR2017-02174, Paper 6, Preliminary Response of Patent Owner Illumina Cambridge Ltd. (Jan. 23, 2018) (Exhibit 2027 filed by the Trustees of Columbia University in the City of New York with the Patent Owner Preliminary Response, in connection with Case Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322, IPR2018-00385, and IPR2018-00797). |
No. 2015-1123 (CAFC), Brief of Patent Owner-Appellant Illumina Cambridge Ltd., D.I. 27 (Mar. 10, 2015) (Exhibit 2029 filed by the Trustees of Columbia University in the City of New York with the Patent Owner Preliminary Response, in connection with Case Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322, IPR2018-00385, and IPR2018-00797). |
IPR2013-00266, Paper 39, Patent Owner Illumina's Reply to Petitioner's Opposition to Illumina's Motion to Amend (Mar. 21, 2014) (Exhibit 2030 filed by the Trustees of Columbia University in the City of New York with the Patent Owner Preliminary Response, in connection with Case Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322, IPR2018-00385, and IPR2018-00797). |
Canard & Sarfati, “DNA Polymerase Fluorescent Substrates with Reversible 3'-Tags,” Gene, 148:1-6 (1994) (Exhibit 2031 filed by the Trustees of Columbia University in the City of New York with the Patent Owner Preliminary Response, in connection with Case Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322, IPR2018-00385, and IPR2018-00797). |
IPR2013-00517, Paper 84, Oral Hearing Transcript (Feb. 2, 2015) (Exhibit 2032 filed by the Trustees of Columbia University in the City of New York with the Patent Owner Preliminary Response, in connection with Case Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322, IPR2018-00385, and IPR2018-00797). |
IPR2013-00517, Paper 64, Illumina's Motion for Observations on the Cross-Examination Testimony of Bruce Branchaud, Ph.D. and Michael Metzker, Ph.D. (Sep. 2, 2014) (Exhibit 2033 filed by the Trustees of Columbia University in the City of New York with the Patent Owner Preliminary Response, in connection with Case Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322, IPR2018-00385, and IPR2018-00797). |
IPR2012-00007, Paper 5, Petition for Inter Partes Review of U.S. Pat. No. 7,790,869 (Sep. 16, 2012) (Exhibit 2034 filed by the Trustees of Columbia University in the City of New York with the Patent Owner .Preliminary Response, in connection with Case Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322, IPR2018-00385, and IPR2018-00797). |
IPR2013-00517, Exhibit 1025, Deposition of Floyd Romesberg, Ph.D. (Jul. 8, 2014) (Exhibit 2035 filed by the Trustees of Columbia University in the City of New York with the Patent Owner Preliminary Response, in connection with Case Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322, IPR2018-00385, and IPR2018-00797). |
IPR2012-00007, Paper 38, Decision on Petition for Inter Partes Review (Mar. 12, 2013) (Exhibit 2036 filed by the Trustees of Columbia University in the City of New York with the Patent Owner Preliminary Response, in connection with Case Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322, IPR2018-00385, and IPR2018-00797). |
Assignment data in connection with U.S. Patent Application Publication No. 2007/0166705 and U.S. Pat. No. 7,541,444 dated Mar. 24, 2018 (Exhibit 2037 filed by the Trustees of Columbia University in the City of New York with the Patent Owner Preliminary Response, in connection with Case Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322, IPR2018-00385, and IPR2018-00797). |
Assignment data in connection with U.S. Pat. No. 6,232,465 dated Mar. 24, 2018 (Exhibit 2038 filed by the Trustees of Columbia University in the City of New York with the Patent Owner Preliminary Response, in connection with Case Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322, IPR2018-00385, and IPR2018-00797). |
Translation Affidavit for Anazawa dated Sep. 12, 2012 (Exhibit 2040 filed by the Trustees of Columbia University in the City of New York with the Patent Owner Preliminary Response, in connection with Case Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322, IPR2018-00385, and IPR2018-00797). |
Welch & Burgess, “Synthesis of Fluorescent, Photolabile 3'O-Protected Nucleoside Triphosphates for the Base Addition Sequencing Scheme,” Nucleosides & Nucleotides, 18:197-201 (1999) (Exhibit 2041 filed by the Trustees of Columbia University in the City of New York with the Patent Owner Preliminary Response, in connection with Case Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322, IPR2018-00385, and IPR2018-00797). |
IPR2013-00517, Paper 68, Illumina's Opposition to Ibs Motion to Exclude Evidence dated Sep. 15, 2014 (Exhibit 2042 filed by the Trustees of Columbia University in the City of New York with the Patent Owner Preliminary Response, in connection with Case Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322, IPR2018-00385, and IPR2018-00797). |
Excerpts from the Prosecution History of U.S. Pat. No. 7,771,973 dated Jun. 1, 2009 (Exhibit 2043 filed by the Trustees of Columbia University in the City of New York with the Patent Owner Preliminary Response, in connection with Case Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322, IPR2018-00385, and IPR2018-00797). |
Excerpts from the Prosecution History of U.S. Pat. No. 9,719,139 not included in Ex-1062 dated Dec. 19, 2016 (Exhibit 2044 filed by The Trustees of Columbia University in the City of New York with the Patent Owner Preliminary Response, in connection with Case No. IPR2018-00318). |
Excerpts from the Prosecution History of U.S. Pat. No. 9,708,358 not included in EX-1065 dated Dec. 19, 2016 (Exhibit 2045 filed by The Trustees of Columbia University in the City of New York with the Patent Owner Preliminary Response, in connection with Case No. IPR2018-00322). |
Froehler, et a1. “Oligodeoxynucleotides Containing C-5 Propyne Analogs of 2'-Deoxyuridine and 2'-Deoxycytidine,” Tetrahedron Letters, 33:5307-5310 (1992) (Exhibit 2046 filed by The Trustees of Columbia University in the City of New York with the Patent Owner Preliminary Response, in connection with Case Nos. IPR2018-00318, IPR2018-00322, and IPR2018-00797). |
Excerpts from the Prosecution History of U.S. Pat. No. 9,725,480 not included in Ex-1068 dated Jun. 8, 2016 (Exhibit 2047 filed by The Trustees of Columbia University in the City of New York with the Patent Owner Preliminary Response, in connection with Case No. IPR2018-00385). |
Excerpts fromrthe Prosecution History of U.S. Pat. No. 9,718,852 not included in Ex-1072 dated Jul. 12, 2017 (Exhibit 2048 filed by The Trustees of Columbia University in the City of New York with the Patent Owner Preliminary Response, in connection with Case No. IPR2018-00385). |
IPR2018-00291, Petition for Inter Partes Review of U.S. Pat. No. 9,718,852 (Dec. 8, 2017) (Exhibit 2049 filed by The Trustees of Columbia University in the City of New York with the Patent Owner Preliminary Response, in connection with Case Nos. IPR2018-00385 and IPR2018-00797). |
Excerpts from the Prosecution History of U.S. Pat. No. 9,868,985 not included in Ex. 1076 dated Jul. 12, 2017 (Exhibit 2051 filed by The Trustees of Columbia University in the City of New York with the Patent Owner Preliminary Response, in connection with Case No. IPR2018-00797). |
Declaration of Steven M. Menchen, Ph.D. dated Jul. 5, 2018 (Exhibit 2052 filed by The Trustees of Columbia University in the City of New York with the Patent Owner Preliminary Response, in connection with Case No. IPR2018-00797). |
Metzker “Sequencing technologies—the next generation,” Nature Review, 11(1) 231-46 (2010) (Exhibit 2053 filed by The Trustees of Columbia University in the City of New York with the Patent Owner Preliminary Response, in connection with Case No. IPR2018-00797). |
Ronaghi, et al. “A Sequencing Method Based on Real-Time Pyrophosphate,” Science, 281(5375):363-365 (1998) (Exhibit 2054 filed by The Trustees of Columbia University in the City of New York with the Patent Owner Preliminary Response, in connection with Case No. IPR2018-00797). |
Genomeweb, “Illumina Closes Solexa Acquisition,” Jan. 26, 2007 (Exhibit 2055 filed by The Trustees of Columbia University in the City of New York with the Patent Owner Preliminary Response, in connection with Case No. IPR2018-00797). |
Lee et al., “Unwinding of Double-Stranded DNA Helix by Dehydration,” Proc. Natl. Acad. Sci. USA, 78(5):2838-2842 (1981) (Exhibit 2056 filed by The Trustees of Columbia University in the City of New York with the Patent Owner Preliminary Response, in connection with Case No. IPR2018-00797). |
Lindahl, “Instability and decay of the primary structure of DNA,” Nature, 362:709-715 (1993) (Exhibit 2057 filed by The Trustees of Columbia University in the City of New York with the Patent Owner Preliminary Response, in connection with Case No. IPR2018-00797). |
Mozingo, “Palladium Catalysts,” Organic Syntheses, Coll. 3:658 (1955) (Exhibit 2058 filed by The Trustees of Columbia University in the City of New York with the Patent Owner Preliminary Response, in connection with Case No. IPR2018-00797). |
Johnson, “Rapid Quench Kinetic Analysis of Polymerases, Adenosinetriphosphatases, and Enzyme Intermediates ,” Methods in Enzymology, 249:38-61 (1995) (Exhibit 2059 filed by The Trustees of Columbia University in the City of New York with the Patent Owner Preliminary Response, in connection with Case No. IPR2018-00797). |
IPR2018-00291, Institution Decision, Paper No. 16 (Jun. 25, 2018) (Exhibit 2060 filed by The Trustees of Columbia University in the City of New York with the Patent Owner Preliminary Response, in connection with Case No. IPR2018-00797). |
Zielonacka-Lis, “The Acidic Hydrolysis of Nucleosides and Nucleotides,” Nucleosides & Nucleotides, 8(3) :838-405 (1989) (Exhibit 2061 filed by The Trustees of Columbia University in the City of New York with the Patent Owner Preliminary Response, in connection with Case No. IPR2018-00797). |
IPR2013-00128, Ex. 1029, Substitute Declaration of Floyd Romesberg, Ph.D. (Jan. 9, 2014) (Exhibit 2062 filed by The Trustees of Columbia University in the City of New York with the Patent Owner Preliminary Response, in connection with Case No. IPR2018-00797). |
IPR2018-00318, Institution Decision, Paper No. 16 (Jul. 3, 2018) (Exhibit 2063 filed by The Trustees of Columbia University in the City of New York with the Patent Owner Preliminary Response, in connection with Case No. IPR2018-00797). |
IPR72018-00322, Institution Decision, Paper No. 16 (Jul. 3, 2018) (Exhibit 2064 filed by The Trustees of Columbia University in the City of New York with the Patent Owner Preliminary Response, in connection with Case No, IPR2018-00797). |
Excerpts from the Ex Parte Reexamination History of U.S. Pat. No. 6,232,465 dated Aug. 3, 2006 (Exhibit 2065 filed by The Trustees of Columbia University in the City of New York with the Patent Owner Preliminary Response, in connection with Case No. IPR2018-00797). |
Curriculum Vitae of Steven M. Menchen, Ph.D. (Exhibit 2066 filed Jul. 6, 2018 by The Trustees of Columbia University in the City of New York with the Patent Owner Preliminary Response, in connection with Case No. IPR2018-00797). |
Mar. 6, 2014 IPR2012-00007, Paper 140, Final Written Decision (Exhibit 1005 filed by Illumina, Inc. with the Petition for Inter Partes Review, in connection with Case Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322, IPR2018-00385, and IPR2018-00797). |
Mar. 6, 2014 IPR2012-00006, Paper 128, Final Written Decision (Exhibit 1006 filed by Illumina, Inc. with the Petition for Inter Partes Review, in connection with Case Nos. IPR2018- 00291, IPR2018-00318, IPR2018-00322, IPR2018-00385, and IPR2018-00797). |
Mar. 6, 2014 IPR2013-00011, Paper 130, Final Written Decision (Exhibit 1007 filed by Illumina, Inc. with the Petition for Inter Partes Review, in connection with Case Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322, IPR2018-00385, and IPR2018-00797). |
Jul. 17, 2015 Federal Circuit Opinion Affirming IPR2012-00006, IPR2012-00007 and IPR2013-00011 (Exhibit 1008 filed by Illumina, Inc. with the Petition for Inter Partes Review, in connection with Case Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322, IPR2018-00385, and IPR2018-00797). |
Excerpts from Prosecution History of U.S. Pat. No. 9,718,852 (“Ju”) dated Jul. 12, 2017 (Exhibit 1009 filed by Illumina, Inc. with the Petition for Inter Partes Review, in connection with Case No. IPR2018-00291). |
Alberts, et al., “Molecular Biology of the Cell”, Third Edition, Garland Publishing Inc., New York (1994) (Exhibit 1011 filed by Illumina, Inc. with the Petition for Inter Partes Review, in connection with Case Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322, IPR2018-00385, and IPR2018-00797). |
Declaration of Floyd Romesberg, Ph.D. dated Dec. 8, 2017 (Exhibit 1012 filed by Illumina, Inc. with the Petition for Inter Partes Review, in connection with Case No. IPR2018-00291). |
Prober, et a1., “A System for Rapid DNA Sequencing with Flourescent Chain-Terminating Dideoxynucleotides”, Science, 238:336-341 (1987) (“Prober”) (Exhibit 1014 filed by Illumina, Inc. with the Petition for Inter Partes Review, in connection with Case Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322, IPR2018-00385, and IPR2018-00797). |
Metzker, et al., “Termination of DNA synthesis by novel 3'-modified-deoxyribonucleoside 5'-triphosphates” , Nucleic Acids Research, 22:4259-67 (1994) (“Metzker”) (Exhibit 1016 filed by Illumina, Inc. with the Petition for Inter Partes Review, in connection with Case Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322, IPR2018-00385, and IPR2018-00797). |
Wu and Metzker, et al., “Termination of DNA synthesis by N6-alkylated, not 3'O-alkylated, photocleavable 2'-deoxyadenosine triphosphates”, Nucleic Acids Research, 35:6339-6349 (2007) (“Wu and Metzker”) (Exhibit 1017 filed by Illumina, Inc. with the Petition for Inter Partes Review, in connection with Case Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322, IPR2018-00385, and IPR2018-00797). |
Sanger et. al., “DNA sequencing with chain-terminating inhibitors”, Proc. Natl. Acad. Sci. USA, 74:5463-5467 (1977) (“Sanger”) (Exhibit 1018 filed by Illumina, Inc. with the Petition for Inter Partes Review, in connection with Case Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322, IPR2018-00385, and IPR2018-00797). |
Pelletier, et al., “Structures of Ternary Complexes of Rat DNA Polymerase β, a DNA Template-Primer, and ddCTP”, Science, 264:1891-1903 (1994) (“Pelletier”) (Exhibit 1021 filed by Illumina, Inc. with the Petition for Inter Partes Review, in connection with Case Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322, IPR2018-00385, and IPR2018-00797). |
Declaration of Jingyue Ju from Prosecution History of U.S. Pat. No. 9,718,852 (“Ju”) dated May 2, 2017 (Exhibit 1022 filed by Illumina, Inc. with the Petition for Inter Partes Review, in connection with Case No. IPR2018-00291). |
Welch, et al., “Syntheses of Nucleosides Designed for Combinatorial DNA Sequencing”, Chem. Eur. J., 5:951-960 (1999) (“Welch”) (Exhibit 1023 filed by Illumina, Inc. with the Petition for Inter Partes Review, in connection with Case Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322, IPR2018-00385, and IPR2018-00797). |
Welch, et al., “Corrgenda—Syntheses of Nucleosides Designed for Combinatorial DNA Sequencing”, Chem. Eur. J., 11:7136-7145 (2005) (“Welch Corrigenda”) (Exhibit 1024 filed by Illumina, Inc. with the Petition for Inter Partes Review, in connection with Case Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322, IPR2018-00385, and IPR2018-00797). |
Seela, et al., “7-Deazapurine containing DNA”, Nucleic Acids Research, 20:55-61 (1991) (“Seela 1991”) (Exhibit 1025 filed by Illumina, Inc. with the Petition for Inter Partes Review, in connection with Case Nos. IPR2018-00291, IPR2018-00385, and IPR2018-00797). |
Rosenblum, et al., “New dye-labeled terminators for improved Dna sequencing patterns”, Nucleic Acid Research, 25:4500-4504 (1997) (“Rosenblum”) (Exhibit 1027 filed by Illumina, Inc. with/the Petition for Inter Partes Review, in connection with Case NOS. IPR2018-00291, IPR2018-00318, IPR2018-00322, IPR2018-00385, and IPR2018-00797). |
Excerpts from Sep. 4, 2013 Deposition Transcript of Dr. George L. Trainor in IPR2012-00007 (Exhibit 1028 filed by Illumina, Inc. with the Petition for Inter Partes Review, in connection with Case Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322, IPR2018-00385, and IPR2018-00797). |
Ramzaeva, et a1 . , “88 . 7-Substituted 7-Deasa-2'-deoxyguanosines: Regioselective Halogenation of Pyrrolo[2,3-d] pyrimidine Nucleosides”, Helvetica Chimica Acta, 78:1083-1090 (1995) (“Ramzaeva 1995”) (Exhibit 1030 filed by Illumina, Inc. with the Petition for Inter Partes Review, in connection with Case Nos. IPR2018-00291, IPR2018-00385, and IPR2018-00797). |
Seela, et al., “Oligonucleotide Duplex Stability Controlled by the 7-Substituents of 7-Deazaguanine Bases”, Bioorganic & Mechanical Chemistry Letters, 5:3049-3052 (1995) (“Seela 1995”) (Exhibit 1031 filed by Illumina, Inc. with the Petition for Inter Partes Review, in connection with Case Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322, IPR2018-00385, and IPR2018-00797). |
Seela, et al., “Duplex Stability of Oligonucleotides Containing 7-Substituted 7-Deaza- and 8-Aza-7-Deazapurine Nucleosides”, Nucleosides, Nucleosides & Nucleotides, :16:963-966 (1997) (“Seela 1997”) (Exhibit 1032 filed by Illumina, Inc. with the Petition for Inter Partes Review, in iconnection with Case Nos. IPR2018-00291, IPR2018-00385, and IPR2018-00797). |
Ramzaeva, et al., “123. 7-Deazaguanine DNA: Oligonucleotides with Hydrophobic or Cationic Side Chains”, Helvetica Chimica Acta, 80:1809-1822 (1997) (“Ramzaeva 1997”) (Exhibit 1033 filed by Illumina, Inc. with the Petition for Inter Partes Review, in connection with Case Nos. IPR2018-00291, IPR2018-00385, and IPR2018-00797). |
Jun. 25, 2013 Declaration of Dr. George L. Trainor from IPR2012-00006 (Exhibit 1034 filed by Illumina, Inc. with the Petition for Inter Partes Review, in connection with Case Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322, IPR2018-00385, and IPR2018-00797). |
Boss, et al., “Cleavage of Allyl Ethers with Pd/C”, Angew. Chem. Int. Ed. Engl., 15:558-559 (1976) (“Boss”) (Exhibit 1035 filed by Illumina, Inc. with the Petition for Inter Partes Review, in connection with Case Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322, IPR2018-00385, and IPR2018-00797). |
Qian, et al., “Unexptected Ensymatic Fucosylation of the Hindered Tertiary Alcohol of 3-C-Methyl-N-Acetyllactosamine Produces a Novel Analogue of the LeX-Trisaccharide”, Journal of the American Chemical Society, 120:2184-2185 (1998) (“Qian”) (Exhibit 1036 filed by Illumine, Inc. with the Petition for Inter Partes Review, in connection with Case Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322, IPR2018-00385, and IPR2018-00797). |
Kamal, et al., “A Miled and Rapid Regeneration of Alcohols from their Allylic Ethers by Chlorotrimethylsilane/Sodium Iodide”, Tetrahedron Letters, 40:371-372 (1999) (“Kamal”) (Exhibit 1037 filed by Illumina, Inc. with the Petition for Inter Partes Review, in connection with Case Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322, IPR2018-00385, and IPR2018-00797). |
Excerpts from Prosecution History of U.S. Pat. No. 9,725,480 (“Ju”) dated Nov. 4, 2016 (Exhibit 1038 filed by Illumina, Inc. with the Petition for Inter Partes Review, in connection with Case Nos. IPR2018-00291, IPR2018-00318, and IPR2018-00322). |
Vollhardt, et al., “Organic Chemistry”, Second Edition, W.H. Freeman and Co., New York (1994) (“Vollhardt”) (Exhibit 1039 filed by Illumina, Inc. with the Petition for Inter Partes Review, in connection with Case Nos. IPR2018-00291, IPR2018- 00318, IPR2018-00322, IPR2018-00385, and IPR2018-00797). |
Yu, et al., “Cyanine dye dUTP analogs for enzymatic labeling of DNA probes”, Nucleic Acids Research, 22:3226-3232 (1994) (“Yu”) (Exhibit 1040 filed by Illumina, Inc. with the Petition for Inter Partes Review, in connection with Case Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322, IPR2018- 00385, and IPR2018-00797). |
Livak, et al., “Detection of single base differences using biotinylated nucleotides with very long linker arms”, Nucleic Acids Research, 20:4831-4837 (1992) (“Livak”) (Exhibit 1041 filed by Illumina, Inc. with the Petition for Inter Partes Review, in connection with Case Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322, IPR2018-00385, and IPR2018-00797). |
Watson, et al., “Genetical Implication of the Structure of Deoxyribonucleic Acid”, Nature, 171:964-967 (1953) (“Watson & Crick”) (Exhibit 1042 filed by Illumina, Inc. with the Petition for Inter Partes Review, in connection with Case Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322, IPR2018-00385, and IPR2018-00797). |
Zavgorodny, et al., “1-Alkylthioalkylation of Nucleoside Hydroxyl Functions and its Synthetic Applications: A New Versatile Method in Nucleoside Chemistry”, Tetrahedron Letters, 32:7593-7596 (1991) (“Zavgorodny”) (Exhibit 1043 filed by Illumina, Inc. with the Petition for Inter Partes Review, in connection with Case Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322, IPR2018-00385, and IPR2018-00797). |
Feb. 11, 2015 Final Written Decision in IPR2013-00517 (Exhibit 1044 filed by Illumina, Inc. with the Petition for Inter Partes Review, in connection with Case Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322, IPR2018-00385, and IPR2018-00797). |
May 9, 2016 Federal Circuit Opinion Affirming IPR2013-00517 (Exhibit 1045 filed by Illumina, Inc. with the Petition for Inter Partes Review, in connection with Case Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322, IPR2018-00385, and IPR2018-00797). |
Gigg, et al., “The Allyl Ether as a Protecting Group in Carbohydrate Chemistry Part II”, J. Chem. Soc. (C), 1903-1911 (1968) (“Gigg”) (Exhibit 1046 filed by Illumina, Inc. with the Petition for Inter Partes Review, in connection with Case Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322, IPR2018-00385, and IPR2018-00797). |
Aug. 30, 2013 Substitute Columbia Patent Owner Response in IPR2012-00007, Paper 77 (Exhibit 1047 filed by Illumina, Inc. with the Petition for Inter Partes Review, in connection with Case Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322, IPR2018-00385, and IPR2018-00797). |
Jul. 25, 2014 Final Written Decision in IPR2013-00128, Paper 92 (Exhibit 1048 filed by Illumina, Inc. with the Petition for Inter Partes Review, in connection with Case Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322, IPR2018-00385, and IPR2018-00797). |
Oct. 28, 2014 Final Written Decision in IPR2013-00266, Paper 73 (Exhibit 1049 filed by Illumina, Inc. with the Petition for Inter Partes Review, in connection with Case Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322, IPR2018-00385, and IPR2018-00797). |
Jan. 29, 2016 Federal Circuit Opinion Affirming IPR2013-00128 and IPR2013-00266 (Exhibit 1050 filed by Illumina, Inc. with the Petition for Inter Partes Review, in connection with Case Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322, IPR2018-00385, and IPR2018-00797). |
Greenberg, et al., “Optimization and Mechanistic Analysis of Oligonucleotide Cleavage from Palladium-Labile Solid-Phase Synthesis Supports”, J. Org. Chem., 63:4062-4068 (1998) (“Greenberg”) (Exhibit 1051 filed by Illumina, Inc. with the Petition for Inter Partes Review, in connection with Case Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322, IPR2018-00385, and IPR2018-00797). |
Seitz, et al., Hycron, an Allylic Anchor for High-Efficiency Solid Phase Synthesis of Protected Peptides and Glycopeptides, J. Org. Chem., 62:813-826 (1997) (“Seitz”) (Exhibit 1052 filed by Illumina, Inc. with the Petition for Inter Partes Review, in connection with Case Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322, IPR2018-00385, and IPR2018-00797). |
Gullier, et al., “Linkers and Cleavage Strategies in Solid-Phase Organic Synthesis and Combinatorial Chemistry”, Chem. Rev., 100:2091-2157 (2000) (“Gullier”) (Exhibit 1053 filed by Illumina, Inc. with the Petition for Inter Partes Review, in connection with Case Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322, IPR2018-00385, and IPR2018-00797). |
Stryer, “Biochemistry”, Fourth Edition, W.H. Freeman and Co., New York (1995) (“Stryer”) (Exhibit 1055 filed by Illumina, Inc. with the Petition for Inter Partes Review, in connection with Case Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322, IPR2018-00385, and IPR2018-00797). |
Columbia's complaint for U.S. Pat. No. 9,718,852 and U.S. Pat. No. 9,719,139 dated Aug. 1, 2017 (Exhibit 1056 filed by Illumina, Inc. with the Petition for Inter Partes Review, in connection with Case Nos. IPR2018-00291 and IPR2018-00318). |
Curriculum Vitae of Floyd Romesberg, Ph.D. dated Oct. 2017 (Exhibit 1057 filed by Illumina, Inc. with the Petition for Inter Partes Review, in connection with Case Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322, IPR2018-00385, and IPR2018-00797). |
List of documents considered by Floyd Romesberg, Ph.D. dated Dec. 8, 2017 (Exhibit 1058 filed by Illumina, Inc. with the Petition for Inter Partes Review, in connection with Case Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322, and IPR2018-00385). |
Sears, et al., “CircumVent Thermal Cycle Sequencing and Alternative Manual and Automated Dna Sequencing Protocols Using the Highly Thermostable VentR (exo) Dna Polymerase”, BioTechniques, 13:626-633 (1992) (“Sears”) (Exhibit 1059 filed by Illumina, Inc. with the Petition for Inter Partes Review, in connection with Case Nos. IPR2018-00291, IPR2018-00318, IPR2018-00322, IPR2018-00385, and IPR2018-00797). |
Columbia's complaint for U.S. Pat. No. 9,708,358 dated Jul. 18, 2017 (Exhibit 1060 filed by Illumina, Inc. with the Petition for Inter Partes Review, in connection with Case No. IPR2018-00322). |
Columbia's complaint for U.S. Pat. No. 9,725,480 dated Aug. 15, 2017 (Exhibit 1061 filed by Illumina, Inc. with the Petition for Inter Partes Review, in connection with Case No. IPR2018-00385). |
Excerpts from Prosecution History of U.S. Pat. No. 9,719,139 dated Jul. 12, 2017 (Exhibit 1062 filed by Illumina, Inc. with the Petition for Inter Partes Review, in connection with Case No. IPR2018-00318). |
Declaration of Jingyue Ju from Prosecution History of U.S. Pat. No. 9,719,139 dated May 2, 2017 (Exhibit 1063 filed by Illumina, Inc. with the Petition for Inter Partes Review, in connection with Case No. IPR2018-00318). |
Declaration of Floyd Romesberg, Ph.D. for '139 dated Dec. 15, 2017 (Exhibit 1064 filed by Illumina, Inc. with the Petition for Inter Partes Review, in connection with Case No. IPR2018-00318). |
Excerpts from Prosecution History of U.S. Pat. No. 9,708,358 dated Jun. 28, 2017 (Exhibit 1065 filed by Illumina, Inc. with the Petition for Inter Partes Review, in connection with Case No. IPR2018-00322). |
Declaration of Jingyue Ju from Prosecution History of U.S. Pat. No. 9,708,358 dated May 2, 2017 (Exhibit 1066 filed by Illumina, Inc. with the Petition for Inter Partes Review, in connection with Case No. IPR2018-00322). |
Declaration of Floyd Romesberg, Ph.D. for '358 dated Dec. 15, 2017 (Exhibit 1067 filed by Illumina, Inc. with the Petition for Inter Partes Review, in connection with Case No. IPR2018-00322). |
Excerpts from Prosecution History of U.S. Pat. No. 9,725,480 (“Ju”) dated Jul. 19, 2017 (Exhibit 1068 filed by Illumina, Inc. with the Petition for Inter Partes Review, in connection with Case Nos. IPR2018-00385 and IPR2018-00797). |
Declaration of Jingyue Ju from Prosecution History of U.S. Pat. No. 9,725,480 (“Ju”) dated May 26, 2017 (Exhibit 1069 filed by Illumina, Inc. with the Petition for Inter Partes Review, in connection with Case No. IPR2018-00385). |
Declaration of Dr. Floyd Romesberg, Ph.D. for '480 dated Dec. 21, 2017 (Exhibit 1070 filed by Illumina, Inc. with the Petition for Inter Partes Review, in connection with Case No. IPR2018-00385). |
Excerpts from Prosecution History of U.S. Pat. No. 9,718,852 (“Ju”) dated Feb. 9, 2017 (Exhibit 1072 filed by Illumina, Inc. with the Petition for Inter Partes Review, in connection with Case Nos. IPR2018-00385 and IPR2018-00797). |
Excerpts from Prosecution History of U.S. Pat. No. 9,719,139 (“Ju”) dated Feb. 10, 2017 (Exhibit 1073 filed by Illumina, Inc. with the Petition for Inter Partes Review, in connection with Case Nos. IPR2018-00385 and IPR2018-00797). |
Excerpts from Prosecution History of U.S. Pat. No. 9,708,358 (“Ju”) dated Feb. 8, 2017 (Exhibit 1074 filed by Illumina, Inc. with the Petition for Inter Partes Review, in connection with Case Nos. IPR2018-00385 and IPR2018-00797). |
Excerpts from Prosecution History of U.S. Pat. No. 9,868,985 dated Dec. 27, 2017 (Exhibit 1076 filed by Illumina, Inc. with the Petition for Inter Partes Review, in connection with Case No. IPR2018-00797). |
Declaration of Jingyue Ju from Prosecution History of U.S. Pat. No. 9,868,985 dated Oct. 11, 2017 (Exhibit 1077 filed by Illumina, Inc. with the Petition for Inter Partes Review, in connection with Case No. IPR2018-00797). |
Declaration of Floyd Romesberg, Ph.D. for '985 dated Mar. 16, 2018 (Exhibit 1078 filed by Illumina, Inc. with the Petition for Inter Partes Review, in connection with Case No. IPR2018-00797). |
List of documents considered by Floyd Romesberg, Ph.D. dated Mar. 16, 2018 (Exhibit 1079 filed by Illumina, Inc. with the Petition for Inter Partes Review, in connection with Case No. IPR2018-00797). |
English translation of Anazawa with affidavit dated Sep. 12, 2012 (Exhibit 1084 filed by Illumina, Inc. with the Petition for Inter Partes Review, in connection with Case No. IPR2018-00797). |
Columbia's complaint for U.S. Pat. No. 9,868,985 dated Feb. 12, 2018 (Exhibit 1086 filed by Illumina, Inc. with the Petition for Inter Partes Review, in connection with Case No. IPR2018-00797). |
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20180201642 A1 | Jul 2018 | US |
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60300894 | Jun 2001 | US |
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