18 for 19: Third Illumina Inter Partes Review Trial Instituted

iStock_000020200155XSmallThe third of three petitions for inter partes review brought by Illumina, Inc. against Columbia University was granted in the IPR styled as Illumina Inc. v. The Trustees of Columbia University in the City of New York (IPR2012-00011), involving US Patent No. 8,088,575.  The other two decisions regarding related IPR proceedings can be found HERE and HERE.  The PTAB instituted the IPR trial against all 4 challenged claims based on four out of 22 proposed grounds for unpatentability.

As in the other two IPR decisions, the subject matter of the ‘869 patent involves sequencing DNA by incorporating a nucleotide analogue into a strand of newly synthesized DNA, and then detecting the identity of the incorporated analogue.  From a claim construction perspective, the Board construed “deazapurine,” as it had done in the earlier IPR trial decision, but also construed the term “unique,” using an online dictionary, finding that one of skill in the art would understand that term to mean “being the only one of its kind.”  Order at 8.

The Board’s decision included many of the same issues as contained in the related IPR trials, including incorporation by reference, that it is unnecessary for a single working example to disclose the claimed invention to anticipate, and similar obviousness issues.  Other interesting issues were, however, discussed.

For example, the Board considered the argument from Patent Owner that, given the large number of alternative approaches and features disclosed in a prior art reference, the disclosure amounts to a “genus” of many possible methods.  As such, the specific method of claim 1 could not be immediately envisaged.  Order at 15.  The Board agreed that this line of argument had merit, and turned to the issue of whether the need to choose from the various alternatives disclosed in the prior art would preclude Patent Challenger from establishing a reasonable likelihood that claim 1 was anticipated.  In the end, though, the Board sided with Patent Challenger, finding that, while there are multiple selections to be made, each selection is made from a defined set of possible choices.  Order at 15.  As such, the IPR trial was instituted based on §102 grounds despite Patent Owner’s argument.

In addition, it is worth noting the Board’s rationale in denying one of the grounds for unpatentability based on §102.  Patent Owner argued that the prior art at issue was not anticipatory because it did not describe a base labeled with a unique label.  The Board agreed, finding that the prior art had a “very general disclosure” but no explicit teaching on the position of the nucleotide where to put a detectable label.  Order at 18. As such, Patent challenger was found not to have established that the general teaching was sufficient for one of ordinary skill in the art to “immediately have envisaged” the claimed limitation.