17 for 18: Inter Partes Review Win Streak For Patent Challengers Continues

iStock_000019334103XSmallThe second 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 (IPR2012-00007), involving US Patent No. 7,790,869.  The PTAB instituted the IPR trial against all 17 claims based on four out of 19 proposed grounds for unpatentability.

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 only term that the Board cited in its opinion was “deazapurine,” finding that one of skill in the art would understand that deazapurine is a nitrogen base in which one of the natural nitrogen atoms in the base ring is substituted with a carbon atom.

After its brief treatment of claim construction, the Board addressed the several proposed grounds of unpatentability based on §102.  Ultimately, the Board concluded that Patent Challenger met the reasonable likelihood standard and instituted the IPR trial based on §102 grounds.  It is worth commenting on some of the issues the Board considered in its analysis.

First, Patent Owner challenged the contention that a prior art reference anticipated because there was no specific working example of a nucleotide that met the claim limitation.  The Board discarded this argument, finding that “[s]pecific working examples are not necessary to establish anticipation.”  Order at 7.  Thus, while the Board found that the evidence supported Patent Owner’s contention that there is no specific example that discloses the claim, the claimed limitation “would have been envisaged clearly by one of ordinary skill in the art upon reading the [prior art] disclosure…” Order at 10.

Second, as in the first IPR trial instituted involving Illumina and Columbia, the Board again considered the issue of incorporation by reference in light of the fact that Patent Challenger conceded that the primary reference was missing a limitation of the subject claim, but argued that a secondary reference, that was incorporated by reference into the primary, disclosed that limitation.  Again relying on Advanced Display (Advanced Display Sys., Inc. v. Kent State Univ., 212 F.3d 1272, 1282 (Fed. Cir. 2012)), the Board found that Patent Challenger failed to demonstrate that the secondary reference was included in the primary for the teaching that is required to anticipate the claim.

Lastly, the Board also authorized the IPR trial based on several obviousness grounds, using a standard John Deere analysis.  Given the unremarkable nature of the analysis, it is not discussed herein.

16 for 17: First of Three Inter Partes Trials Instituted on Petitions from Illumina

In the first 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 (IPR2012-00006), involving US Patent No. 7,713,698. The PTAB instituted the IPR trial against all 11 claims based on three of 22 proposed grounds for unpatentability.

The subject matter of the ‘698 patent involves sequencing DNA by incorporating a nucleotide analogue into a newly synthesized strand of DNA, and then detecting the identity of the incorporated analogue. Terms from the patent that were key to the Board’s analysis were “attached”/”immobilized and “deaza-substituted.”

The Board first considered the claim construction of the terms “attached” (claim 1) and “immobilized” (claim 11). While no explicit definition was provided for those terms in the patent, the Board looked to the specification and a dictionary (specifically, http://www.thefreedictionary.com) to determine, first, that the terms should be given the same meaning, and second, that such meaning was “that the DNA, itself, is affixed to the solid surface without intervening structures.” Order at 8.

Next, the Board turned to the issue of anticipation involving several prior art references. With regard to those references, Patent Challenger relied on the fact that those patents incorporated by reference another prior art patent that disclosed a relevant claim term (i.e., “deaza-substituted”). On this issue, the Board cited the test articulated in Advanced Display Sys., Inc. v. Kent State Univ., 212 F.3d 1272, 1282 (Fed. Cir. 2012), wherein it was held that “incorporation by reference provides a method for integrating material from various documents into a host document…by citing such material in a manner that makes clear that the material is effectively part of the host document as if it were explicitly contained therein.” Id. Further limiting what can be deemed effectively incorporated by reference, the Advanced Display decision held that “to incorporate material by reference, the host document must identify with detailed particularity what specific material it incorporates and clearly indicate where that material is found in the various documents.” Id. Because the primary references did not clearly indicate that the secondary art was being referenced for its teaching of the claim limitation at issue, the Board found that none of the grounds for unpatentability based on §102 met the standard to initiate an inter partes review trial.

As part of that decision, it is interesting to note that the Board discounted the testimony of Patent Challenger’s expert witness, finding that the expert did not provide a factual basis for his testimony as to why the teaching from the secondary reference would have been recognized by one of skill in the art. Order at 13. Further, the Board also discounted one of the primary reference’s statements that all documents referenced in the specification were “incorporated by reference.” Such a general statement, per the Board, “does not direct the ordinary skilled worker to specific disclosure [in the secondary reference].” Id.

Having discarded Patent Challenger’s §102 grounds, the Board next turned to several grounds based on §103. The Board’s analysis took on a traditional John Deere structure: (a) the scope and content of the prior art, (b) differences between the prior art and claimed invention, (c) level of ordinary skill in the art, and (d) evidence of secondary considerations. Order at 19.

The Board’s analysis then distilled the prior art down to two basic points: 1) that DNA sequencing by synthesis was known in the art, and 2) that deaza-substituted nucleotides had been used in DNA sequencing prior to the priority date of the ‘698 patent. Order at 23. Having established this distillation of the art, the Board then identified reasons why it would have been obvious to combine the DNA sequencing method with deaza-substituted nucleotides, to render the two independent claims obvious. Using this rationale, the Board ultimately granted the IPR trial on four separate §103 grounds.

It is worth remarking that the rationales being employed to institute IPR trials by various panels of the Board are disparate and, at times, contradictory. Given we are in the infancy stages of these proceedings, this is perhaps to be expected.  Over time, it seems likely that the Board’s decisions will synthesize into more uniform Orders, but it is helpful to recognize who is your Administrative Patent Judge.