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.