Pacific Biosciences of California, Inc. v. Personal Genomics Taiwan, Inc.
| Publication year | 2024 |
| Citation | Vol. 49 No. 1 |
| Author | D. Benjamin Borson, Ph.D. |
D. Benjamin Borson, Ph.D.
Borson Law Group P.C.
The two cases for Inter Partes Review (IPR) reviewed in this column involve similar claims but are based on different prior art. Pacific Biosciences of California, Inc. (PacBio) filed two petitions with the Patent and Trademark Office under 35 U.S.C. §§ 311-19, each one seeking an inter partes review of a group of claims of U.S. Patent No. 7,767,441, which is owned by Personal Genomics Taiwan, Inc. (PGI). In one of the IPRs (IPR2020-01200; the '1200 decision), the Patent Trial and Appeal Board (PTAB) rejected PacBio's challenge to claims 1-2, 6-7, 10-22, 24, and 27-36 as being unpatentable. In the other IPR (IPR 2020-01163; the '1163 decision), the PTAB held that PacBio showed that Claims 1-6, 9, and 43-58 were invalid, but Claims 7, 10-22, 24, and 27-35 survived. Both parties appealed the PTAB's decisions.
According to the Board, "[i]n an inter partes review, the burden of proof is on the Petitioner to show that the challenged claims are unpatentable, and that burden never shifts to the patentee."
The Board noted the law of anticipation: "[t]o establish anticipation, each and every element in a claim arranged as recited in the claim must be found in single prior art reference.... A reference anticipates a claim if it discloses the claimed invention 'such that a skilled artisan could take its teachings in combination with his own knowledge of the particular art and be in possession of the invention."
The Board applied the law of obviousness: "A patent claim is unpatentable under 35 U.S.C. § 103 if the differences between the claimed subject matter and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the
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art to which said subject matter pertains ("POSA" or "POSITA"). KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of obviousness is resolved on the basis of underlying factual determinations including: (1) the scope and content of the prior art; (2) any differences between the claimed subject matter and the prior art; (3) the level of ordinary skill in the art; and (4) objective evidence of nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966). In determining obviousness when all elements of a claim are found in various pieces of prior art, "the fact finder must further consider the factual questions of whether a person of ordinary skill in the art would be motivated to combine those references, and whether in making that combination, a person of ordinary skill would have had a reasonable expectation of success."
In the '1200 IPR, PacBio asserted that the PTAB's construction of the term "identifying a single biomolecule" was incorrect and challenged the Board's finding that the prior art that PacBio had invoked in the '1200 IPR to meet this limitation does not teach it, even under the Board's construction. PGI, besides defending the Board's construction of the disputed claim phrase, challenges the Board's factual findings that the PacBio-invoked prior art in the '1163 IPR teaches the disputed claim phrase.
U.S. Patent No. 7,767,441 describes and claims an "apparatus for identifying a single biomolecule" as well as methods of using or making that apparatus. The patent describes an apparatus that uses many "optical detection apparatuses" to "monitor a large number of single biomolecules in parallel (e.g., in some embodiments, more than 10,000)" and thereby determines the identity of many biomolecules in a sample "with high throughput." The "optical detection apparatus" uses a "light detector" that is in close proximity to (e.g., "less than or equal to 100 micrometers" from) a "linker site" that is "treated to affix the biomolecule" to be identified. Id., col. 2, lines 30-44. The light detector can measure a signal from some light-emitting molecule, e.g., "a fluorophore attached to the biomolecule," a...
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