By Matthew L. Cutler, Principal
Early results of Inter Partes Review proceedings continue to favor Petitioners as all challenged claims in a threesome of Columbia University patents have been cancelled by the PTAB in Illumina, Inc. v. The Trustees of Columbia Univ. in the City of N.Y., IPR2012-00006, -00007, and -00011.
The inventions at issue in the three Illumina decisions involve sequencing DNA by incorporating a base-labeled nucleotide analogue into a primer DNA strand, and then determining the identity of the incorporated analogue by detecting the label attached to the base of the nucleotide.
In general, the Board’s analysis of the prior art in coming to its findings of obviousness with respect to all the challenged claims comprises a fairly straightforward analysis, with heavy reliance on the expert witness testimony elicited in the case.
Of greater interest was the Board’s consideration of secondary considerations relative to the claimed invention. To that end, Patent Owner argued that the obviousness challenges fail because of: 1) unexpected results, 2) the invention received praise and awards, 3) commercial success, 4) evidence of copying, 5) skepticism, and 6) attempts by Petitioner to license the patents. -00006 Order at 29. The Board did not find the proffered evidence on these points persuasive:
Unexpected results: Citing In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991), the Board found that, like that case, here “[m]ere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention.” Id. at 31. Further, the Board noted that unexpected results must be made relative to the closest prior art. In this case, the Board found that the argued unexpected results were not performed relative to the closest prior art, rendering the evidence unpersuasive. Id. at 33.
Praise and Awards: The Board cursorily brushed aside this evidence, finding “it of insufficient weight and relevance to deem it persuasive.” -00006 Order at 38.
Commercial Success: The Board noted that commercial success involves establishing success in the marketplace of a product encompassed by the claims and a nexus between the commercial product and the claimed invention. In this case, Patent Owner’s expert testified that he reviewed the Petitioner’s technical documents and found that all elements of the patented claims were met by Petitioner’s offering. Commercial success of the product must, however, “be due to the merits of the claimed invention beyond what was readily available in the prior art.” -00006 Order at 36. Because the aspects of the invention argued to be the commercial success nexus were found in the prior art, that evidence was unpersuasive.
Copying: The Board did not comment on this evidence.
Skepticism: With the evidence of “praise,” the Board cursorily brushed aside this evidence, finding “it of insufficient weight and relevance to deem it persuasive.” -00006 Order at 38.
Licensing: While the Board recognized the evidence of Petitioner’s offers to license the technology, it found that there was “insufficient evidence that the licensing strategy was driven by a recognition of the merits of the claimed invention, rather than knowledge of a patent potentially covering their own product.” -00006 Order at 38.
Also of interest in the decisions, was the Board’s reconsideration of an earlier reconsideration relating to an issue of incorporation by reference. In its Decision to Institute, the Board did not grant a challenge ground based on a reference that incorporated another piece of prior art by reference. In a decision based on Petitioner’s motion for reconsideration, the Board, in a rare move, changed its mind and included the ground in the trial. In the Final Written Decision, however, the Board went back to its original position that the incorporation by reference was insufficient.
Lastly, it is worth noting that another three Motions to Amend went down to defeat in these three Illumina decisions. Patent Owners are winless on the point.