{"id":832,"date":"2016-05-09T16:45:09","date_gmt":"2016-05-09T20:45:09","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=832"},"modified":"2016-05-09T16:45:09","modified_gmt":"2016-05-09T20:45:09","slug":"federal-circuit-affirms-exclusion-of-ipr-reply-that-raised-new-grounds-of-invalidity","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=832","title":{"rendered":"Federal Circuit Affirms Exclusion of IPR Reply that Raised New Grounds of Invalidity"},"content":{"rendered":"

In Intelligent Bio-Systems, Inc., v, Illumina Cambridge Ltd.<\/em>, [2015-1693] (May 9, 2016), the Federal Circuit affirmed the PTAB’s Final Written decision that the challenged claims of U.S. Patent No.\u00a07,566,537, directed to\u00a0a method of labeling nucleotides in DNA strand, was not shown to be obvious.<\/p>\n

The presence or absence of a motivation to combine\u00a0references in an obviousness determination and the\u00a0presence or absence of a reasonable expectation of\u00a0success are questions of fact reviewed for substantial evidence. \u00a0With respect the the expectation of success, the Federal Circuit found that the Board got it wrong, by failing to consider the appropriate scope of the claim. \u00a0The Federal Circuit noted that\u00a0the Board seemed to believe that the \u201creasonable\u00a0expectation of success\u201d inquiry looked to whether one\u00a0would reasonably expect the prior art references to operate\u00a0as those references intended once combined. The Court said that is\u00a0not the correct inquiry\u2014one must have motivation to\u00a0combine accompanied by a reasonable expectation of\u00a0achieving what is claimed in the patent-at-issue.<\/p>\n

While the Board conflated two\u00a0different legal concepts\u2014reasonable expectation of success\u00a0and motivation to combine\u2014it nevertheless made\u00a0sufficient factual findings to support its judgment that the\u00a0claims at issue are not invalid. \u00a0Petitioner had the burden to show \u00a0that a skilled artisan would have been\u00a0motivated to combine the teachings of the prior art references\u00a0to achieve the claimed invention. \u00a0However petitioner’s argument\u00a0for obviousness was that it would have been obvious to combine the references to in order to improve the efficiency, reliability, and\u00a0robustness of the sequencing by synthesis method taught in the primary reference, which required quantitative deblocking. \u00a0So even though quantitative deblocking was not a requirement of the claims, it was a requirement of Petitioner’ stated reason for the combination, and the “central” to a motivation to combine. \u00a0Not only did the Petition fail to provide\u00a0a specific or credible explanation why an ordinary\u00a0artisan would have combined the references, the patent owner provided substantial evidence to support a\u00a0finding that a person of ordinary skill would not have had\u00a0reason to combine the references. \u00a0These references support a\u00a0conclusion that the claimed efficiency that allegedly\u00a0motivated the combination would not be achieved and\u00a0that a person of ordinary skill in this field would not have\u00a0been motivated to combine the references.<\/p>\n

Of more significance, is the Federal Circuit’s treatment of Petitioner’s improper reply brief. \u00a0The Federal Circuit noted that the Board\u2019s determinations whether petitioner\u00a0exceeded the scope of a proper reply in violation\u00a0of 37 C.F.R. \u00a7 42.23(b) and\/or improperly incorporated\u00a0arguments by reference from another document in violation\u00a0of 37 C.F.R. \u00a7 42.6(a)(3) are reviewed for an abuse of\u00a0discretion.<\/p>\n

The Federal Circuit said that it\u00a0is of the utmost importance that petitioners in\u00a0IPR proceedings adhere to the requirement that the\u00a0initial petition identify \u201cwith particularity\u201d the \u201cevidence\u00a0that supports the grounds for the challenge to each\u00a0claim.\u201d 35 U.S.C. \u00a7 312(a)(3). \u00a0The Court said that all arguments for the\u00a0relief requested in a motion must be made in the motion, and a reply may only respond to arguments raised in the
\ncorresponding opposition or patent owner response.\u201d 37\u00a0C.F.R. \u00a7 42.23(b). Once the Where this rule is violated, neither the Federal Circuit not the PTAB will\u00a0parse the reply brief to determine which,\u00a0if any, parts of that brief are responsive and which are
\nimproper.<\/p>\n

The Federal Circuit observed that unlike district court litigation\u2014where\u00a0parties have greater freedom to revise and develop their\u00a0arguments over time and in response to newly discovered\u00a0material\u2014the expedited nature of IPRs bring with it an\u00a0obligation for petitioners to make their case in their\u00a0petition to institute. The Federal Circuit\u00a0agreed that new grounds were presented in Petitioner’s reply,\u00a0and that\u00a0the Board did not err in refusing the reply brief\u00a0as improper under 37 C.F.R. \u00a7 42.23(b). \u00a0Having concluded the Reply was improper, the Federal Circuit did not reach the issues of whether the reply also impermissably incorporated arguments by reference.<\/p>\n

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In Intelligent Bio-Systems, Inc., v, Illumina Cambridge Ltd., [2015-1693] (May 9, 2016), the Federal Circuit affirmed the PTAB’s Final Written decision that the challenged claims of U.S. Patent No.\u00a07,566,537, directed to\u00a0a method of labeling nucleotides in DNA strand, was not … Continue reading →<\/span><\/a><\/p>\n","protected":false},"author":2,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[21],"tags":[],"class_list":["post-832","post","type-post","status-publish","format-standard","hentry","category-ipr"],"post_mailing_queue_ids":[],"_links":{"self":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/832","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=832"}],"version-history":[{"count":1,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/832\/revisions"}],"predecessor-version":[{"id":833,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/832\/revisions\/833"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=832"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=832"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=832"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}