IP Law Daily, PATENT—Fed. Cir.: Obviousness determinations affirmed in biomolecule identification apparatus dispute, (Jan 9, 2024)

By Kevin M. Finson, J.D.

Determinations that various claims related to an apparatus for identifying single biomolecules were either obvious or non-obvious were supported by expert testimony.

The Patent Trial and Appeal Board did not err in its determinations of obviousness for several claims of a patent related to the identification of biomolecules, the U.S. Court of Appeals for the Federal Circuit has held. The Board’s claim construction was supported by the claims and the specification and the teachings of the prior art were supported by expert testimony (Pacific Biosciences of California, Inc. v. Personal Genomics Taiwan, Inc., January 9, 2024, Taranto, R.).

Personal Genomics Taiwan, Inc. (Personal Genomics) was the owner of U.S. Patent No. 7,767,441 (the ’441 patent), which claimed an “apparatus for identifying a single biomolecule,” as well as methods of using or making that apparatus. Pacific Biosciences of California, Inc. (PacBio) filed two petitions for inter partes review of several claims of the ’441 patent alleging obviousness under two separate sets of prior art. Under the Patent Trial and Appeal Board (PTAB)’s two decisions, claims 7, 10-22, 24, and 27-36 survived, while claims 1-6, 9, and 43-58 did not. Both parties appealed.

Claim construction. PacBio challenged the Board’s construction of the preamble term “identifying a single biomolecule” as requiring the capability to examine one single biomolecule alone, without others in view. PacBio argued that this construction conflated identification with detection of a single biomolecule, but the court held that the specification clearly referred to an apparatus capable of identifying a single biomolecule without first making copies. “Significantly, in explaining the claimed bioassay system’s single-molecule sensitivity, the specification differentiates, on one hand, ‘identifying a single biomolecule’ by examining that individual biomolecule from, on the other, detecting a population-level signal from an ensemble or cluster of amplified or copied biomolecules,” the court noted.

Prior art. Both parties challenged the Board’s factual determinations about the prior art; specifically, that prior art references either did or did not disclose “identifying a single biomolecule” under the court’s claim construction. In both cases, the Board had chosen to credit expert testimony in support of its conclusions, which amounted to the substantial evidence necessary to affirm.

The Federal Circuit affirmed both PTAB decisions.

The case is Nos. 22-1410 and 22-1554.

Attorneys: Edward R. Reines (Weil, Gotshal & Manges LLP) for Pacific Biosciences of California, Inc. Keith Orso (Irell & Manella LLP) for Personal Genomics Taiwan, Inc.

Companies: Pacific Biosciences of California, Inc.; Personal Genomics Taiwan, Inc.

Cases: Patent FedCirNews USPTO