IP Law Daily, PATENT—Fed. Cir.: PTAB’s non-obviousness and non-anticipation findings affirmed in fetal DNA analysis patent dispute, (Jan 29, 2025)

By Kevin M. Finson

Claims relating to the sequencing of fetal DNA were not shown to be obvious or anticipated because the PTAB properly relied on the plain language of the claims and expert testimony in its decision.

Labcorp failed to show any error in the Patent Trial and Appeal Board’s determination that it failed to show the invalidity of a competitor’s patent, the U.S. Court of Appeals for the Federal Circuit has held. The PTAB’s underlying claim construction was supported by the plain language of the claims and the findings about the prior art were supported by substantial evidence (Laboratory Corporation of America Holdings v. Ravgen, Inc., No. 23-1517 (Fed. Cir. Jan. 29, 2025)).

Ravgen, Inc. is the owner of U.S. Patent No. 7,727,720 (the ’720 patent), which claimed a non-invasive method for determining the sequence of DNA from a fetus that could be used for the detection of chromosomal abnormalities. Laboratory Corporation of America Holdings (Labcorp) petitioned for inter partes review on the grounds of anticipation and obviousness. The Patent Trial and Appeal Board (PTAB) found that the challenged claims had not been shown to be unpatentable. Labcorp appealed.

Claim construction. Labcorp argued that the Board engaged in improper post-hoc claim construction of the term “agent that impedes cell lysis” and that under a proper construction of this term all of the challenged claims were anticipated. The Federal Circuit found that the Board had properly adopted a construction which required “if cells are present” that the agent actually “impede cell lysis.” The plain language required more than showing that the agent could impede cell lysis, it required showing that it actually did so, and Labcorp was unable to make that showing.

Prior art disclosures. Laborp argued that the Board failed to consider the teachings of a prior art reference from the perspective of a person of ordinary skill in the art. The Federal Circuit found that the board had explicitly weighed the evidence on the perspective of a person of ordinary skill in the art and noted that Labcorp’s disagreement with the Board’s conclusion was not the same thing as saying that the Board had failed to consider the evidence.

Motivation to combine. Referring primarily to reasoning in a companion case, the court dismissed Labcorp’s argument that the Board had erred in finding no motivation to combine the various prior art references at issue, and noted that the board had applied the correct legal standard.

The Federal Circuit affirmed the Board’s decision.

The Case is No. 23-1517.

Judge: Lourie, A.

Attorneys: Gregory A. Castanias (Jones Day) and John C. Alemanni (Kilpatrick Townsend & Stockton LLP) for Laboratory Corp. of America Holdings. Brian Matty (Desmarais LLP) for Ravgen, Inc.

Companies: Laboratory Corp. of America Holdings; Ravgen, Inc.

Cases: Patent FedCirNews USPTO