Intelligent Bio-Systems, Inc.v.Illumina Cambridge Limited

Patent Trial and Appeal Board

Nov 21, 2013

10227131 (P.T.A.B. Nov. 21, 2013)

Trials@uspto.gov Paper 19
571-272-7822 Date: November 21, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

INTELLIGENT BIO-SYSTEMS, INC.,
Petitioner,

v.

ILLUMINA CAMBRIDGE LIMITED,
Patent Owner.
____________

Case IPR2013-00324
Patent No. 7,057,026
____________

Before LORA M. GREEN, DEBORAH KATZ, and
CHRISTOPHER L. CRUMBLEY, Administrative Patent Judges.

CRUMBLEY, Administrative Patent Judge.

DECISION
Denying Institution of Inter Partes Review
37 C.F.R. § 42.108

Case IPR2013-00324
Patent No. 7,057,026

2
I. INTRODUCTION
On June 4, 2013, Intelligent Bio-Systems, Inc. (“IBS”) filed a petition for
inter partes review of claims 1-8 of U.S. Patent No. 7,057,026 (Ex. 1001, “the ‟026
patent”). Paper 1, “Pet.” The owner of the ʼ026 patent, Illumina Cambridge
Limited (“Illumina”), waived filing of a preliminary response. Paper 14. We have
jurisdiction under 35 U.S.C. § 314. For the reasons that follow, the Board does not
institute an inter partes review.
A. Related Matter: Case IPR2013-00128
Several months prior to filing the instant petition, IBS filed a petition on
January 29, 2013, that requested an inter partes review of claims 1-8 of the ‟026
patent. IPR2013-00128, Paper 2 (“128 Petition”). On July 29, 2013, the Board
granted the 128 Petition, and instituted inter partes review of claims 1-8. Illumina
thereafter filed a non-contingent motion to amend pursuant to 37 C.F.R. § 42.121,
requesting cancellation of original claims 1-8 of the ‟026 patent and entry of
substitute claims 9-12. IPR2013-00128, Paper 45, 1. The Board has not yet ruled
on Illumina‟s motion to amend.
B. The ’026 Patent
The ‟026 patent is directed to labeled nucleotides and nucleosides used in
“sequencing reactions, polynucleotide synthesis, nucleic acid amplification,
nucleic acid hybridization assays, single nucleotide polymorphism studies, and
other techniques using enzymes such as polymerases, reverse transcriptases,
terminal transferases, or other DNA modifying enzymes.” Ex. 1001 2:10-14. A
detectable label is attached to the base of the nucleotide or nucleoside via a
Case IPR2013-00324
Patent No. 7,057,026

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cleavable linker group. Id. at 2:6-8. The label enables the nucleotide to be
detected when it is incorporated into a strand of DNA. Id. at 2:56-64.
C. Prior Art Relied Upon
IBS relies upon the following prior art references:
Dower U.S. Patent 5,547,839 Aug. 20, 1996 (Ex. 1006)
Canard U.S. Patent 5,798,210 Aug. 25, 1998 (Ex. 1007)
Odedra U.S. Patent 7,078,499 Jul. 18, 2006 (Ex. 1002)

Meinwald, An Approach To the Synthesis of Pederin, 49 PURE AND APPL. CHEM.
1275 (1977) (Ex. 1004).
Takeshi Matsumoto et al., A Revised Structure of Pederin, 60 TETRAHEDRON
LETTERS 6297 (1968) (Ex. 1005).
Beckman Coulter CEQ
TM
2000 DNA Analysis System User‟s Guide, June 2000
(“CEQ
TM
User‟s Guide”) (Ex. 1008).

IBS asserts that Dower, Canard, and the CEQ
TM
User‟s Guide are prior art
under 35 U.S.C. § 102(b), whereas Odedra is prior art under 35 U.S.C. § 102(e).
1

Pet. 15-16, 27 n. 7, 30. Of the cited art, Dower, Canard, and the CEQ
TM
User‟s
Guide were submitted to the Board previously, accompanying IBS‟s 128 Petition.

1
IBS‟s petition contains no explanation why Meinwald and Matsumoto are prior
art, but both references appear to qualify under 35 U.S.C. § 102(b).
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D. The Asserted Grounds
IBS asserts the following grounds of unpatentability (Pet. 6-7):
Claims Basis References
1-6 § 102 Odedra
6 § 103 Odedra in combination with Dower, further in view of
Meinwald or Matsumoto
7-8 § 103 Odedra alone, or Odedra in combination with Canard or
CEQ
TM
User‟s Guide

II. ANALYSIS
The standard for instituting an inter partes review is set forth in 35 U.S.C.
§ 314(a) which provides as follows:
THRESHOLD -- The Director may not authorize an inter partes
review to be instituted unless the Director determines that the
information presented in the petition filed under section 311 and any
response filed under section 313 shows that there is a reasonable
likelihood that the petitioner would prevail with respect to at least 1 of
the claims challenged in the petition.
Notably, Congress did not mandate that an inter partes review must be
instituted under certain conditions. Rather, by stating that the Director—and by
extension, the Board—may not institute review unless certain conditions are met,
Congress made institution discretionary. In determining whether to institute an
inter partes review, the Board may “deny some or all grounds for unpatentability
for some or all of the challenged claims.” 37 C.F.R. § 42.108(b); see 35 U.S.C.
§ 314(a).
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Our discretion is further guided by 35 U.S.C. § 325(d), which reads as
follows (emphasis added):
MULTIPLE PROCEEDINGS -- Notwithstanding sections 135(a),
251, and 252, and chapter 30, during the pendency of any post-grant
review under this chapter, if another proceeding or matter involving
the patent is before the Office, the Director may determine the manner
in which the post-grant review or other proceeding or matter may
proceed, including providing for the stay, transfer, consolidation, or
termination of any such matter or proceeding. In determining whether
to institute or order a proceeding under this chapter, chapter 30, or
chapter 31, the Director may take into account whether, and reject the
petition or request because, the same or substantially the same prior
art or arguments previously were presented to the Office.
2

Several factors counsel against institution in the present case. As we noted
above, in the 128 Petition, IBS requested inter partes review of claims 1-8 of the
‟026 patent, and we granted that petition on several grounds that mirror closely
those presented in the instant petition. For example, in the 128 proceeding, we
instituted trial on claims 1-6 as anticipated by either Tsien
3
or Ju,
4
whereas the first
ground of the instant petition requests review of claims 1-6 as anticipated by
Odedra. Similarly, in the 128 proceeding, we instituted trial on grounds alleging
the obviousness of claims 7 and 8 over either Tsien or Ju in combination with the

2
Although this provision appears in Chapter 32 of the Patent Act, which is directed
to post-grant reviews, by its terms it is applicable also to proceedings under
Chapter 31, which covers inter partes review proceedings.
3
WO 91/06678 to Tsien et al., IPR2013-00128 Ex. 1012.
4
U.S. Patent No. 6,664,079 B2 to Ju et al., IPR2013-00128 Ex. 1008.
Case IPR2013-00324
Patent No. 7,057,026

6
CEQ User‟s Guide, while the instant proceeding proposes a combination of Odedra
with either Canard or the CEQ User‟s Guide.
Based on our review and the characterization of the references in IBS‟s
petitions, the teachings of Odedra relied on in the instant petition are substantially
the same as those found in Tsien and Ju. For example, the 128 Petition
characterizes Ju as “generally disclos[ing] nucleic acid sequencing by synthesis
methods that utilize 3'-OH capped, chain-terminating nucleotide analogs that
include a fluorescent label attached to the nucleotide analogs through a cleavable
linker.” 128 Pet. 30. The instant petition describes Odedra using exactly the same
language. Pet. 17. In addition, the claim charts presented in the petitions contain
similar disclosures from each of Odedra, Ju, and Tsien. Compare Pet. 18 (“Odedra
further teaches that the protecting group and the linker attaching the label to the
base „comprise the same enzyme-cleavable group thus facilitating a single addition
or reaction causing cleavage of both blocking and reporter [label] groups in one
reaction.‟” (emphasis in original)) with 128 Pet. 43 (“Tsien teaches that „a
fluorescent tag attached to the base moiety . . . may be chemically cleaved (either
separately from or simultaneously with the deblocking step).‟” (emphasis in
original)).
Furthermore, we note that IBS has not provided any justification for filing
the instant petition, other than its representation that it became aware of the
relevance of Odedra after the filing of the 128 Petition. Pet. 2. IBS does not
distinguish any teaching present in Odedra that is lacking from Ju, Tsien, or any of
the other references cited in the 128 Petition. We, therefore, conclude that the 128
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7
Petition presented the same, or substantially the same, prior art and arguments to
the Office as those in the instant petition. See 35 U.S.C. § 325(d).
Finally, we note that Illumina has filed a motion to amend the ‟026 patent in
the 128 proceeding which requests cancellation of original claims 1-8. IPR2013-
00128, Paper 45, 1. As part of its obligation to demonstrate how its proposed
substitute claims are patentable over the known prior art, Illumina has filed Odedra
as an exhibit to its motion to amend. Id. at 10-11; IPR2013-00128 Ex. 2013. IBS
will, therefore, have the opportunity to address Odedra in the 128 proceeding, in
the context of the patentability of the proposed substitute claims.
In light of the foregoing, and exercising our discretion under 35 U.S.C.
§§ 314(a) and 325(d), and 37 C.F.R. § 42.108(b), we decline to institute an inter
partes review in the instant proceeding.
III. ORDER
Accordingly, it is
ORDERED that the petition is denied as to all challenged claims of the ‟026
patent.

Case IPR2013-00324
Patent No. 7,057,026

8
For Petitioner:
Scott D. Marty
Marc S. Segal
BALLARD SPAHR LLP
martys@ballardspahr.com
segalm@ballardspahr.com

For Patent Owner:
Brenton R. Babcock
James G. Morrow
Jonathan E. Bachand
James D. Borchardt
REINHART BOERNER VAN DEUREN s.c.
ipadmin@reinhartlaw.com
jmorrow@reinhartlaw.com
jborchardt@reinhartlaw.com