On January 11, 2016, the PTAB issued a final written decision in ABS Global, Inc. et al. v. XY, LLC, IPR2014-01161, holding claims 1 and 3 of U.S Patent No. 7,195,920 invalid for obviousness.  The IPR is part of a long running dispute between the parties involving multiple issues and multiple patents, as reported previously

The ‘920 patent relates to methods of separating X and Y chromosome bearing sperm cells to facilitate sex selection in offspring produced by artificial insemination.  The claims require several steps, including discriminating between viable sperm cells having the desired sex characteristic at a rate of at least about 1200 sorts per second and collecting the viable sperm cells by cushioning the cells from impact with a collection container.

Based on the full trial record, we conclude that such an interpretation, while broad, is not reasonable.

The PTAB instituted IPR on six grounds corresponding to various combinations of prior art and ultimately found the claims to be invalid on all six grounds.  The decision hinged on the interpretation of two terms:  “viable sperm cells” and “discriminating between said viable sperm cells having desired sex characteristic at a rate of at least about 1200 sorts per second.”  When instituting the IPR, the Board held that the claims embraced a method in which none of the sperm cells remain viable upon completion of the method steps.  In essence, “viable sperm cells” was construed to encompass a population comprising no viable cells.  In the final decision, the Board concluded that its previous interpretation was not reasonable, as a person of ordinary skill would understand that the claims carry a requirement for at least a portion of the collected sperm cells to remain viable.

The revised interpretation did not save the patent, however.  The Patent Owner argued that a secondary reference disclosing cell sort rates employed a method that would negatively impact viability, and therefore one of ordinary skill in the art would have been motivated to combine the references.  The Board was not persuaded, as expert testimony established that teachings of the secondary reference could easily be modified to isolate viable sperm cells.

Regarding the rate of sorting, the Board agreed with the Petitioner that the aggregate number of cells (X and Y cells together) is a “sort,” disregarding the Patent Owner’s argument that “sort per second” references only the number of desired cells (X or Y cells).  This interpretation was critical to the Board’s decision regarding four of the grounds, as the secondary reference disclosed less than 1200 sorts per second under the Patentee’s construction.  When discussing the cited art, the Board found it significant that the Patentees extolled the virtues of the technologies described in the references in the patent specification.

The Patent Owner advanced evidence of secondary considerations to establish non-obviousness of the challenged claims.  According to the Board, the Patent Owner failed to establish a nexus between any commercial success or long felt need and the claimed invention. In the alternative, the evidence of secondary considerations did not outweigh “the strong showing of obviousness made out by the Petitioner.”

This decision provides another example of the Board changing its mind regarding an aspect of an IPR between institution and final written decision.  Unlike the recently reported TriVascular decision, the Board’s shift did not benefit the Patent Owner.  The decision also highlights the importance of establishing a nexus between the claimed invention and secondary considerations.