Digest of Industrial Technology Research Institute v. Pacific Biosciences of California, Inc., No. 2015-1200 (Fed. Cir. Jan. 29, 2016) (nonprecedential). On appeal from the P.T.A.B. in Interference No. 105,970. Before Prost, Lourie, and Wallach.

Procedural Posture: Patentee Industrial Technology Research Institute (“ITRI”) appealed the P.T.A.B.’s grant of judgment to Pacific Biosciences of California Inc. (“PacBio”) after it determined that all of ITRI’s involved claims of U.S. Patent No. 8,486,630 would have been obvious over the cited prior art and that PacBio, the senior party, was entitled to the benefit of the filing date of its provisional application because that application adequately described an embodiment of the interference count. CAFC affirmed in part, vacated in part, and remanded for further proceedings.

  • Obviousness: The Board did not err in finding that claims 1-22 and 24-26 of the ‘630 patent were obvious over a prior art publication to Laird et al., and U.S. Patent No. 8,153,375, because Laird suggests using mismatches in the sequencing of the forward and reverse strands to determine modified base positions in double-stranded DNA. The CAFC found that substantial evidence supports the Board’s finding that Laird teaches step (c) of claim 24. The Board did not err in interpreting step (c) of claim 24 as requiring the use of mismatches in determining modified base positions, or in finding that the disclosure of Laird would have suggested that claim limitation to a person of ordinary skill in the art. Further, substantial evidence supports the Board’s finding that Laird teaches that methylated and unmethylated dyads in a bisulfite-treated DNA sequence can be identified by the matching or mismatching of cytosines in the forward and reverse strand sequence data.
  • Obviousness: The Board erred in not sufficiently addressing whether the prior art teaches or otherwise renders obvious step (h) of claim 23. The Board’s cursory obviousness analysis with respect to claim 23 lacks any indication that the Board considered that claim limitation in view of the prior art, and focuses mainly on using multiple reads of one position in the sequence to determine the consensus sequence of that same position. The Board did not make sufficient factual findings or point to evidence that a skilled artisan would have accepted or rejected a sample sequence based on the score of a different insert sequence that is upstream or downstream from the sample sequence. The CAFC, thus, vacated the Board’s obviousness determination as to claim 23 and remanded for further proceedings to the Board.
  • Obviousness: The Board erred in concluding that claims 27 and 28 would have been obvious over the combination of the ‘375 patent and Laird. The Board did not find that either reference teaches a “nucleotide analog that discriminates between a base and its modified form.” The Board only found that Laird taught “discriminating between methylated and non-methylated cytosines.” The Board did not indicate why the “discriminating nucleotide analog” limitation would have been obvious in view of the record evidence. Further, the Board did not consider some of the cited prior art and it did not properly determine whether a skilled artisan would have pursued the methods of claims 27 and 28.

The CAFC, thus, vacated the obviousness determination as to claims 27-28 and remanded for further proceedings to the Board.

  • Section 112 – Written Description: The Board did not err in finding that the ‘551 application provides an adequate written description of at least one embodiment of the Count. The CAFC found that the Board properly interpreted the Count as requiring the use of mismatched base pairs in detecting modified base positions. Under that construction, the Board properly found that PacBio’s ‘551 application adequately describes an embodiment of the Count, because the application discloses a CPLM template, and the use of bisulfite to convert C, but not mC, to U.