Takeaway: A poster that is displayed may be considered a printed publication where the intended audience of the poster session necessarily includes interested persons of ordinary skill in the art pertinent to the challenged claims.

In its Final Written Decision, the Board found that Petitioner had proven that claim 10 is unpatentable as obvious, but had not proven the unpatentability of claims 17 and 18. The Board also granted Patent Owner’s Motion to Amend and denied its Motion to Exclude Evidence. The ’550 patent “discloses using a ‘Mycobacterium smegmatis porin (Msp)’ to detect analytes in liquid media.”

After institution of trial and joinder with IPR2015-00057, Patent Owner filed a Motion to Amend that cancelled all challenged claims except for claims 10, 17, and 18. Thus, the remaining grounds of unpatentability were: “(1) Claim 10, under 35 U.S.C. § 102(b), for anticipation by Butler; (2) Claims 17 and 18, under 35 U.S.C. § 102(b), for anticipation by the Wong Poster; (3) Claims 17 and 18, under 35 U.S.C. § 102(b), for anticipation by the Wong Abstract; and (4) Claim 10, under 35 U.S.C. § 103(a), for obviousness over the ’782 patent and Butler.”

The Board first addressed claim construction under the broadest reasonable construction in light of the specification. Regarding the term “electric field sufficient to translocate an analyte,” recited in claims 17 and 1 (from which claim 10 depends), Petitioner argued that the “language does not require the analyte to be actually translocated from the first medium to the second medium.” However, the Board noted in its Decision to Institute that the express language of the claims “requires applying an electric field sufficient to translocate an analyte from a first medium to a second medium.” Accordingly, the Board construed claims 1 and 17 “as requiring that an analyte, if present, must translocate, that is, move, from the first medium through the Msp porin to the second medium, when the electric field is applied.”

Further, regarding the term “analytes” recited in claim 10, the Board agreed with Patent Owner and concluded that the term “encompasses only those substances detectable by measuring a reduction in ion current of 5% or more for at least 1.0 microsecond (as recited in independent claim 1), as compared to an ion current level for the Msp without an analyte present.” In other words, in contrast to Petitioner’s proposal, “the term ‘analytes’ does not encompass the ions forming the ion current that is measured in the claimed analyte detection process.”

The Board next addressed the grounds of unpatentability. Regarding alleged anticipation of claim 10 by Butler, the Board agreed with Patent Owner “that the term ‘analytes’ in claim 10 does not encompass the potassium ions in Butler’s experiments” based on the Board’s construction of the term.

The Board also addressed Petitioner’s argument presented in its Reply alleging a “theory of unpatentability distinct from that presented in its Petition.” Pursuant to 37 C.F.R. § 42.23(b), a “reply may only respond to arguments raised in the corresponding opposition or patent owner response.” Petitioner asserted that its arguments related to “the liquid media used in Butler’s experiments inherently include[ing] contaminants,” were in response to “Patent Owner’s argument that the only substance in Butler’s liquid media that would be considered an analyte is the single stranded DNA tested by Butler.” The Board was not persuaded, finding the argument to be an “entirely novel theory of unpatentability,” which is beyond the scope of a proper Reply. Nonetheless, the Board found the new arguments to be unpersuasive.

The Board next addressed the alleged anticipation of claims 17 and 18 by the Wong Poster. First, the Board discussed whether the Wong Poster constituted a printed publication under Section 102(b). The Wong Poster was displayed by an undergraduate student and “open to the public” at the University of Washington more than one year before the effective filing date of the ’550 patent. The Board applied the factors set forth in In re Klopfenstein, 380 F.3d 1345 (Fed. Cir. 2004): “[1] the length of time the display was exhibited, [2] the expertise of the target audience, [3] the existence (or lack thereof) of reasonable expectations that the material displayed would not be copied, and [4] the simplicity or ease with which the material displayed could have been copied.”

The Board found that Petitioner did not show by a preponderance of the evidence “that persons interested and ordinarily skilled in the art pertinent to claims 17 and 18 of the ’550 patent, exercising reasonable diligence, would have been able to locate the Wong Poster.” In particular, the Board explained:

because invitation to the session was based primarily on affiliation with a particular student, as opposed to interest or skill in any particular technical subject matter, we agree with Patent Owner that the poster session’s intended viewers were not comparable to the technology-specific or industry-specific audiences targeted in the professional conferences and trade show discussed in the Klopfenstein, MIT, and TypeRight cases.

Thus, the Board found that Petitioner did not show by a preponderance of the evidence that claims 17 and 18 are anticipated by the Wong Poster.

The Board then addressed alleged anticipation of claims 17 and 18 by the Wong Abstract. The Wong Abstract “appears in the printed program of the 2007 poster session . . . at which the Wong Poster was presented.” The Board was persuaded by Patent Owner that the Wong Abstract does not qualify as a printed publication. In particular, as with the Wong Poster, the Board was not persuaded that “the intended audience of the poster session, the invitees, included interested persons of ordinary skill in the relevant art.” Thus, the Board was not persuaded that claims 17 and 18 are anticipated by the Wong Abstract.

The Board next addressed alleged obviousness of claim 10 over the ’782 patent and Butler. The Board found Petitioner had shown by a preponderance of the evidence “that an ordinary artisan would have been prompted to use Butler’s MspA mutant porin in the ’782 patent’s process of analyzing a heterogeneous mixture containing a plurality of different DNA molecules, thereby performing a process having all of the steps and features required by claim 10 of the ’550 patent.” In particular, the Board found that:

rather than requiring the ordinary artisan to vary numerous parameters, select from numerous choices, or apply a promising but unguided general approach (In re O’Farrell, 853 F.2d at 903), Butler provided a single specific protein, and identified a number of properties explaining why that protein reasonably would have been expected to be equivalently useful to α-hemolysin in methods of nucleic acid analysis.

Turning to alleged secondary considerations related to obviousness of claim 10, Patent Owner asserted (1) unexpected results, (2) licensing of the ’550 patent by a “world leader in DNA sequencing,” and (3) industry-wide praise. The Board agreed with Petitioner that the evidence “is not sufficiently commensurate in scope with the subject matter encompassed by claim 10.” Accordingly, the Board found the alleged secondary considerations did not outweigh the obviousness of claim 10.

Regarding Patent Owner’s Motion to Exclude Evidence, Patent Owner contended that Petitioner used testimony of Dr. Benner in a misleading fashion and that the testimony should be excluded under FRE 403. The Board denied the request noting that “the danger of prejudice in this proceeding is considerably lower than in a conventional district court trial,” and that the arguments go to the weight of the testimony and not admissibility.

Oxford Nanopore Tech. Ltd. v. Univ. of Washington, IPR2014-00513

Paper 51: Final Written Decision

Dated: February 26, 2016

Patent: 8,673,550 B2

Before: Francisco C. Prats, Jacqueline Wright Bonilla, and Sheridan K. Snedden

Written by: Prats

Related Proceedings:  IPR2014-00512; IPR2015-00057