In Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., Appeal No. 2015-1693, the Federal Circuit upheld a PTAB decision finding of non-obviousness in an IPR for lack of motivation to combine references.

IBS petitioned for inter partes review of Illumina’s patent directed to a method of labeling nucleotides in DNA.  The PTAB instituted review on obviousness grounds and ultimately found that IBS failed to prove the claims were obvious because it did not establish a motivation to combine references with a reasonable expectation of success of developing the claimed invention.   In reaching its decision, the PTAB refused to consider IBS’s reply brief and accompanying expert declaration, determining that IBS ran afoul of 37 C.F.R. § 42.23(b) and § 42.6(a)(3) by presenting a new argument in its reply brief. 

The Federal Circuit affirmed the PTAB’s finding of non-obviousness, ruling that although the PTAB improperly conflated the separate concepts of motivation to combine and reasonable expectation of success, it nevertheless made sufficient factual findings to support a judgment that there was no motivation to combine the references.  Further, the Federal Circuit found that the PTAB did not err in refusing the reply brief as improper under § 42.23(b).  Because the expedited nature of IPRs bring with it an obligation for petitioners to make their case in their petition to institute, IBS could not rely on an entirely new rationale to explain motivation to combine in its reply brief.