Digest of TRUSTEES OF COLUMBIA UNIVERSITY IN THE CITY OF NEW YORK v. ILLUMINA, INC., No. 2014-1547 (Fed. Cir. July 17, 2015) (Nonprecedential). On appeal from the U.S. Patent and Trademark Office. Before Prost, Schall, and Wallach.

Procedural Posture: Plaintiff patentee sued Defendant for patent infringement for DNA sequencing. Defendant petitioned for inter partes review of three of the asserted patents. The PTAB found all challenged claims anticipated or obvious over the prior art. CAFC affirmed the decision.

  • Qualifications of a Person of Ordinary Skill in the Art: Appellant argued that the PTAB erred by concluding that certain challenged claims were obvious without making an explicit finding as to the qualifications of a person of ordinary skill in the art. The Federal Circuit held that because Appellant was arguing for a higher level of skill than the Appellee, the PTAB’s failure to make an explicit finding as to the level of skill in the art did not amount to reversible error because the challenged claims would also have been obvious to a person with a higher level of skill.
  • Obviousness: Section 103(a) of the AIA notes that a patent application is rejected for obviousness if the differences between the application and the prior art as a whole would have been obvious at the time of the invention to a person having ordinary skill in the art. The Federal Circuit reviews an obviousness determination de novo. The Federal Circuit determined that “cleavable tethers” and “cleavable labels attached to the base,” although not explicitly disclosed, would be obvious to one with ordinary skill in the art to combine. The Federal Circuit noted that a person having ordinary skill in the art (PHOSITA) can find reason to combine multiple references even without an explicit reference from one to the other.
  • Motivation to Combine and Reasonable Expectations of Success: The Federal Circuit noted that a reason to combine the teaching of prior art references and a reasonable expectation of success are both necessary to render a claim obvious. With respect to the DNA sequencing patent at issue, the Federal Circuit found that the prior disclosures regarding the synthesis of ddNTPs and dNTPs provided a PHOSITA with a reasonable expectation for success. Moreover, the Federal Circuit quoted the preferred embodiment of prior art for the combined use of deazapurines with prior art sequencing techniques to demonstrate that there was a motivation to combine different prior art elements.
  • Secondary Considerations for Obviousness: The Federal Circuit held that secondary considerations do not weigh strongly in favor of nonobviousness in this case because the Appellant lacked specific evidence to convince the court that these elements demonstrate nonobviousness. The Federal Circuit addressed secondary considerations of simultaneous invention, copying, attempted licensing, commercial success, and unexpected results in affirming the obviousness finding.
  • Anticipation: The Federal Circuit determined that certain challenged claims were anticipated by the prior art. Although the Appellant argued that the references were non-enabling and did not disclose all elements of the claim, the Federal Circuit disagreed and found that the PTAB’s determination of anticipation was not clearly erroneous.