Digest of Illumina Cambridge Ltd. v. Intelligent Bio-Systems, Inc.No. 2015-1123 (Fed. Cir. Jan. 29, 2016) (nonprecedential). On appeal from the P.T.A.B. in No. IPR2013-00128. Before Lourie, Bryson, and Stoll.

Procedural Posture: Patentee Illumina Cambridge Ltd. appealed the P.T.A.B.’s final written decisions cancelling all challenged claims of U.S. Patent Nos. 7,057,026 and 8,158,346, and denying entry of substitute claims. CAFC affirmed.

  • IPR Procedure: The Board did not err in focusing on the prior art in deciding Illumina’s motion to amend the claims during an IPR proceeding. Illumina bore the burden of showing that the substitute claims would not have been obvious in view of, inter alia, prior art raised during the review proceedings and prior art from the patent’s original prosecution history. Because none of the original claims comprised the limitation of the linker containing a disulfide linkage, the Board did not err in choosing to primarily address prior art relevant to that limitation to determine whether Illumina had proven that the addition rendered the claims as a whole nonobvious.
  • Obviousness: The CAFC agreed with the P.T.A.B.’s determination that the prior art taught the use of linkers containing disulfide linkages for attaching a label to a nucleotide, as well as the desirability of simultaneously removing labels and protecting groups, in DNA sequencing methods. One of skill in the art would have been motivated to use a commercially available linker, and thus would have been motivated to modify SBS prior art with a disulfide linkage as claimed. The Board, thus, did not err in finding that Illumina had not met its burden to show that the substitute claims were patentable over the prior art because Illumina had not met its burden to show that one of skill in the art would not have reasonably expected to achieve greater than 90% efficiency of disulfide linkages, and because Illumina’s evidence of unexpected results relative to the prior art was insufficient.