Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd. (No. 2015-1693, 5/9/16) (O'Malley, Wallach, Hughes)

O'Malley, J. Affirming Board decision in inter partes review that challenged claims, related to labeling nucleotides, were not obvious. While the Court agreed with the Board's conclusion of obviousness, the Court criticized the Board's analysis of “reasonable expectation of success.” “The Board seemed to believe that the 'reasonable expectation of success' inquiry looked to whether one would reasonably expect the prior art references to operate as those references intended once combined. That is not the correct inquiry—one must have a motivation to combine accompanied by a reasonable expectation of achieving what is claimed in the patent-at-issue.” Also, the Board properly rejected new arguments raised in the petitioner's reply. “Unlike district court litigation—where parties have greater freedom to revise and develop their arguments over time and in response to newly discovered material—the expedited nature of IPRs bring with it an obligation for petitioners to make their case in their petition to institute. While the Board's requirements are strict ones, they are requirements of which petitioners are aware when they seek to institute an IPR.”

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