Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd.

In response to a patent owner’s motion to amend its claims in an inter partes review (IPR) petition, the U.S. Patent and Trademark Office’s (USPTO) Patent Trial and Appeal Board (Board) denied the motion, finding that patent owner did not meet its burden showing that the proposed claims were patentable over prior art.  Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., IPR2013-00128 (PTAB, July 25, 2014) (Lebovitz, APJ.).

When the Board institutes an IPR, a patent owner may file responsive arguments or, instead, move to amend the claims at issue so long as the amended claims address the grounds of patentability raised in the IPR, do not broaden the scope of the claims or add new matter and are fully supported by the specification.  The patent owner bears the burden of proof to show by a preponderance of the evidence that the proposed amended claims are novel and non-obvious over “the prior art available to one of ordinary skill in the art at the time the invention was filed, not just the prior art cited in the Petition.”  The patentee has 15 pages in which to accomplish this and may include exhibits and an expert witness declaration.  The petitioner then has an opportunity to respond and submit its own exhibits and expert declaration.

In the instant IPR, the patent owner requested cancellation of all of the claims at issue in the IPR and proposed substitute claims that mirrored the canceled claims except that they included a further limitation that was not part of any of the original claims.  The motion with respect to cancellation of the original claims was not contingent on the original claims being held unpatentable.  As such, the Board explicitly based its decision on the entire motion on the patentability of that new limitation in the substitute claims.  The Board found the claims, even with the new limitation, to be obvious.  Thus, the Board granted the patentee’s motion with respect to cancellation of the original claims but denied the motion with respect to the request to substitute the new claims.

Both parties also moved to exclude from evidence several exhibits, but the Board dismissed those motions as moot because it did not rely on those exhibits in reaching its decision.  The petitioner also moved to exclude two exhibits on the grounds that they were not relevant, lacked foundation and were misleading.  The Board dismissed the motion because it found the exhibits relevant, because petitioner did not sufficiently explain why the exhibits lacked foundation and because whether or not an exhibit is “misleading” goes to the weight given to the exhibits but not their admissibility.