January 2024 Federal Circuit Newsletter (Japanese)
January 2024 Federal Circuit Newsletter (Chinese)
In Pacific Biosciences Of California, Inc. v. Personal Genomics Taiwan, Inc., Appeal No. 22-1410, the Federal Circuit affirmed final written decisions in related Inter Partes Review decisions, including that the term “apparatus for identifying a single biomolecule” required the capability to identify a molecule with just that one molecule in view.
Pacific Biosciences of California, Inc. (PacBio) filed two Inter Partes Review petitions, each challenging claims in the same patent owned by Personal Genomics Taiwan, Inc. (PGI). At issue was the limitation “[a]n apparatus for identifying a single biomolecule.” PacBio argued that the limitation includes an apparatus that has the capability to characterize a biomolecule through creating copies of the biomolecule, studying the resulting ensemble, and inferring the identity of the biomolecule. The Board disagreed and construed the limitation to require that the apparatus have the capability to characterize a biomolecule by examining that biomolecule alone. Based on that construction, the Board rejected PacBio’s challenge in one petition and invalidated the challenged claims in the other petition. Both parties appealed.
The Federal Circuit affirmed both of the Board’s decisions and agreed with the Board’s construction of the limitation “[a]n apparatus for identifying a single biomolecule.” The Federal Circuit found the word “single” was a “striking feature” of the limitation, stating there was no apparent reason to include that word except to indicate that the claimed apparatus must be capable of identifying a single molecule with just that one molecule in view. After affirming the Board’s construction, the Federal Circuit also affirmed the Board’s disposition of the proceedings.
Understudy Knocks-out Revised Claims with New Prior Art Reference in IPR
In Cywee Group Ltd., V. Zte (Usa), Inc and LG Electronics, Inc., Appeal No. 21-1855, the Federal Circuit held that the Patent Trial and Appeal Board (“the Board”) did not err by permitting a joined party to oppose a revised motion to amend using a new prior art reference in an inter partes review (“IPR”) proceeding.
ZTE (USA), Inc. (“ZTE”) filed an IPR petition asserting that certain claims of a patent assigned to CyWee Group Ltd. (“CyWee”) were unpatentable. More than one year after CyWee sued LG Electronics (“LG”), LG moved to join ZTE’s IPR petition. The Board granted LG’s motion to join the IPR petition on the condition that LG would act as a passive understudy and would not assume an active role unless ZTE ceased to participate in the instituted IPR. After LG’s joinder, ZTE indicated that it did not oppose CyWee’s revised motion to amend. LG moved to oppose CyWee’s revised motion to amend, based on an obviousness combination that included a previously undisclosed reference. The Board granted LG’s motion, determined that the challenged original claims were unpatentable, and denied CyWee’s revised motion to amend. CyWee appealed to the Federal Circuit.
The Federal Circuit held that the Board did not err in allowing LG to oppose CyWee’s motion to amend. The Federal Circuit agreed with the Board that LG did not violate the terms of its joinder because ZTE was not opposing the revised motion to amend, and therefore effectively ceased to participate in that portion of the proceeding.
The Federal Circuit also held that the Board did not err in allowing LG to raise a new reference in opposition to the revised motion to amend. The Federal Circuit determined the provisions of Section 315(c), which limit IPRs to the grounds presented in the petition, do not apply to motions to amend. The court also rejected the argument that an opposition to the revised motion to amend is limited to the arguments made against an original motion to amend.
