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Intelligent Bio-Systems filed an Inter Partes Review proceeding in the PTO seeking to invalidate Illumina’s patent as being obvious under Section 103.  Illumina’s patent was directed to a method of labeling nucleotides in a DNA strand.  The PTAB held that Intelligent Bio-Systems failed to satisfy its burden of demonstrating the obviousness of the claims at issue by a preponderance of the evidence, and therefore it confirmed the validity of the claims. 

On appeal, the Federal Circuit affirmed, finding that substantial evidence supported the PTAB’s non-obviousness findings and that the PTAB had not abused its discretion in refusing to consider Intelligent Bio-System’s reply brief for violating the rule that reply briefs not contain any new arguments (37 C.F.R. § 42.23(b)) and that reply briefs not incorporate any arguments by reference (37 C.F.R. § 42.6(a)(3)). 

As to the holding that Intelligent Bio-Systems failed to prove obviousness, the court agreed with Intelligent that the Board erred when it based its decision on a failure of proof of a reasonable expectation of success.  However, the court explained that it reviews judgments, not opinions, and it held that the evidence was sufficient to show that a person of ordinary skill in the art would not have had reason to combine the references, thereby evidencing Intelligent’s failure of proof of obviousness. 

As to the holding that the PTAB did not abuse its discretion by refusing to consider Intelligent’s reply brief, the court held that the expedited nature of IPRs bring with it an obligation for petitioners to make their case in their petition to institute.  Further, once new arguments are identified in the reply brief, neither the PTAB nor the court must parse the reply brief to determine which parts of the brief are proper responses to the opposition’s arguments and which art not.  Therefore, the PTAB was within its discretion to reject the reply brief in its entirety. 

Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., Case No. 2015-1693 (May 9, 2016); Opinion by: O’Malley, joined by Wallach and Hughes; Appealed From: United States Patent and Trademark Office, Patent Trial and Appeal Board. Read the full opinion here.

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