Fresh From the Bench: Latest Precedential Patent Case

CASE OF THE WEEK

Pacific Biosciences of California, Inc. v. Personal Genomics Taiwan, Inc., Appeal Nos. 2022-1410, -1554 (Fed. Cir. January 9, 2024)

In this week’s Case of the Week, the Federal Circuit affirmed two inter partes review (“IPR”) decisions by the Patent Trial and Appeal Board (“Board”) based on claim construction of the phrase “an apparatus for identifying a single biomolecule.”

Pacific Biosciences of California, Inc. (“PacBio”) filed the IPR petitions against claims of US Patent No. 7,767,441, owned by Personal Genomics Taiwan, Inc. (“PGI”).  In one IPR, PacBio argued that claims 1-2, 6-7, 10-22, 24, and 27-36 were unpatentable as either anticipated or obvious over the Hassibi reference.  The Board did not agree with PacBio’s arguments and did not find the challenged claims unpatentable.  In the second IPR, PacBio argued that claims 1-6, 9, and 43-58, were unpatentable as either anticipated or obvious over the Choumane reference.  Here, the Board agreed with PacBio and found the challenged claims unpatentable.  Both parties appealed and the Federal Circuit affirmed the Board’s decision in both cases.

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Editors:

Nika Aldrich, IP Litigation Group Leader,  Schwabe, Williamson & Wyatt, P.C.

Jason A. Wrubleski, Shareholder

Contributor:

Ann Bernert, Patent Law Clerk