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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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