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« Court Report | Main | Alcon Research Ltd. v. Barr Laboratories Inc. (Fed. Cir. 2014) »

March 24, 2014


Count me confused regarding:

The Board also considered the fact that Illumina had attempted to license Columbia's technology, because licensing can be evidence that a licensor recognizes the merits of the invention. Nevertheless, even though Illumina did inquire about licensing, there was no evidence it did so because it believed that the patents had independent merit. Instead, the invention that had merit was that disclosed in Tsien. The Board found that it was possible Illumina was simply trying to license these patents because they potentially covered its own product, and there was insufficient evidence to establish that this was not the case.

Was Tsien somehow involved (at all) in the licensing fact pattern? Is the indication that the potential infringer thought that it was potentially infringing enough to remove a secondary consideration?

Dear Skeptical,

Unfortunately, that is about the extent of the analysis provided in the three written decision (all three IPRs made the same observation). The Board did say that there was evidence from an Illumina witness (Dr. Barnes), and Illumina’s marketing literature, that suggested that what Illumina thought had merit was the invention of removable 3’-OH capping groups and base labels. This is what was taught by Tsien. If I understand the Board correctly, they appear to make the distinction between “merit” patents and “blocking” patents (“There is insufficient evidence that Illimina’s licensing strategy was driven by recognition of the merits of the claimed invention, rather than knowledge of a patent potentially covering their own product”). However, as you suggest, if the “blocking” patent was so much a hindrance that Illumina considered taking a license, maybe it had more merit than the Board indicated. Thanks for your comment.



You are welcome.

Let me be more blunt: this appears to be an intentional conflation of the licensing secondary factor. There is a clear road map being drawn to potential infringers.

I do not want to suggest that any prior art by Tsien is not fair game in an obviousness investigation. But this is plain bootstrapping here. If on the other hand, the record indicates that licensing was also sought from Tsien, it might (just might) makes me less...


What we're seeing here in these IPRs is the unfortunate consequence of what happened in the Fresenius case where a post-grant ruling by the USPTO can trump a federal court ruling because the standard of review for validity is different for IPRs before the PTAB (preponderance of the evidence) versus infringement actions in federal district courts (clear and convincing evidence). There's also the additional problem that the USPTO/PTAB uses a different standard for claim construction (BRI) versus the federal district courts ("ordinary and customary meaning"). As Judge Newman correctly noted in her vociferous dissenting opinion in Fresenius, what we have here in these IPRs potentially creates a serious violation of "separation of powers" if accused infringers can, in essence, "relitigate" before the PTAB adverse validity determinations in federal district courts, and may even implicate "separation of powers" issues because of the disparate standards for review and claim construction.


Does the patentee not have the ability to amend claims as of right? In other words, if the patentee has asserted against her claims a 102 rejection, and then wants to limit the scope of the claim to overcome the rejection, doesn't she have the right to do so (even if the Board decides that the claim is then obvious)?

"secondary considerations must always be considered as part of the evidence, not just when the decision maker has doubts after reviewing the art. These considerations can often be the most probative and cogent evidence, and helps the court avert the hindsight trap."

There are, of course, just as many opportunities for mistakes made when looking at these "secondary factors" as there are when making the prima facie case. Primarily, there is no evidence of any nexus between the licensing of a presumed-valid patent and the obviousness of such a patent when challenged in court, i.e., many heavily-licensed patents are proven obvious. So why is post-grant licensing even a consideration at all when determining obviousness? You'll have to ask the "judicial activists" who created the law.

Regarding the "trend" towards cancellation of all claims in these proceedings, I'm not sure why this is surpring. In most every patent, the independent claim(s) are where all the action is. The dependent claims almost always rise and fall with the independent claims because the dependent claims typically recite obvious variants of the alleged invention, e.g., variants that are not expected to yield any unexpected results based on the additional limitations relative to the independent claims.

Three questions for you, The Sweet Taste of Your Tears,

1) Are you the person that posts under the pseudonym Malcolm Mooney, MM, or any of the other seemingly near countless related sockpuppets?

2) Why do you stay in a field that you so evidently despise?

3) Do you think that you are fooling anyone at all?

And while I ask these questions, that I will receive a direct and honest answer from you, I remain...

Hey Skeptical,

Once more, TSTOYT is "guilty" of being MM until proven otherwise.

Dear Moondog,

Sorry for the delay in responding to your question. Unfortunately, in an IPR proceeding, the patent holder only has one opportunity to file a motion to amend the patent in one of two ways (A) cancel any challenged claim, or (B) propose a reasonable number of substitute claims. See 35 U.S.C section 316(d). As of the date of the Illumina decision, the Board had not granted any such motion (and I am not aware of any such motions being granted in the interim). Thanks for the question.


" Unfortunately, in an IPR proceeding, the patent holder only has one opportunity to file a motion to amend the patent in one of two ways (A) cancel any challenged claim, or (B) propose a reasonable number of substitute claims. See 35 U.S.C section 316(d). As of the date of the Illumina decision, the Board had not granted any such motion (and I am not aware of any such motions being granted in the interim)."


How can the PTAB possibly grant no motions under 35 USC 316 to this point? In other words, what Chief Judge Rader said was true: IPRs are simply "patent killers." If that's the case, we potentially have here a gross violation of due process, as well as the APA.

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