Intelligent Bio-Systems Inc. on Wednesday urged the Federal Circuit to overturn a Patent Trial and Appeal Board (PTAB) ruling affirming the validity of rival Illumina Cambridge Ltd.’s DNA sequencing patent, saying the board had set too high a standard to show that a combination of related earlier work rendered the patent obvious.

PTAB was mistaken when it determined that a combination of prior art references—the so-called Ju, Tsien and Zavgorodny references—don’t make the disputed claims of the patent-in-suit, U.S. Patent No. 7,566,537, obvious, IBS' counsel Robert Baron of Ballard Spahr LLP told the three-judge panel at oral argument.

Mr. Baron argued that Ju and Tsien cover nearly all aspects of the disputed Illumina patent claims, with the exception of the use of an “azido” or “azidomethyl” as a “protecting group” for DNA. Protecting groups are a molecule used to protect other molecules from potential harm during a chemical reaction.

According to Mr. Baron, Zavgorondy introduces the idea of using an azido molecule as a protecting group, and a person of ordinary skill in the art (POSA) would think it could potentially be combined with either the Ju or Tsien method.

The PTAB found that—just because Zavgorondy does not immediately seem like it would meet the near 100 percent efficiency standard cited in Tsien for a protecting group to be chemically “cleaved” away from a chain of molecule—a POSA would not consider using it.

“We reject that a [POSA] would look at Zavgorodny and say ‘oh, I can’t do that,’” Mr. Baron said.

Intelligent Bio-Systems is represented by Scott D. Marty, Marc S. Segal, and Robert R. Baron Jr., and of Ballard Spahr LLP.

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