Pacific Biosciences of California, Inc. v. Personal Genomics Taiwan, Inc.
Docket No. 2022-1410, -1554 (IPR2020-01163, -01200 (https://cafc.uscourts.gov/opinions-orders/22-1410.OPINION.1-9-2024_2250463.pdf)
PROST, TARANTO, HUGHES
January 9, 2024
Brief Summary: Board IPR claim construction of “single biomolecule” as one in the context of the disputed patent and prior art determinations affirmed.
Summary: PacBio filed two IPR petitions regarding PGI’s US 7,767,441 directed to “an ‘apparatus for identifying a single biomolecule’ as well as methods of using or making that apparatus”. In one IPR, the USPTO rejected PacBio’s challenge but agreed with PacBio in the other. Both parties appealed, focused on “the Board’s construction of the claim phrase ‘identifying a single biomolecule’”. The FC panel opinion explains that the ‘441 “patent describes an apparatus that uses many ‘optical detection apparatuses’ to ‘monitor a large number (e.g., in some embodiments, more than 10,000) of single biomolecules in parallel,’ and thereby determines the identity of many biomolecules in a sample ‘with high throughput’”, and that “[t]he light detector can measure a signal from some light-emitting molecule”. Representative claim 1 is directed to “[a]n apparatus for identifying a single biomolecule”. “[T]he Board adopted a claim construction of the preamble phrase ‘identifying a single biomolecule,’” as “a limitation on the claimed subject matter because it provides antecedent basis for references to ‘the biomolecule’ in the body of the relevant claims” and to “refer[] to a capability of the apparatus” (ParkerVision, FC 2018 (explaining that capability is one meaning of “for” language)). The FC panel wrote that the Board’s “construction requires that the apparatus have the capability to characterize (determine the identity of) a biomolecule by examining that biomolecule alone, with no copies created to form an ensemble for examination” (a limitation PacBio could not show was in the prior art of one IPR but was taught by that of the other IPR). The FC panel explained that the dispute centers on “the meaning of ‘identifying a single biomolecule’” which “has an ordinary meaning on its face and in context” (i.e., “(a) ascertaining the identity of a biomolecule, i.e., what that biomolecule is, and (b) doing so by examining just that one biomolecule, not others (even copies)”; “[i]t is that capability the apparatus must have, no matter what other capabilities it has or how the apparatus may be used in a particular instance”). In the context of the ‘441 patent, the FC panel “agree[d] with the Board that this identifying-by-examining-one-alone meaning is the ordinary meaning of the phrase in context” (e.g., “The striking feature of the phrase is its inclusion of the word ‘single.’ There is no apparent reason for the inclusion of the word ‘single’ in the phrase except to indicate that the capability required is to identify a molecule with just that one molecule in view… The ’441 patent’s specification confirms this understanding by repeatedly stressing that this ‘single biomolecule’ capability is critical to the invention.”) The FC panel also found the Board’s factual findings to be supported by substantial evidence (Shoes by Firebug, FC 2020). The Board decision was therefore affirmed.