Intellectual Property Law

New Matter SPRING 2024, VOLUME 49, EDITION 1

PACIFIC BIOSCIENCES OF CALIFORNIA, INC. V. PERSONAL GENOMICS TAIWAN, INC.

D. Benjamin Borson, Ph.D.
Borson Law Group P.C.

PACIFIC BIOSCIENCES OF CALIFORNIA, INC. V. PERSONAL GENOMICS TAIWAN, INC.; SLIP OP. 2022-1410, 2022-1554; 9 JANUARY 2024.

Background

The two cases for Inter Partes Review (IPR) reviewed in this column involve similar claims but are based on different prior art. Pacific Biosciences of California, Inc. (PacBio) filed two petitions with the Patent and Trademark Office under 35 U.S.C. §§ 311-19, each one seeking an inter partes review of a group of claims of U.S. Patent No. 7,767,441, which is owned by Personal Genomics Taiwan, Inc. (PGI). In one of the IPRs (IPR2020-01200; the ‘1200 decision), the Patent Trial and Appeal Board (PTAB) rejected PacBio’s challenge to claims 1-2, 6-7, 10-22, 24, and 27-36 as being unpatentable. In the other IPR (IPR 2020-01163; the ‘1163 decision), the PTAB held that PacBio showed that Claims 1-6, 9, and 43-58 were invalid, but Claims 7, 10-22, 24, and 27-35 survived. Both parties appealed the PTAB’s decisions.

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