Sequenom, Inc. v. The Board of Trustees of The Leland Stanford Junior University, Final Written Decision IPR2013-00390
Wednesday, December 3, 2014

Takeaway: In order to establish an actual reduction to practice, an inventor’s testimony must be corroborated by independent evidence.

In its Final Written Decision, the Board found that Petitioner had not shown by a preponderance of the evidence any of challenged claims 1-17 of the ’415 patent was unpatentable. The ’415 patent relates to non-invasive prenatal genetic diagnostic methods for detecting chromosomal aberrations.

Petitioner had relied upon Lo et al., U.S. Patent App. Pub. No. 2009/0029377 A1 (“Lo II”) in support of each instituted ground of unpatentability. Patent Owner, for its part, argued that Lo II does not qualify as prior art under 35 U.S.C. § 102(e).  It was Patent Owner’s position that the invention recited in the ’415 patent claims was reduced to practice before Lo II’s July 23, 2008 filing date.

In particular, Patent Owner asserted that two early drafts of a PNAS paper co-authored by the two inventors of the ’415 patent, Drs. Fan and Quake, and others, plus related email correspondence, plus testimony by one of the other PNAS paper co-authors, Dr. Blumenfeld, established that the inventors had actually reduced to practice the subject matter recited in claims 1–17 of the ’415 patent before Lo II’s July 23, 2008 filing date. The PNAS paper was published in the Proceedings of the National Academy of Sciences.

Petitioner contended that Patent Owner had failed to provide evidence, independent of the inventors’ testimony that was sufficient enough to corroborate the actual reduction to practice alleged to have taken place prior to the July 23, 2008 filing date of Lo II. But the Board found that “Dr. Blumenfeld’s testimony, considered in conjunction with the exhibits he cites, persuades us that Patent Owner has advanced sufficient evidence, independent of the inventors’ testimony, to corroborate reduction to practice of the subject matter of claims 1–17 of the ’415 patent as of June 19, 2008.”  The Board went on to say that “[i]n particular, Dr. Blumenfeld’s testimony persuades us that the copy of the draft of the PNAS paper presented in identical Exhibits 2111 and 2113 is the document that Dr. Fan sent to Dr. Blumenfeld on June 19, 2008.”

Sequenom, Inc. v. The Board of Trustees of The Leland Stanford Junior University, IPR2013-00390 
Paper 45: Final Written Decision
Dated: November 25, 2014
Patent 8,195,415 B2 
Before: Lora M. Green, Francisco C. Prats, and Scott E. Kamholz 
Written by: Prats
Related Proceedings: Verinata Health, Inc. and the Board of Trustees of the Leland Stanford Junior University v. Sequenom, Inc. and Sequenom Center for Molecular Medicine LLC, U.S. District Court for the Northern District of California, Case No. 3:12-cv-00865-SI; Interference No. 105,922, declared on May 3, 2013; and IPR2014-00337

 

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