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20 July 2015Americas

Federal Circuit says university’s DNA patents are invalid

The US Court of Appeals for the Federal Circuit has upheld a ruling from the Patent Trial and Appeal Board (PTAB) that invalidated three patents owned by Columbia University covering DNA sequencing.

In a unanimous decision handed down on Friday, July 17, the three judge panel agreed with biotechnology company Illumina’s claim that US patent numbers 7,713,698, 8,088,575 and 7,790,869 were invalid.

Illumina filed for an inter partes review in September 2012 after the university sued it for patent infringement at the US District Court for the District of Delaware in March of that year.

The university argued in its complaint that the patents “are important to ongoing genomics research ... in the emerging field of personalised medicine”.

But in 2014 the PTAB found that the claims asserted in all three patents were obvious and anticipated.

Columbia appealed against the decision to the federal circuit. The university claimed that Illumina’s commercial success from the patented technology was proof that the patents were not obvious.

Illumina claimed that the patents were obvious because it had simultaneously developed inventions using the technology covered by the claims. The university said that Illumina had copied its ideas.

Judge Evan Wallach, who presided over the case, rejected Columbia’s argument and backed the PTAB’s ruling that the claims asserted in the patent were obvious.

He added: “The PTAB did not clearly err in its determination ... [and] Columbia’s argument based on its contrary assertion does not establish patentability over the prior art, and is therefore rejected.”

Andrew Williams, partner at law firm McDonnell Boehnen Hulbert & Berghoff, said the federal circuit has "deferred significantly to the PTAB" in making its decision.

He added that such deference may occur more frequently in the future as more parties appeal against PTAB decisions.

"The federal circuit needs to deal with the increasing amount of appeals in order to prevent being overrun," he continued.

For lawyers and businesses, Williams said, parties challenging PTAB decisions will now "really need to be putting their best argument forward if they hope for a chance of reversal".

Neither Columbia nor Illumina had responded to a request for comment at the time of publication but we will update the story should either party get in touch.

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