Federal Circuit affirms invalidation of two Illumina patents

The US Court of Appeals for the Federal Circuit has knocked out two patents belonging to biotechnology company Illumina following a challenge by Intelligent Bio-Systems.

The disputed patents, US numbers 7,057,026 and 8,158,346, cover a method of DNA sequencing by synthesis (SBS). SBS allows scientists to make new copies of a targeted DNA to determine its composition.

Intelligent Bio-Systems challenged the patents in an inter partes review (IPR) at the Patent Trial and Appeal Board (PTAB) following Illumina’s infringement claim asserted at the US District Court for the District of Delaware.

Following the PTAB’s institution of the IPR, Illumina submitted amended patent claims to replace those at the centre of the IPR.

But the PTAB dismissed the substituted claims as invalid on the grounds of obviousness under existing prior art.

Illumina appealed against the decision but its claim was dismissed by a three-judge federal circuit panel last week, January 29.

Judge Alan Lourie, writing the final decision, said that “substantial evidence” supports the PTAB’s “determination that Illumina failed to meet its burden in showing that the proposed substitute claims in both patents are patentable over the prior art of record, we affirm”.