The PTAB recently denied 10x Genomics, Inc.'s (Petitioner) IPR petition (IPR2023-01299) against President and Fellows of Harvard College (Patent Owner) challenging claims of U.S. Pat. No. 11,098,303. Patent Owner identified itself and Vizgen, Inc., the exclusive licensee of the '303 patent, as real parties-in-interest. In 10x Genomics, Inc. v. Vizgen, Inc., No. 1:22-cv-00595, Patent Owner has asserted the '303 patent against Petitioner in a counterclaim for infringement in a pending case before the U.S. District Court for the District of Delaware.
The '303 patent relates to systems and methods for imaging or determining nucleic acids within cells. The '303 patent further describes a method comprising exposing a sample to a plurality of nucleic acid probes and determining binding of the nucleic acid probes within the sample. The 1299 petition challenged claims 1-12 (of which claim 1 is independent) under 35 U.S.C. §§ 102 and 103.
For the purpose of this IPR, Petitioner relied solely on Vizgen's interpretation of "an error detection or correction system" in the '303 patent from the concurrent litigation. Before the district court, Vizgen had asserted that the claim phrase is subject to § 112(f). So, at the time of filing the Petition, Petitioner agreed that "an error detection or correction system" was subject to § 112(f) for purposes of the IPR. The Petitioner did not present Vizgen's trial court constructions, but instead simply referenced them without explanation in the claim construction section of the petition.
The burden falls on the Petitioner to show a reasonable likelihood of prevailing in its assertion that at least one claim is unpatentable, and rule 42.104(b)(3) dictates that, for means-plus-function claims, the petition "must identify the specific portions of the specification that describe the structure, material, or acts corresponding to each claimed function." The PTAB denied institution for failure to meet the claim construction requirements of 37 C.F.R. § 42.104(b)(3), IPR2020-00019 (PTAB Mar. 20, 2020). Because the proper construction of the means-plus-function limitation was not presented by the Petitioner, the panel could not properly analyze the prior art relative to that limitation, and institution was denied.
Takeaway:
If a Petitioner knows that a limitation will be construed by the PTAB as a means-plus-function limitation, they must include a reasoned construction in the Petition that includes sufficient structure.
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