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Life Tech Seeks Judicial Review of USPTO Rulings Against It in Patent Interference Case with PacBio


By Julia Karow

Life Technologies sued Pacific Biosciences last week to appeal the United States Patent and Trademark Office's recent ruling in a patent-interference case with the company.

In a complaint filed with the US District Court of the Northern District of California on March 31, Life Tech asked the court to review the decisions made Jan. 31 by the USPTO's Board of Patent Appeals and Interferences, and to reverse or modify those rulings that are unfavorable to it.

"The board's decision that resulted in the entry of judgment and the board's other decisions that were adverse to Life Technologies and favorable to PacBio were erroneous and contrary to fact and law," according to the complaint.

The patent interference, No. 105,677, involves Life Tech's US Patent No. 7,329,492, "Methods for real-time single molecule sequence determination" and a PacBio-owned patent application, US Application No. 11/459,182, "A system and method for nucleic acid sequencing by polymerase synthesis." The '492 patent, which issued in 2008, was originally assigned to VisiGen Biotechnologies, which Life Tech acquired that year. PacBio acquired the rights to the '182 application from Li-Cor Biosciences in 2008, which originally filed it in 2006.

Both the patent and patent application concern methods using tagged nucleoside triphosphates for single-molecule sequencing. Life Tech and PacBio are each working on single-molecule sequencing technologies. While PacBio plans to launch its platform — the PacBio RS — this year after completing an early-access program, the commercial status of Life Tech's so-called Starlight technology is currently unclear.

The interference began in late 2008. In 2009 the USPTO declared PacBio the senior party in the case (IS 3/31/2009), and earlier this year declared unpatentable all of Life Tech's involved claims. It also deemed unpatentable several claims made by both companies (IS 2/1/2011).

This left Life Tech with several options to challenge the rulings: It could request a rehearing, appeal to a district court, or appeal to a Court of Appeals for the Federal Circuit. Last week, it chose the second option.

Ben Gong, PacBio's treasurer and vice president of finance, reaffirmed that the company's current products do not involve the '492 patent.

"We are not practicing this [patent] in our products," he said.

The company initiated the interference against Life Tech in an attempt "to make sure that we defend the space with our patent portfolio," Gong told In Sequence this week.

Life Tech declined to comment for this article.

Have topics you'd like to see covered in In Sequence? E-mail the editor at jkarow [at] genomeweb [.] com.

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