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UPDATE: USPTO Board Rules for PacBio in Patent Interference Case with Life Technologies

The story was updated to include a comment from Life Technologies.

By a GenomeWeb staff reporter

NEW YORK (GenomeWeb News) – Pacific Biosciences late Monday announced that a board of the US Patents and Trademark Office has ruled against Life Technologies in a patent interference claim in which PacBio was named the senior party.

As a result of the decision, all patent claims by Life Tech involved in the case were canceled, PacBio said.

The case, which was filed nearly two years ago, involves US Patent 7,329,492 entitled, "Methods for real-time single-molecule sequence determination," covering a single-molecule DNA sequencing method that includes engineering a polymerase or deoxy nucleotide triphosphates with detectable tags.

The patent was granted to Visigen in February 2008. That company was acquired by Invitrogen in October 2008, and in 2009 Invitrogen merged with Applied Biosystems to form Life Technologies.

An interference is declared when the USPTO determines that a patent and patent application from two different filers claim the same invention. Patent interference decisions are based upon who first invented the claimed invention.

In a statement, PacBio said that the USPTO's Board of Patent Appeals and Interferences entered judgment against the '492 patent, "holding that all of the Life claims that were involved in the interference are unpatentable to them."

PacBio had claimed priority on the patent because it had filed its application 20 months before Visigen's application. PacBio's patent application is part of an intellectual property portfolio that it acquired from LI-COR Biosciences in 2008.

PacBio added that in canceling Life Tech's claims, the USPTO board sided with PacBio's claim that Life Tech's patent specification "does not adequately disclose the claimed invention. While the board determined that neither party was entitled to the broadest claims presented, they denied Life's request that a subset of Pacific Biosciences' claims be found unpatentable."

Hugh Martin, chairman and CEO of PacBio, said in its statement that the USPTO "in essence stated that these claims of the Life Technologies patent should never have been issued, and we completely agree."

The claims in the case are not related to PacBio's RS sequencing system, he added, but "we believe that it is important to protect and defend the full scope of our intellectual property portfolio."

In a statement, Life Tech said that it "is pleased that this administrative decision from the USPTO holds that Pacific Biosciences is not entitled to the broad single molecule sequencing claims it was seeking, and we will continue to vigorously defend and build our own patent estate in this area.”

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