By Julia Karow
This article, originally posted May 4, has been updated to clarify the USPTO's action and to include Helicos' response to the reexamination of the '596 patent.
The US Patent and Trademark Office has rejected the claims of all four Helicos BioSciences patents that are part of an intellectual property dispute with Pacific Biosciences in a non-final action, granting a request from PacBio to reexamine the patents.
Earlier this week, Helicos filed a response to the reexamination of one of the patents, requesting that the patent office confirm the patentability of the claims.
PacBio had asked the patent office in January for an inter partes reexamination of the four patents — US Patents No. 7,645,596; 7,037,687; 7,169,560; and 7,767,400 — in light of prior art. In March, Helicos said in a regulatory filing that the USPTO had rejected all claims of two of the four patents, Nos. '596 and '400.
PacBio had requested the reexamination after Helicos last year sued PacBio, and later Life Technologies and Illumina, claiming the three firms infringe its patents. All three companies responded with a countersuit in late 2010 (IS 12/21/2010).
During a conference call to discuss PacBio's first-quarter earnings, the company disclosed that the USPTO has now also rejected all claims of the '687 and '560 patents in a non-final action, and has ordered their reexamination.
"We previously stated our belief that the Helicos patents are all directed to flush-and-scan methods, and that those patents do not reflect the earliest publications of those concepts," said Ben Gong, PacBio's vice president of finance and treasurer. "At this point, the patent office appears to agree with us."
According to USPTO documents, the office granted the reexamination requests for the remaining two patents on March 31 and April 13, respectively. In both cases, the patent office cited prior patent applications as well as research publications as grounds for the claim rejections.
Helicos has two months to respond to the USPTO's actions for each patent. The patents remain valid during the course of the reexamination.
This week, Helicos filed its response to the reexamination and rejection of the '596 patent, which the USPTO mailed March 10.
The company said it disagrees with the rejection of the patent's claims and does not propose any amendments to the rejected claims.
Among other arguments, Helicos said that the references cited by the USPTO in its rejection "fail to describe certain elements of the claims" of the patent, for example that the labeled nucleotides added to the DNA duplex contain a free 3' hydroxyl group.
Helicos asked the patent office to withdraw its rejection and to confirm the patentability of the claims of the '596 patent.
Separately, Helicos asked the USPTO for a one-month extension, until June 10, to respond to the reexamination and rejection of the '400 patent, which the patent office granted this week.
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