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Taiwanese Firm's IP Asserted in Suit Against Pacific Biosciences Found Partially Unpatentable

This story has been updated to include comments from Personal Genomics.

NEW YORK – The US Patent Trial and Appeals Board this week found multiple claims from a patent held by Taiwanese firm Personal Genomics that is at the heart of a lawsuit against Pacific Biosciences to be unpatentable.

On Wednesday, the PTAB issued final written decisions for two inter partes review proceedings initiated by PacBio, both regarding US Patent No. 7,767,441, held by Personal Genomics and titled "Bioassay system including optical detection apparatuses, and method for detecting biomolecules."

In one case, the PTAB said that all challenged claims — one through six, nine, and 43 through 58 — were unpatentable for being anticipated by other patents or for obviousness. In the other, the appeals board said that claims seven, ten through 22, 24, and 27 through 36 were "not shown [to be] unpatentable." The preserved claims cover optical systems and methods using the apparatus outlined in claim one.

Pacific Biosciences petitioned for the IPRs in June 2020 after it was sued by Personal Genomics in a US district court for alleged infringement of the '441 patent in 2019 and again in 2020 in a Chinese court.

In September, PacBio claimed victory in China when that country's National Intellectual Property Administration invalidated a sequencing patent controlled by Personal Genomics.

How the IPR decisions will affect the US patent infringement suit is unclear. The case in the US District Court for the District of Delaware has been stayed since August 2020 pending the IPR proceedings.

"We are pleased to see that the PTAB invalidated many of the claims of the '441 Patent, including its core claims," PacBio said in a statement. "We remain confident in our intellectual property position and that we will prevail against any attempt to enforce whatever claims in the patent that have survived so far." The firm added that it intends to appeal the decision that preserved the surviving claims.

In a statement, Personal Genomics CEO Johnsee Lee highlighted that the decision "confirms the validity of 25 claims of the '441 patent."

"The PTAB's decision is an important step forward for Personal Genomics towards ultimately prevailing on this matter," he said. "We believe that the upheld claims form a very strong basis for pursuing an enforcement action against PacBio and we intend to continue to assert our legal rights accordingly."

"Personal Genomics has a rich and valuable patent portfolio that covers important intellectual property in the sequencing field," he said. "Protecting our intellectual property is important to our business."