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USPTO Appeals Board Invalidates Claims on Illumina Patent Included in Qiagen-IBS Litigation

NEW YORK (GenomeWeb) – The US Patent and Trademark Office appeals board has invalidated certain claims on a patent held by Illumina that is the subject of an infringement lawsuit by the company against Qiagen's Intelligent Bio-Systems.

It is unclear what effect Tuesday's final decision by the Patent Trial and Appeal Board will have on the lawsuit. Both Illumina and Qiagen declined to comment citing ongoing litigation.

The decision follows a request by IBS for an inter partes review last year. IBS contended that eight claims on US Patent No. 8,158,346, held by Illumina, were unpatentable. Illumina never responded to IBS' claims, but instead motioned to cancel the eight claims and replace them with eight other claims.

The appeals board granted Illumina's motion to cancel the original eight claims but denied its request to replace them.

"After considering all the evidence as a whole, we conclude that Illumina has not met its burden in showing that the proposed substitute claims are patentable," the board said.

The '346 patent is part of a handful of patents being disputed by Illumina, IBS, which was acquired by Qiagen in 2012, and Columbia University. The university sued Illumina in 2012 alleging infringement of five sequencing patents that it licensed to IBS. Shortly afterward, Illumina returned fire with its own lawsuit accusing IBS and Qiagen of infringing three patents, US Patent No. 7,057,026; No. 7,785,796; and the '346 patent.

Illumina claimed that the patents apply to the sequencing-by-synthesis technology used in the Max-Seq and Mini-20 sequencers that IBS was developing. The '346 patent covers methods of disclosing nucleosides and nucleotides "that are linked to detectable labels via a cleavable linker group," according to the patent abstract.

The inventors listed on the patent are Shankar Balasubramanian, Colin Barnes, and Xiaohai Liu. The patent was granted in April 2012 and assigned to Illumina.

Tuesday's judgment follows a decision by the appeals board in July that also invalidated certain claims on the '026 patent. In that case, Illumina similarly sought to have the claims canceled and replaced. The board granted the company's request to cancel the claims but denied its request to replace them.

IBS has also requested an inter partes review of the '796 patent. That review is ongoing.

Illumina's lawsuit is filed with US District Court for the District of Delaware. No court date has been set yet.

In Columbia's lawsuit against the company, Illumina requested inter partes reviews by the USPTO's appeals board on three of the five patents in dispute, and the board invalidated some of the claims on the three patents. The lawsuit, filed in US District Court the Southern District of California, is ongoing.

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