PTAB

IPR2014-00929

Luminex Corp v. Irori Technologies Inc

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Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Remotely Programmable Matrices with Memories
  • Brief Description: The ’428 patent describes applying data storage technology to biological and biochemical assays. The invention is a combination of a matrix (e.g., a bead or microparticle) with a miniature, remotely programmable memory device, which stores data to identify, track, or categorize molecules or biological particles attached to the matrix.

3. Grounds for Unpatentability

Ground 1: Anticipation over Cargill - Claims 1-5, 21, 23, 30, 31, 35, and 36 are anticipated under 35 U.S.C. § 102(e) by Cargill.

  • Prior Art Relied Upon: Cargill (Patent 6,087,186).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Cargill taught every limitation of the challenged claims. Cargill described using "identifier tags" combined with substrates to identify biological particles. The preferred identifier tags were pre-encoded or encodable microchips from Bio Medic Data Systems—the same supplier and technology identified as a preferred embodiment in the ’428 patent. Petitioner contended that Cargill’s microchip identifier tag met the "memory device" limitation of claim 1, and its synthesis support substrate, which could be coated onto the tag, met the "matrix" limitation. Cargill also disclosed that the memory device could be less than 20 mm³ in volume by incorporating by reference a patent describing transponders of that size.
    • Key Aspects: Petitioner highlighted that the Patent Owner itself previously identified Cargill to the USPTO as the closest prior art during the prosecution of a related patent, conceding that Cargill taught a "matrix" with an integrally formed "memory device."

Ground 2: Anticipation over Fulwyler - Claims 1-5, 23, 30, 31, 35, and 36 are anticipated under 35 U.S.C. § 102(b) by Fulwyler.

  • Prior Art Relied Upon: Fulwyler (Patent 4,499,052).
  • Core Argument for this Ground:
    • Prior Art Mapping: This ground was predicated on the broad claim construction for "memory device" that the Patent Owner allegedly asserted in co-pending litigation. Under that construction, a static mixture of fluorescent dyes in a microsphere, identifiable by its unique fluorescence ratio, constituted a "memory device." Petitioner argued that Fulwyler taught this exact technology: polystyrene microspheres (the "matrix") incorporating pre-defined, fixed ratios of two or more fluorescent dyes (the "memory device") to distinguish and identify antibodies attached to the microspheres in immunoassays. Fulwyler's microspheres were approximately 10 microns in diameter, satisfying the size limitations of claim 1.

Ground 3: Obviousness over Fulwyler and Dower - Claims 1-5, 23, 30, 31, 35, and 36 are obvious over Fulwyler in view of Dower.

  • Prior Art Relied Upon: Fulwyler (Patent 4,499,052) and Dower (WO 93/06121).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner presented this ground as an alternative, arguing that if the Board determined Fulwyler's static dye-ratio system did not meet the "memory device" limitation, it would have been obvious to modify it using the teachings of Dower. Dower taught a truly programmable memory for microspheres by embedding photobleachable fluorescent dyes that could be altered by a laser to create "spectral holes." These holes functioned as a computer memory, with the two fluorescent states (e.g., bleached and unbleached) representing binary "0" and "1" data points.
    • Motivation to Combine: A POSITA would combine Fulwyler's microsphere assay system with Dower's programmable memory to upgrade the system's identification capabilities. Replacing Fulwyler's static, pre-set dye ratios with Dower's programmable memory would allow for the storage of more complex, post-synthesis information about the molecules attached to the microspheres, a known objective in the field of combinatorial chemistry.
    • Expectation of Success: Success would have been expected because both Fulwyler and Dower taught embedding dyes into polystyrene microspheres for identification purposes. The combination involved applying Dower's known programmable dye technology to Fulwyler's known microsphere platform, representing a predictable integration of compatible technologies.

  • Additional Grounds: Petitioner asserted additional obviousness challenges, including claims obvious over Cargill in view of Tripatzis (CA Patent No. 1,248,873) and/or Urdea (a 1988 journal article) to add teachings on immunoassays and nucleic acid sandwich assays. Similar combinations were asserted based on Fulwyler in view of Tripatzis and/or Urdea, and further combinations including Dower.

4. Key Claim Construction Positions

  • "Memory Device" and Related Terms: This was the central construction dispute. Petitioner argued that terms such as "memory device," "programmable," and "recording device" should be given their express definitions from the ’428 patent specification. These definitions described a miniature recording device capable of storing multiple, discrete, individually accessible bits of data (e.g., an electronic RF tag or microchip).
  • Contention with Patent Owner's Position: Petitioner contended that in concurrent litigation, the Patent Owner advocated for a much broader interpretation where a "memory device" could be a static, unchangeable ratio of fluorescent dyes within a bead. Petitioner argued this reading was inconsistent with the patent's express definitions. The invalidity challenge against Fulwyler was presented based on this broader construction, arguing that if the claims were broad enough to read on Petitioner's accused products (which use dye ratios), they were also broad enough to be anticipated by Fulwyler.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-8, 11-18, 20-25, 30-31, 35-36, and 40-41 of the ’428 patent as unpatentable.