Luminex Corp v. Irori Technologies Inc

1. Case Identification

• Case #: IPR2014-00930
• Patent #: 6,416,714
• Filed: June 10, 2014
• Petitioner(s): Luminex Corporation
• Patent Owner(s): Irori Technologies, Inc.
• Challenged Claims: 1, 4, 6, 8-9, 13-14

2. Patent Overview

• Title: Remotely Programmable Matrices with Memories
• Brief Description: The ’714 patent relates to the application of data storage technology for molecular tracking and identification. The invention claims combinations of a matrix (e.g., a bead or substrate) with a miniature, remotely programmable memory device that can be used to label and track molecules or biological particles during processes like chemical synthesis or diagnostics.

3. Grounds for Unpatentability

Ground 1: Claims 1, 4, 6, 8-9, and 13-14 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 discloses every limitation of the challenged claims. Cargill teaches a method for identifying biological particles by linking them to a substrate that is combined with a memory device called an "identifier tag." These tags, which include microchips that can be pre-encoded or encodable with a unique radiofrequency signal, function as the claimed "recording device." The substrate to which the tag is linked (e.g., a synthesis support) serves as the claimed "matrix." Petitioner contended that Cargill’s system of linking oligomers to identifier tags and then reading the tags with electromagnetic radiation for identification directly maps to the methods claimed in the ’714 patent.
  • Key Aspects: Petitioner noted that Cargill is a strong reference because it discloses microchip-based tags, which align with the preferred embodiments of the ’714 patent and a narrow construction of its claims.

Ground 2: Claims 1, 4, 6, 8-9, and 13-14 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 presented based on the broad claim interpretation that Patent Owner allegedly advanced in parallel litigation. Petitioner argued that if the term "recording device" is construed broadly to include static identifiers, then Fulwyler anticipates the claims. Fulwyler discloses a method of using polystyrene microspheres (the "matrix") that incorporate pre-selected, fixed ratios of two or more fluorescent dyes. These dye ratios allow for the unique identification of antibodies or other ligands (the "molecules") attached to the microspheres. Under the Patent Owner’s litigation theory, this dye-ratio system constitutes a "recording device" or "memory." Fulwyler further teaches using flow cytometry to separate the microspheres and read their fluorescent signals with a laser (an "electromagnetic signal"), thereby identifying the attached molecule, which Petitioner asserted meets all limitations of the challenged claims under this broad construction.

Ground 3: Claims 1, 4, 6, 8-9, and 13-14 are obvious over Fulwyler in view of Dower.

• Prior Art Relied Upon: Fulwyler (Patent 4,499,052) and Dower (International Publication No. WO 93/06121).
• Core Argument for this Ground:
  • Prior Art Mapping: This ground was presented as an alternative, arguing that even if Fulwyler’s static dye-ratio system is not a "recording device," the claims are obvious. Fulwyler provides the foundational system of using dye-infused microspheres for molecular identification. Dower teaches an improvement to such systems by using light-addressable, photobleachable compounds (dyes) within microspheres to create a true programmable memory. Dower discloses using a laser to create "spectral holes" in the dyes, where the presence or absence of a hole represents a binary "1" or "0," allowing for information to be written, stored, and read.
  • Motivation to Combine: A POSITA would combine Fulwyler’s microsphere-based assay system with Dower’s programmable memory technology. The motivation would be to replace Fulwyler's static, pre-defined identification method with a dynamic, programmable memory capable of recording new information about molecules or processes directly onto the microsphere tag itself, enhancing its utility.
  • Expectation of Success: A POSITA would have a high expectation of success because both references teach using fluorescent dyes within polystyrene microspheres for molecular tagging. Combining Dower's programmable dyes with Fulwyler's microsphere platform would have been a straightforward integration of known technologies to achieve a predictable result.

4. Key Claim Construction Positions

• "Memory" / "Recording Device" / "Data Storage Unit": Petitioner argued this term is central to the petition and subject to a critical dispute.
  • Petitioner's Proposed Construction: Based on the ’714 patent’s specification and express definitions, Petitioner contended these terms require a programmable device capable of recording and storing multiple discrete bits of data (e.g., a semiconductor memory or microchip).
  • Patent Owner's Alleged Litigation Construction: Petitioner asserted that the Patent Owner, in district court litigation, advanced a much broader construction where these terms encompass a static, pre-selected ratio of fluorescent dyes that serves to identify a microsphere.
  • Significance: Petitioner structured its arguments to show the claims are invalid under either construction. If the Board adopted the narrower, proper construction, the claims are anticipated by Cargill. If the Board adopted the Patent Owner’s broader litigation-based construction, the claims are anticipated by Fulwyler.

5. Relief Requested

• Petitioner requested institution of an inter partes review and cancellation of claims 1, 4, 6, 8-9, and 13-14 of the ’714 patent as unpatentable.