PTAB

IPR2020-01163

Pacific Biosciences Of California Inc v. Personal Genomics Taiwan Inc

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1. Case Identification

2. Patent Overview

  • Title: Bioassay system including optical detection apparatuses, and method for detecting biomolecules
  • Brief Description: The ’441 patent describes an apparatus and method for identifying a single biomolecule, such as DNA. The system involves affixing a biomolecule to a "linker site" positioned over a light detector on a substrate, exciting the biomolecule with a light source, and detecting the light it subsequently emits.

3. Grounds for Unpatentability

Ground 1: Claims 1-5, 9, 48, 52-56 are anticipated by Choumane under 35 U.S.C. §102.

  • Prior Art Relied Upon: Choumane (WO 2007/045755).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued Choumane discloses every limitation of the challenged apparatus and method claims. Choumane describes an integrated biosensor with a substrate, a set of photodetectors (the claimed "light detector"), and specific zones where probes are deposited (the claimed "linker site"). Crucially, Petitioner asserted that the primary reason for the ’441 patent’s allowance—the proximity of the linker site to the detector—is explicitly taught by Choumane. Choumane teaches that to minimize crosstalk and improve sensitivity, the vertical distance between the chromophores (biomolecules) and the photodetectors should be between 10 µm and 100 µm, directly anticipating the claimed distance of "less than or equal to 100 micrometers." Petitioner also mapped Choumane’s disclosure of an opaque metallic film with pinholes to the "blind sheet" limitation of dependent claims.

Ground 2: Claims 6, 9, 49-51, and 53-54 are obvious over Choumane in view of Weisbuch under 35 U.S.C. §103.

  • Prior Art Relied Upon: Choumane (WO 2007/045755) and Weisbuch (Application # 2002/0182716).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that to the extent Choumane does not explicitly teach certain dependent claim limitations, they are rendered obvious by Weisbuch. For claim 6, Weisbuch discloses using a microlens between the chromophore and the substrate to enhance the collection of emitted light. For claim 49, Weisbuch teaches a "planar wave guide" that functions as a light-emitting layer oriented horizontally to the light detector's surface. For claim 9's solid angle limitation, Weisbuch provides specific photodetector dimensions (5 µm to 50 µm) that, when combined with Choumane's disclosed distances, would result in a solid angle well above the claimed 0.8 SI steridian.
    • Motivation to Combine: The primary motivation was Choumane's explicit statement that its objective is to "further improve the biosensor with integrated detection described in document WO 02/16912" (the international application corresponding to Weisbuch). A person of ordinary skill in the art (POSA) reading Choumane would therefore be directly motivated to incorporate advantageous features from Weisbuch, such as microlenses or planar waveguides, to achieve the stated goal of improving the biosensor's sensitivity and reducing signal crosstalk.
    • Expectation of Success: A POSA would have a high expectation of success because both references describe the same type of CMOS/CCD-based biosensor technology. Choumane is presented as an incremental improvement on Weisbuch, making the integration of their respective features straightforward.

Ground 3: Claims 57 and 58 are obvious over Choumane in view of the knowledge of a POSA.

  • Prior Art Relied Upon: Choumane (WO 2007/045755) in view of the general knowledge of a POSA, as exemplified by Rhodes (Patent 6,812,539).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner contended that claims 57 and 58, which describe a method of manufacturing the apparatus, recite nothing more than a series of basic, well-known photolithography steps. These steps include forming an opaque layer, forming a photoresist layer, patterning the photoresist to expose the opaque layer, etching the opaque layer, and removing the photoresist. Petitioner argued these are standard, fundamental process steps for fabricating any semiconductor device, such as the CMOS-based sensor in Choumane.
    • Motivation to Combine: A POSA tasked with fabricating the "blind sheet" (an opaque metallic film) described in Choumane would have naturally and obviously applied these industry-standard photolithography techniques. Rhodes was cited as representative art showing these exact steps were well-suited for CMOS imager devices like the one in Choumane. The motivation was simply to use the known, conventional method to manufacture a known component.
    • Expectation of Success: Success would be virtually guaranteed, as these steps represent the standard, time-tested process for fabricating such structures in the art.

  • Additional Grounds: Petitioner asserted that claims 1-5, 9, 48, and 52-56 are also obvious over Choumane in view of Weisbuch as an alternative to the anticipation ground, arguing Weisbuch’s disclosure of single-molecule detection would have motivated a POSA to apply Choumane’s apparatus for that purpose. Petitioner also asserted that business method claims 43-47 are obvious over Choumane and the general knowledge that providing analytical services for remuneration, via vendors, and across different countries were all common business practices.

4. Relief Requested

  • Petitioner requests institution of IPR and cancellation of claims 1-6, 9, and 43-58 of the ’441 patent as unpatentable.