Takeaway: A petitioner’s proposed ground of obviousness must include sufficient explanation including articulated reasoning with some rational underpinning to support a legal conclusion of obviousness.

In its Final Written Decision, the Board found that Petitioner had failed to prove, by a preponderance of the evidence, that claims 1-18 of the ’430 patent are unpatentable.  Also, the Board denied Patent Owner’s Motion to Exclude.

The Board had instituted inter partes review of each of challenged claims 1-18 of the ’430 patent.  The asserted ground was that these claims would have been obvious under 35 U.S.C. § 103 over the combined teachings of Shoemaker, Dhallan, and Binladen.

The ’430 patent relates to detecting the presence or absence of fetal aneuploidy, which is present when a fetus has an abnormal number of chromosomes.  During the course of the proceeding, Declarations of Drs. Cynthia Casson Morton and Robert Nussbaum (for Petitioner) and Dr. Atul J. Butte (for Patent Owner) were presented.

The Board had construed certain claims terms in its Decision on Institution.  The Board did not depart from these constructions in its Final Written Decision.

Petitioner’s relied on the Morton and Nussbaum Declarations in order to argue that claim 1 would have been obvious because: (1) “a scientist in this field would have known that Dhallan could be enhanced through the use of the PCR amplification techniques utilizing sample indices and massively parallel sequencing of pooled samples as discussed in Binladen” and (2) “a skilled artisan would also have readily understood that Shoemaker’s methods for determining the presence of fetal abnormalities could be carried out with the use of cell-free DNA described in Dhallan and the multiplexed detection techniques taught in Binladen.”

It was the Board’s view that while the Petition and Petitioner’s supporting Declarations identified disparate elements of Shoemaker, Dhallan, and Binladen, and attempted to map such elements to the challenged claims, these submissions did not sufficiently describe “how or where the references differ from the challenged claims, how one of ordinary skill in the art would go about combining their disparate elements, or what modifications one of ordinary skill in the art would necessarily have made in order to combine the disparate elements.”  Thus, Petitioner’s Petition and Declarations did not meet the requirements of In re Kahn, 441 F.3d 977, 988, because they did not include any “articulated reason with some rational underpinning to support the legal conclusion of obviousness.”

Ariosa Diagnostics v. Verinata Health, Inc., IPR2013-00276 
Paper 43: Final Written Decision 
Dated: October 23, 2014 
Patent 8,318,430 B2 
Before: Toni R. Scheiner, Lora M. Green, and Rama G. Elluru 
Written By: Scheiner
Related Proceedings: Verinata Health, Inc. v. Ariosa Diagnostics, Inc., Case No. 3:12-cv-05501-S1 (N.D. Cal.); IPR2013-00277