• Guardant Health, Inc. v. University Of WashingtonInstitution denied
  PTAB · Jan 31, 2023 · IPR2022-01388 · APJ Zhenyu Yang · IPR · Institution

  The Board denied institution of review of claims 1–27, exercising § 314(a) discretion under General Plastic because the follow-on petition used lessons from earlier petitions and had weak merits.

  RulingsInstitution decision

  • PTAB / AIA Trials › Discretionary denial › General Plastic (serial petitions)Institution denied general plasticInstitution denied

    “to study a patent owner’s preliminary response to, or the Board’s institution decision on, a prior petition, such that the petitioner would have been in a position to gain a benefit from having that information before filing another petition. General Plastic, Paper 19 at 17. Under this analysis, we disfavor a follow-on petition that “us[es] our decisions as a roadmap.” Id. Petitioner filed this third Petition on August 10, 2022, after Patent Owner filed its Preliminary Responses in the ’449 and ’450 IPRs on May 6, 2022, and after we issued our decisions denying the petitions in those cases on August 1, 2022. 6 Craig et al., Identification of Genetic Variants Using Bar-Coded Multiplexed Sequencing, 5 NATURE METHODS 887–93 (2008) (Ex. 1036, “Craig”). 7 Shiroguchi et al., Digital RNA Sequencing Minimizes Sequence Dependent Bias and Amplification Noise with Optimized Single-Molecule Barcodes, 109 PROC. NATL. ACAD. SCI. 1347–52 (2012) (Ex. 1010, “Shiroguchi”). Petitioner nevertheless argues that we should institute review of this third Petition because “the Board never reached the merits of patentability under the prior petition[s],” and Petitioner “derived few if any benefits” from seeing Patent Owner’s preliminary responses and our decisions denying institution in those cases. Pet. 62. We disagree. Below, to explain that this third Petition indeed uses our prior decisions as a roadmap, we: (1) summarize Kinde’s teachings; (2) summarize the parties’ arguments and our decision denying institution in the ’450 IPR; and (3) discuss Petitioner’s arguments in this third Petition.” slip op. at 12

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)Not reached

    “Petitioner that this factor favors institution, it would not outweigh considerations under the other six factors, all of which favor denying institution. This is so especially in view of the weak merits, as discussed below. H. The Merits of This Third Petition Are Weak In this third Petition, Petitioner relies on an alleged “Craig Variation” of Kinde’s method. See, e.g., Pet. 10, 26, 35–36. According to Petitioner, “all claims encompass the obvious variation of Kinde’s method utilizing barcoded adapters (i.e., the Craig Variation).” Id. at 26. Patent Owner contends the so-called Craig Variation is “imaginary.” Prelim. Resp. 7. Putting aside that issue, we found in at least three related IPR proceedings that Petitioner did not explain sufficiently why an ordinarily skilled artisan would have introduced Craig’s adapters, which comprises exogenous barcodes, to Kinde’s endogenous method. See IPR2022-00816, Paper 16, 13–15; IPR2022-00935, Paper 11, 32–35; IPR2022-01159, Paper 17, 10–14. In the current Petition, Petitioner relies on substantially the same arguments regarding modifying Kinde’s endogenous UIDs with Craig’s adaptors. In other words, the merits of this third Petition are weak. In sum, the weakness in the merits of this third Petition further favors denying institution.” slip op. at 25

  Discretionary denial
  Patents in suitUS 10,689,699

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