By Luke Cipolla, Matt Silveira, and Matt Johnson

In Pacific Biosciences of California, Inc. v. Personal Genomics Taiwan, Inc., the Federal Circuit recently affirmed two PTAB decisions in IPRs filed by Pacific Biosciences of California, Inc. (PacBio) that challenged a Personal Genomics Taiwan (PGT) patent, U.S. Patent No. 7,767,441, directed to a device for determining the identity of biomolecules. The court agreed both with the PTAB’s claim construction and its application of that construction to the prior art raised in the IPRs.

First, over PacBio’s argument that the preamble phrase “identifying a single biomolecule” encompasses devices that identify a biomolecule by examining an ensemble of copies, the court held this phrase is limited to the capability to identify a biomolecule “by examining just that one biomolecule, not others (even copies).” The court explained there is no apparent reason to use “single” except to indicate the device must have the capability to identify “with just that one molecule in view.” The court also relied on: (1) the specification’s depiction of devices that identify a “single biomolecule” by examining only one biomolecule; (2) the specification’s explanation of the advantages of the claimed device over devices that examine copies; and (3) the existence of dependent claims describing multi-molecule examinations, in contrast to independent claim 1.

Second, the court affirmed the PTAB’s determinations regarding the disclosure of this limitation, as construed by the PTAB, in the prior art.  Specifically, the reference in the first IPR did not disclose the capacity to identify a single biomolecule because the claimed invention used an assay with a minimum detection limit of greater than 60,000 molecules. And the reference in the second IPR did disclose the capacity to identify a single biomolecule because it disclosed detection and observation of individual chromophores, which the PTAB reasonably understood to disclose capacity to identify one individual biomolecule, given that a single chromophore is often used to tag a single biomolecule.

The court held the PTAB’s conclusion was reasonable despite potentially valid calculations based on disclosures in the reference by PGI’s expert concluding otherwise. The court explained they would not “reweigh the evidence” because the PTAB reasonably based their findings off other disclosures in the reference and rebuttal testimony from PacBio’s expert.


The Federal Circuit affirmed the construction of a preamble phrase citing plain meaning, specification descriptions, and illustrative dependent claims as support. The Federal Circuit also held the PTAB’s factual finding on a point must be given deference if the evidence reasonably allows for the factual finding.

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Matt Johnson is one of the Firm's primary contacts on practice before the PTAB. Currently co-chairing the Firm's PTAB subpractice and involved in proceedings at the Board since the first day of their availability in September 2012, Matt regularly represents clients as both petitioners and patent owners at the Board. He further works as an advocate for clients in appeals from Board proceedings at the Federal Circuit.

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