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`Filed : April 7, 2014
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`
` HEI-MUN CHRISTINA FAN and STEPHEN QUAKE
`Junior Party
`
` (Patent 8,195,415),
`
`v.
`
`YUK-MING DENNIS LO, ROSSA WAI KWUN CHIU, and KWAN CHEE
`CHAN
`Senior Party
`(Application 13/070,266),
`
`Patent Interference No. 105,922 (DK)
`(Technology Center 1600)
`
`Decision on Motions
`Bd. R. 125(a)
`Before, FRED E. McKELVEY, RICHARD E. SCHAFER, and DEBORAH KATZ,
`Administrative Patent Judges.
`
`KATZ, Administrative Patent Judge.
`
`SEQUENOM EXHIBIT 1088
`Sequenom v. Stanford
`SEQUENOM EXHIBIT 1088
`IPR2013-00390
`
`
`
`Interference 105,922
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`I. Statement of the Case
`The interference is before a panel for consideration of the pending non-
`priority motions. An oral argument was held on 25 February 2014. (Transcript,
`Paper 99.)
`Hei-Mun Christina Fan and Stephen Quake (“Fan”) present Motion 1
`(Paper 26) to argue that it should be accorded an earlier constructive reduction to
`practice (i.e., benefit for the purpose of priority) of application 61/098,758, which
`was filed 20 September 2008. Yuk-Ming Dennis Lo, Rossa Wai Kwun Chiu, and
`Kwan Chee Chan (“Lo”) do not oppose Fan Motion 1. We grant Fan Motion 1.
` Fan also presents Motion 2 (Paper 27) and Motion 3 (Paper 28), arguing,
`respectively, that the specification of the involved Lo application lacks written
`description and enabling support for the involved Lo claims and that Lo should not
`have been accorded benefit (i.e., an earlier constructive reduction to practice) of its
`earlier applications. We deny Fan Motions 2 and 3.
`Finally, Fan presents Motion 4 (Paper 31), arguing that Fan claim 14 should
`not have been designated at corresponding to the Count. We deny Fan Motion 4.
`Lo does not present any motions in this phase of the interference.
`II. The Parties
`a. Fan
`Fan is involved based on the patent 8,195,415 (“the Fan ’415 patent”), which
`issued 5 June 2012, from application 12/696,509, filed 29 January 2010. Upon
`declaration, Fan was accorded the benefit of application 12/696,509, filed
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`29 January 2010, and application 12/560,708, filed 16 September 2009.
`(Declaration, Paper 1.)
`Fan represents that its involved application is assigned to The Board of
`Trustees of the Leland Stanford Junior University. Fluidigm Corporation and
`Verinata Health, Inc, a wholly owned subsidiary of Illumina, Inc., are identified as
`licensees. (Paper 9.) Fan also represents that the United States government has
`certain rights in the patent. (Id.)
`Fan relies on the testimony of J. Chris Detter, Ph.D. (See Declaration of
`John Chris Detter, Ph.D. (“Detter Decl.”), Exh. 2050.) Dr. Detter testifies that he
`has a Ph.D. in molecular genetics and microbiology and that he has held several
`positions leading genomic sequencing and computational biology groups. (Detter
`Decl., Exh. 2050, at ¶¶ 3-5.) Dr. Detter testifies that he is currently the Genome
`Sciences Center Director and Group Leader (B-6) and the Acting Bioscience
`Deputy Divisional Leader, responsible for programmatic, strategic, and tactical
`mission areas for bioscience at Los Alamos National Laboratory. (Id. at ¶ 6.)
`Dr. Detter’s curriculum vitae shows that he has authored numerous research papers
`regarding genome sequencing of various organisms. (Curriculum Vitae, Exh.
`2051; see Detter Decl., Exh. 2050, ¶ 8.) In light of his testimony, Dr. Detter is
`qualified to testify as an expert about the subject matter of this interference.
`b. Lo
`Lo is involved based on application 13/070,266 (“the Lo ’266 application”),
`which was filed 23 March 2011. Lo was accorded the benefit of 12/614,350,
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`which was filed 6 November 2009, and application 12/178,181, which was filed
`23 July 2008.
`Lo represents that at least application 13/070,266 is assigned to The Chinese
`University of Hong Kong and that Sequenom, Inc. is a licensee. (Paper 4.)
`Lo relies on the testimony of Stacey Bolk Gabriel, Ph.D. (See Declaration of
`Stacey Bolk Gabriel, Ph.D. (“Gabriel Decl.”), Exh. 1076.) Dr. Gabriel testifies that
`she received a Ph.D. degree in genetics in 1998. (Id., ¶ 10.) She testifies further
`that she has held several positions related to mapping and sequencing the human
`genomes. (Id., ¶¶ 12-18.) Dr. Gabriel testifies that she is currently the Director of
`the Genomics Platform of the Broad Institute, which according to Dr. Gabriel, is
`the largest genome center in the United States. (Id. at ¶ 19.) Dr. Gabriel testifies
`that she has served on several editorial and advisory boards related to genomic
`research and that she has authored over 100 peer-reviewed publications involving
`the application of sequencing technology to the study of human disease. (Id. at
`¶¶ 20-22.) In light of her testimony, Dr. Gabriel is qualified to testify as an expert
`about the subject matter of this interference.
`c. Related Proceedings
`The involved Lo ’266 application and involved Fan ’415 patent are related
`to applications and patents involved in concurrent Interferences 105,920, 105,923,
`and 105,924.1 The Fan (referred to as “Quake”) patents and applications in those
`
`
`1 Interference 105,920 involves Lo application13/070,275 and Quake patent
`8,008,018. Similarly, Interference 105,923 involves Quake application 12/393,833
`and Lo applications 12/178,181; 13/070,240; 12/614,350; and 13/070,251.
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`interferences are not in the same direct lineage as the involved Fan ’415 patent, but
`have the same real party-in-interest. As in the current interference, the counts of
`these concurrent interferences are drawn to methods of detecting chromosomal
`abnormalities.
`Inter Partes Review (“IPR”) 2013-00390 is also related to this interference.
`Review was instituted following a petition filed by Sequenom, Inc. (the real party-
`in-interest of Lo) against the patentability of the claims of currently involved Fan
`’415 patent. Sequenom, Inc. argues that the Fan ’415 patent claims are
`unpatentable over Lo application 12/178,181 (published as U.S. Patent Application
`Publication 2009/0029377), which is a parent of the Lo ’266 application involved
`in this interference. A final decision has not been entered in the IPR.
`III. The Subject Matter
`The parties claim methods of testing for an abnormal distribution of
`chromosomes in a person’s cells, a condition called “aneuploidy.” The claimed
`methods can be used to test for conditions including Down Syndrome, in which
`chromosome 21 is aneuploid, with three copies instead of the normal two copies.
`In the past, these chromosomal abnormalities were diagnosed with invasive
`procedures such as amniocentesis or chorionic villus sampling. The parties’ claims
`are drawn to methods that allow for the diagnosis of aneuploidies with a simple
`blood test.
`In general, the methods include the determination of a ratio between the
`number of different chromosomes in the blood sample without distinguishing
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`Interference 105,924 involves Lo application 13/417,119 and Quake application
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`between the chromosomes of the mother and fetus. The ratio of chromosomes
`suspected of being aneuploid to the number of chromosomes not likely to be
`aneuploid indicates whether there is an extra or missing chromosome. To count
`chromosomes, small portions of the DNA present in the blood sample are
`sequenced and aligned to reference chromosomes to identify with a specific
`chromosome. This method requires sequencing of many, many such “sequence
`tags” to make a statistically significant determination of aneuploidy. (Fan ’415
`patent, 3:35-64; Detter Decl., Exh. 2050, at ¶ 34.)
`IV. Fan Motion 2
`Fan requests that we find that the specification of the involved Lo ’266
`application fails to provide sufficient written description supporting Lo claims
`designated as corresponding to the Count. (Fan Motion 2, Paper 27, at 1:3-11.)
`Under 35 U.S.C. § 1122 the
`specification shall contain a written description of the invention, and
`of the manner and process of making and using it, in such full, clear,
`concise, and exact terms as to enable any person skilled in the art to
`which it pertains, or with which it is most nearly connected, to make
`and use the same . . . .
`
`To determine if a claim complies with this statute, we ask, “whether the
`disclosure of the application relied upon reasonably conveys to those skilled in the
`art that the inventor had possession of the claimed subject matter as of the filing
`
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`12/393,833.
`2 Patent interferences continue under the relevant statutes in effect on 15 March
`2013. Pub. L. 112-29, § 3(n), 125 Stat. 284, 293 (2011).
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`date.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F3d 1336, 1351 (Fed. Cir. 2010).
`We need not find literal support for claim terms in a specification to find that the
`claims are sufficiently supported, as long as the specification reasonably conveys
`to the artisan that the inventor had possession at the time of the later claimed
`subject matter. See In re Kaslow, 707 F.2d 1366, 1375 (Fed. Cir. 1983).
`Compliance with the written description requirement is a question of fact, Yorkey
`v. Diab, 601 F.3d 1279, 1283 (Fed. Cir. 2010), which is often case-specific, see In
`re Wertheim, 541 F.2d 257, 262, 191 USPQ 90, 96 (CCPA 1976) (“The primary
`consideration is factual and depends on the nature of the invention and the amount
`of knowledge imparted to those skilled in the art by the disclosure.”).
`Fan argues that the Lo specification fails to support one of the steps of the
`method recited in Lo’s claims, focusing specifically on the term “windows.” (Fan
`Motion 2, Paper 27, at 1:3-11.) According to Fan, the term should be narrowly
`construed in include limitations not literally described in Lo’s specification. Fan
`carries the burden of persuading us that Lo’s claims must be construed under this
`limited construction and that the Lo specification does not support a method with
`such a limitation. See 37 C.F.R. § 41.121(b) (“The party filing the motion has the
`burden of proof to establish it is entitled to the requested relief.”).
`Fan and Lo agree that because Lo copied its claims from Fan’s involved
`’415 patent, Lo’s claims must be construed according to the specification of the
`Fan ’415 patent. (See Fan Motion 2, Paper 27, at 3:9-11, and Material Fact (“MF”)
`6; see Lo Opp. 2, Paper 49, at 3:2-5, and response to Fan MF6.) See Agilent Tech.,
`Inc. v. Affymetrix, Inc., 567 F.3d 1366, 1375 (Fed. Cir. 2009) (“when a party
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`challenges written description support for an interference count or the copied claim
`in an interference, the originating disclosure provides the meaning of the pertinent
`claim language.”).
`The following findings of fact, as well as others presented elsewhere in this
`opinion, are supported by a preponderance of the evidence.
`Findings of Fact
`1.
`Lo independent claim 24 recites:
`A method of testing for an abnormal distribution of a specified
`chromosome portion in a mixed sample of normally and abnormally
`distributed chromosome portions obtained from a subject, the method
`comprising:
`(a) sequencing DNA from the mixed sample to obtain
`sequences from multiple chromosome portions, wherein said
`sequences comprise a number of sequence tags of sufficient length of
`determined sequence to be assigned to a chromosome location within
`a genome;
`(b) assigning the sequence tags to corresponding chromosome
`portions including at least the specified chromosome by comparing
`the determined sequence of the sequence tags to a reference genomic
`sequence;
`(c) determining values for numbers of sequence tags mapping
`to chromosome portions by using a number of windows of defined
`length within normally and abnormally distributed chromosome
`portions to obtain a first value and a second value therefrom; and
`(d) using the values from step (c) to determine a differential,
`between the first value and the second value, which is determinative
`of whether or not the abnormal distribution exists.
`
`
`(Lo Clean copy of Claims, Paper 7 (emphasis added).)
`2.
`The Fan ’415 patent provides that
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`a number of windows of defined length are created along a
`chromosome, the windows being on the order of kilobases in length,
`whereby a number of sequence tags will fall into many of the
`windows and windows covering each entire chromosome in question,
`with exceptions for non-informative regions, e.g., centromere regions
`and repetitive regions.
`
`(Fan ’415 patent, Exh. 2011, at 4:53-59.)
`3.
`The Fan ’415 patent provides that “[b]y counting sequence tags within
`a series of predefined windows of equal lengths along different chromosomes,
`more robust and statistically significant results may be obtained.” (Fan ’415
`patent, Exh. 2011, at 4:61-64.)
`4.
`Fan’s witness, Dr. Detter testifies that using “windows” in the method
`described in the Fan ’415 specification enables an improved statistically significant
`comparison because the windows eliminate the over- and under-representation of a
`particular chromosome, or chromosome portion that could be due to bias, such as
`sequencing bias, but not to aneuploidy. (Detter Decl., Exh. 2050, at ¶ 44.)
`5.
`Dr. Detter testifies that an additional advantage of using “windows of
`defined length” is to mitigate the computational demand of whole genome
`sequencing because when isolated, predefined windows of equal length are
`considered, the mapping of the millions of sequencing tags generated can become
`more manageable. (Detter Decl., Exh. 2050, at ¶ 45.)
`6.
`Dr. Detter testifies that another advantage of using “windows of
`defined length” is that the results are more informative because the examination of
`smaller amounts of information at a time makes it easier to identify the presence of
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`an abnormal amount of chromosomes or chromosome portions. (Detter Decl.,
`Exh. 2050, at ¶ 45.)
`7.
`Dr. Detter explains that Figure 9 of the Fan ’415 patent is a schematic
`showing a method in which one segments a chromosome into windows and then
`counts the sequence tags that map to particular windows to determine a
`representative number of sequence tags for the chromosome, allowing one to
`calculate a normalization constant for that chromosome. (Detter Decl., Exh. 2050,
`at ¶¶ 47 and 48.)
`8.
`Dr. Detter testifies that the normalization constant determined for each
`chromosome using “windows” of equal length, as depicted in Figure 9, can detect
`over or under-representation of a chromosome without using an external reference.
` (Detter Decl., Exh. 2050, at ¶¶ 47 and 48.)
`9.
`Dr. Detter testifies that “windows,” as provided in the Fan ’415
`specification, may be used to compensate for sequence bias that may arise as a
`result of nucleotide content, such as for the guanosine and cytosine base content
`(“G/C content”). (Detter Decl., Exh. 2050, at ¶ 49-54.)
`10. Dr. Detter testifies that after reviewing the Lo ’266 application and its
`file history, he cannot identify any written description support for the claim term
`“using a number of windows of defined length within normally and abnormally
`distributed chromosome portions.” (Detter Decl., Exh. 2050, at ¶¶ 58 and 91.)
`11. Lo’s witness, Dr. Gabriel testifies that one of skill in the art would
`interpret the word “windows” in the Fan ’415 patent specification as predefined
`subsections of a chromosome. (Gabriel Decl., Exh. 1076, ¶¶ 33, 43, 49, and 55.)
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`12. Dr. Gabriel testifies that “windows” as provided in the Fan ’415
`patent specification are not required to have the same length. (Gabriel Decl., Exh.
`1076, ¶¶ 43, 48, 50, and 53.)
`13. Dr. Gabriel testifies that Dr. Detter’s understanding of “windows” is
`based only on preferred embodiments provided in the Fan ’415 patent
`specification, but that the patent provides a broader disclosure overall. (Gabriel
`Decl., Exh. 1076, ¶ 47.)
`14. Dr. Gabriel testifies that a person of skill in the art would understand
`the disclosure of the Fan ’415 patent specification:
`By analyzing sequence tag density in predefined subsections of
`chromosomes (e.g., 10 to 100 kb windows), a normalization constant
`can be calculated, and chromosomal subsections quantified (e.g.,
`21q22.2).
`
`(Fan ’415 patent, Exh. 2011, at 4:9-12), to mean that “windows” are predefined
`subsections of chromosomes that may vary in length from 10 to 100 kb and are not
`required to be of equal length. (Gabriel Decl., Exh. 1075, ¶ 50.)
`15. Dr. Gabriel testifies that a person of skill in the art would understand
`the disclosure of the Fan ’415 patent specification:
`Each autosome (chr. 1-22) is computationally segmented into
`contiguous, non-overlapping windows. (A sliding window could also
`be used). Each window is of sufficient length to contain a significant
`number of reads (sequence tags, having about 20-100 by [sic – bp] of
`sequence) and not still have a number of windows per chromosome.
`Typically, a window will be between 10 kb and 100 kb, more
`typically between 40 and 60 kb.
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`(Fan ’415 patent, Exh. 2011, at col. 5:4-11), to mean that “windows” are
`predefined subsections of chromosomes that are contiguous, non-overlapping
`segments and are typically between 10 to 100 kb, more typically between 40 and
`60 kb, but are not required to be of equal length. (Gabriel Decl., Exh. 1075, ¶ 53.)
`16. The Lo ’266 application provides the following:
`Embodiments of this invention provide methods, systems, and apparatus
`for determining whether an increase or decrease (diseased state) of a
`clinically-relevant chromosomal region exists compared to a non-
`diseased state. This determination may be done by using a parameter of
`an amount of a clinically-relevant chromosomal region in relation to
`other non-clinically-relevant chromosomal regions (background regions)
`within a biological sample. Nucleic acid molecules of the biological
`sample arc sequenced, such that a fraction of the genome is sequenced,
`and the amount may be determined from results of the sequencing. One
`or more cutoff values are chosen for determining whether a change
`compared to a reference quantity exists (i.e. an imbalance), for example,
`with regards to the ratio of amounts of two chromosomal regions (or sets
`of regions).
`
`The change detected in the reference quantity may be any deviation
`(upwards or downwards) in the relation of the clinically-relevant nucleic
`acid sequence to the other non-clinically-relevant sequences. Thus, the
`reference state may be any ratio or other quantity (e.g. other than a 1-1
`correspondence), and a measured state signifying a change may be any
`ratio or other quantity that differs from the reference quantity as
`determined by the one or more cutoff values.
`
`(Lo ’266 application, Exh. 2016, ¶¶ [0061] and [0062].)
`17. The Lo ’266 application provides that
`dosage imbalance of a particular chromosome or chromosomal regions
`can be quantitatively determined. In other words, the dosage imbalance
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`of the chromosome or chromosomal regions is inferred from the
`percentage representation of the said locus among other mappable
`sequenced tags of the specimen.
`
`(Lo ’266 application, Exh. 2016, ¶ [0078].)
`18. Dr. Gabriel testifies that one of ordinary skill in the art would have
`understood “chromosomal regions” as discussed in the ’266 application to be used
`to compare the number of sequence tags originating from a clinically relevant
`chromosomal region, or test window, relative to the number of sequence tags
`originating from a non-clinically relevant chromosomal region, or background
`reference, window to determine whether a chromosomal dosage imbalance exists.
`(Gabriel Decl., Exh. 1076, ¶ 63.)
`19. Dr. Gabriel testifies that the “chromosomal regions” discussed in the
`Lo ’266 application are used in the same way as the “windows” discussed in the
`’415 patent. (Gabriel Decl., Exh. 1076, ¶ 63.)
`Analysis
`To analyze whether the Lo ’266 application supports the term “using a
`number of windows of defined length within normally and abnormally distributed
`chromosome portions” in Lo’s claims, we must construe the term “windows.”
`First, we look to the plain language of the claims. Although claim terms are
`construed in light of the context of the entire patent, the claims themselves provide
`“substantial guidance” for the meaning of particular terms. Phillips v. AWH Corp.,
`415 F.3d 1303, 1314 (Fed. Cir. 2005) (en banc); see also See Aria Diagnostics,
`Inc. v. Sequenom, Inc., 726 F.3d 1296, 1300-01 (Fed. Cir. 2013) (refusing to
`narrowly construe the term “paternally inherited nucleic acid” where the claim
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`language did not incorporate any inherent meaning about the timing or method
`detecting the paternal characteristic and neither the specification nor the
`prosecution history showed a clear statement of intent to limit the term).
`The only purpose of the “windows” stated in Lo’s copied claims is to
`determine “values” for numbers of sequence tags mapped to the chromosome
`portions, specifically “a first value and a second value,” which are then used in step
`(d) to determine whether or not an abnormal distribution exists. The claims do not
`expressly indicate that the “windows” are to be used for normalization against any
`biases and do not expressly indicate that the “windows” must be of equal length.
`Fan has not directed us to evidence that “windows” is a term of art that skilled
`artisans would have known inherently indicates equal length or a specific
`normalization protocol. Thus, if we are to limit step (c) beyond its express
`language, we must find a reason to do so from other sources. See Telemac Cellular
`Corp. v. Topp Telecom, Inc., 247 F.3d 1316, 1324 (Fed. Cir. 2001) (“Unless
`something in the written description suggests that the patentee intended the
`unambiguous language to be construed in a manner inconsistent with its ordinary
`meaning, we are bound by that language.”).
`Fan directs us to the specification of the Fan ’415 patent, arguing that it
`limits the purpose of the claimed “windows” to be for calculating a normalization
`constant. (Fan Reply 2, Paper 55, at 2:6-8.) Fan argues further that the
`specification of the Fan ’415 patent makes clear that these “windows” must be of
`equal length. (Id. at 2:8-14.) Fan does not point to an express definition of the
`term “windows” in the specification that includes an “equal length” limitation.
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`Pointing generally to columns 3-5 and 22 of the specification, Fan asserts
`“windows” are a unit of defined length created along a chromosome, possibly
`along the whole length of the chromosome, except at the centromere and repetitive
`regions. (Fan Motion 2, Paper 27, at 4:19-24; see Finding of Fact (“FF”) 2, Fan
`’415 patent, Exh. 2011, at 4:53-59.) Though there are portions of the specification
`discussing “windows” of equal length (see, e.g., Fan ’415 patent, Exh. 2011, at
`4:61-64), Fan does not point to language in the specification requiring all
`“windows” be of equal length. Furthermore, even though “windows” of equal
`length were disclosed, the Fan claims that Lo copied do not include this language
`as an express limitation of the claimed methods.
`In support of its argument for a narrow construction of the term “windows,”
`Fan relies on the testimony of Dr. Detter, who explains that using windows allows
`for an improved statistical significance of the comparison between suspected
`abnormally and normally distributed chromosomes. (FF 4, Detter Decl., Exh.
`2050, at ¶ 44; see also FFs 7-9, Detter Decl., Exh. 2050, at ¶¶ 47-54.) But, Dr.
`Detter also explains that using windows mitigates the computational demand of
`whole genome sequencing by making an amount of sequence more manageable
`and makes the results more informative by examining smaller amounts of
`information. (FFs 5 and 6, Detter Decl., Exh. 2050, at ¶ 45.) Therefore, though we
`agree that the Fan ’415 patent specification provides for using “windows” of equal
`length for a particular normalization protocol, Dr. Detter’s testimony indicates that
`“windows” can be used for other purposes related to the methods described in the
`Fan ’415 patent specification.
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`We note that the passage of the Fan ’415 specification referring to
`“windows” of equal length appears to qualify their purpose as being only to obtain
`better results. The specification provides: “By counting sequence tags within a
`series of predefined windows of equal lengths along different chromosomes, more
`robust and statistically significant results may be obtained.” (Fan ’415 patent, Exh.
`2011, at 4:61-64.) Because the Lo claims do not restrict the statistical significance
`of the results obtained by the claimed method, we are not persuaded that the recited
`method must use “windows” of equal length. (See Lo Opp. 2, Paper 49, at
`10:10-15.) By referring to “more robust and statistically significant results” when
`“windows” of equal length are used (Fan ’415 patent, Exh. 2011, at 4:61-64
`(emphasis added)), the passage in the Fan ’415 specification indicates to one
`skilled in the art that “windows” of unequal length could be used in the claimed
`method, though with less robust results.
`When we look to the specification for guidance in construing claim terms,
`we avoid limitations that are reflected only in specific embodiments, particularly if
`those embodiments are not reflected in the claims. See Aventis Pharma S.A. v.
`Hospira, Inc., 675 F.3d 1324, 1330 (Fed. Cir. 2012) (it is “not enough that the only
`embodiments, or all of the embodiments, contain a particular limitation to limit a
`claim term beyond its ordinary meaning.”); see also Liebel-Flarsheim Co. v.
`Medrad, Inc., 358 F.3d 898, 906 (Fed. Cir. 2004) (“Even when the specification
`describes only a single embodiment, the claims of the patent will not be read
`restrictively unless the patentee has demonstrated a clear intention to limit the
`claim scope using ‘words or expressions of manifest exclusion or restriction.’”
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`(quoting Teleflex, Inc. v. Ficosa N. Am. Corp., 299 F.3d 1313, 1327
`(Fed.Cir.2002))). Fan has not persuaded us that the specification of the Fan ’415
`patent exhibits intent to limit the term “windows” to regions that must be used for a
`specific normalization protocol or must be of equal length.
`Lo argues that instead of Fan’s narrow construction, the term “window” is
`properly construed more broadly as “predefined subsections of a chromosome” or
`a “chromosomal region,” as that term is used in the Lo ’266 application. (Lo Opp.
`2, Paper 49, at 5:24-26 and 34:2-3, Material Fact (“MF”) 101.) We give claims
`their broadest reasonable interpretation. See Harari v. Lee, 656 F.3d 1331, 1334
`(Fed. Cir. 2011) (“Because this is an interference and Harari substantially copied
`Lee claim 1, we give the claim its broadest reasonable construction in light of the
`Lee patent specification.”); In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364
`(Fed.Cir.2004) (providing that the Patent and Trademark Office determines the
`scope of claims in patent applications by giving them their broadest reasonable
`construction in light of the specification as interpreted by one of ordinary skill in
`the art.). Thus, we must determine whether Lo’s construction is unreasonably
`broad.
`Lo relies on the testimony of Dr. Gabriel to argue that the windows of the
`Fan ’415 patent and the “chromosomal regions” of the Lo ’266 application are both
`used to compare a ratio of the number of sequence tags originating from a
`clinically relevant region relative to the number of sequence tags from a non-
`clinically relevant region. (Lo Opp. 2, Paper 49, at 6:33-7:3; FF 19, Gabriel Decl.,
`Exh. 1076, ¶ 63.) Fan argues that this construction is not reasonable because it
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`allows a “window” to be the polynucleotide being tested for a potential aneuploidy,
`while the “windows” referred to in the Fan ’415 patent specification are not being
`tested for aneuploidy. (Fan Reply 2, Paper 55, at 4:22-6:13.) As discussed above,
`though, Fan has not persuaded us that the term “windows” refers only to regions
`used for normalization.
`Instead, returning to the language of step (c) in Lo claim 24, and substituting
`Lo’s asserted meaning of “windows,” Dr. Gabriel’s testimony supports the finding
`that one of skill could
`determin[e] value[s] for the number of sequence tags mapping to
`chromosome portions by using a number of [“predefined subsections
`of a chromosome” or a “chromosomal regions”] of defined length
`within the normally and abnormally distributed chromosome portions
`to obtain a first value and a second value therefrom
`
`(Lo Clean Copy of Claims, Paper 7), in order to determine whether or not an
`abnormal chromosome distribution exists. (FF 18, Gabriel Decl., Exh. 1076, ¶ 63.)
`Fan does not direct us to other evidence supporting its argument that Lo’s broader
`interpretation is unreasonable. Accordingly, on the record before us, Lo’s
`interpretation is reasonable and we construe the term “windows” as a “predefined
`subsections of a chromosome” or a “chromosomal regions.” Because the Lo ’266
`application supports this claim term (see FFs 16 and 17, Lo ’266 application, Exh.
`2016, at ¶¶ [0061], [0062], and [0078]) and Fan does not argue that any other claim
`terms are unsupported, we find that the subject matter Lo’s claims are described by
`the Lo ’266 application.
`Fan has failed to persuade us that the involved Lo claims lack sufficient
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`written description support under 35 U.S.C. § 112, first paragraph. Accordingly,
`we deny the relief Fan requests in its Motion 2.
`V.
`Fan Motion 3
`Fan requests that the benefit of priority as to the Count for application
`12/614,350 (“the Lo ’350 application”) or 12/178,181 (“the Lo ’181 application”),
`which was accorded to Lo upon declaration, be revoked. (Fan Motion 3, Paper
`28.) Fan argues that Lo is not entitled to this priority benefit because those
`applications do not provide a constructive reduction to practice of “determining
`values for numbers of sequence tags mapping to chromosome portions by using a
`number of windows of defined length within normally and abnormally distributed
`chromosome portions,” as recited in step (c) of the Count. (Id., at 1:3-11.) Fan
`puts forth arguments and evidence that are similar to the arguments and evidence it
`put forth in its Motion 2 to argue that the Lo ’266 application fails to provide a
`sufficient disclosure under 35 U.S.C. § 112, first paragraph, for step (c) of its
`involved claims.
`As Lo argued in opposition to Fan Motion 2, the Lo ’350 application and the
`Lo ’181 applications describe how “chromosomal regions” are used to analyze
`sequence tags for a determination of aneuploidy. (Lo Opp. 3, Paper 50, at 5:13-
`8:9, citing Lo ’350 application, Exh. 2008, at ¶¶ 0061, 0062, and 0078; and Lo
`’181 application, Exh. 2009, at ¶¶ 0050, 0051, and 0067.) For the reasons
`provided above in regard to Fan Motion 2, we deny the relief Fan requests in
`Motion 3.
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`VI. Fan Motion 1
`Fan requests that it be accorded the benefit of priority as to the Count for its
`provisional application 61/098,758 (“the Fan ’758 application”) because that
`application provides a constructive reduction to practice of the Count. (Fan
`Motion 1, Paper 26.) Lo does not oppose Fan’s request. (See Lo Notice Regarding
`Opposition to Fan Motion 1, Paper 43.)
`Fan points to the claims of the Fan ’758 application and to portions of the
`specification for written and enabli