Case: 15-1123 Document: 49-1 Page: 1 Filed: 01/29/2016
`UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT
`
`NOTICE OF ENTRY OF
`JUDGMENT ACCOMPANIED BY OPINION
`
`OPINION FILED AND JUDGMENT ENTERED: 01/29/2016
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`
`
`FOR THE COURT
`
`
`/s/ Daniel E. O'Toole
`Daniel E. O'Toole
`Clerk of Court
`
`
`
`cc: Brenton R. Babcock
`Jonathan Edward Bachand
`Robert R. Baron Jr.
`John L. Cuddihy
`Nathanael Luman
`Scott David Marty
`Marc S. Segal
`Kerry S. Taylor
`William R. Zimmerman
`
`15-1123 & 15-1243: Illumina Cambridge Ltd. v. Intelligent Bio-Systems, Inc.
`United States Patent and Trademark Office, Case Nos. IPR2013-00128 & IPR2013-00266
`
`Illumina Ex. 1081
`IPR Petition - USP 10,435,742
`
`

`

`Case: 15-1123 Document: 49-2 Page: 1 Filed: 01/29/2016
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`
`
`NOTE: This disposition is nonprecedential.
`United States Court of Appeals
`for the Federal Circuit
`______________________
`
`ILLUMINA CAMBRIDGE LTD.,
`Appellant
`
`v.
`
`INTELLIGENT BIO-SYSTEMS, INC.,
`Appellee
`______________________
`
`2015-1123
`______________________
`
`Appeal from the United States Patent and Trademark
`Office, Patent Trial and Appeal Board in No. IPR2013-
`00128.
` ------------------------------------------------------------------
`
`
`ILLUMINA CAMBRIDGE LTD.,
`Appellant
`
`v.
`
`INTELLIGENT BIO-SYSTEMS, INC.,
`Appellee
`______________________
`
`2015-1243
`______________________
`
`

`

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`
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` 2
`
` ILLUMINA CAMBRIDGE LTD. v. INTELLIGENT BIO-SYSTEMS
`
`Appeal from the United States Patent and Trademark
`Office, Patent Trial and Appeal Board in No. IPR2013-
`00266.
`
`______________________
`
`Decided: January 29, 2016
`______________________
`
`WILLIAM R. ZIMMERMAN, Knobbe, Martens, Olson &
`Bear, LLP, Washington, DC, argued for appellant. Also
`represented by JONATHAN EDWARD BACHAND; BRENTON R.
`BABCOCK, Irvine, CA; NATHANAEL LUMAN, KERRY S.
`TAYLOR, San Diego, CA.
`
`ROBERT R. BARON, JR., Ballard Spahr LLP, Philadel-
`phia, PA, argued for appellee. Also represented by MARC
`S. SEGAL; JOHN L. CUDDIHY, Washington, DC; SCOTT
`DAVID MARTY, Atlanta, GA.
`______________________
`
`Before LOURIE, BRYSON, and STOLL, Circuit Judges.
`LOURIE, Circuit Judge.
`Illumina Cambridge Ltd. (“Illumina”) appeals from
`the final written decisions of the United States Patent
`and Trademark Office, Patent Trial and Appeal Board
`(“the Board”) cancelling all challenged claims of its
`U.S. Patents 7,057,026 (“the ’026 patent”) and 8,158,346
`(“the ’346 patent”) and denying entry of substitute claims
`in two inter partes review proceedings. Intelligent Bio-
`Systems, Inc. v. Illumina Cambridge Ltd., IPR2013-
`00128, Paper No. 92 (P.T.A.B. July 25, 2014); Intelligent
`Bio-Systems, Inc. v. Illumina Cambridge Ltd., IPR2013-
`00266, Paper No. 73 (P.T.A.B. Oct. 28, 2014). Because the
`Board did not err in determining that Illumina failed to
`show that the proposed substitute claims are patentable
`over the prior art of record, and thus did not err in deny-
`ing in part the motions to amend, we affirm.
`
`

`

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`ILLUMINA CAMBRIDGE LTD. v. INTELLIGENT BIO-SYSTEMS
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`3
`
`BACKGROUND
`Illumina owns the ’026 and ’346 patents, which are
`both directed to DNA sequencing by synthesis (“SBS”)
`with non-natural nucleotides. As the name implies, SBS
`allows one to determine the composition of a target DNA
`sequence by synthesizing new copies of the DNA. Briefly,
`the synthesis process involves splitting the double helix of
`a target DNA molecule into two strands and then incorpo-
`rating complementary labeled nucleotides onto each
`strand to create two double helices. Non-natural nucleo-
`tides contain a non-natural base, i.e., a modified purine or
`pyrimidine base.
`The ’026 patent is directed to nucleotide compositions
`of matter, while the ’346 patent relates to methods of
`using such nucleotides. As the issues relating to the
`patentability of the claims of both of these patents are
`essentially the same, we evaluate both of them here in
`one opinion and decision.
`An exemplary non-natural nucleotide of the two pa-
`tents, pictured below, has a deoxyribose ring, with a
`protecting group attached at the 3′-OH position and a
`label
`connected
`to
`the non-natural base
`(here,
`deazapurine) by a linker (here, containing a disulfide
`linkage). According to the ’026 and ’346 patents, the
`linker and the protecting group for the claimed non-
`natural nucleotides are cleavable under identical condi-
`tions.
`
`

`

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`4
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`ILLUMINA CAMBRIDGE LTD. V. INTELLIGENT BIO-SYSTEMS
`
`m linker With
`S\4sulfide hnkage
`
`
`
`
`
`deazapurine
`(base)
`
`
` Gagg‘go
`protecting group
`
`3'-OH position
`
`The claimed SBS methods involve incorporating the
`non-natural nucleotides into multiple copies of a target
`DNA molecule, one at a time for each strand in a stepwise
`fashion. At each step, the signal from the label is detect-
`ed,
`indicating which nucleotide has been incorporated.
`Because a second nucleotide is added to the newly form-
`ing strand by its phosphate group binding to the 3'-OH
`position of a first nucleotide, a protecting group already
`attached at that position blocks the bond from being
`formed, and thus prevents multiple nucleotides from
`being added to the strand in the same step. Once the
`incorporated nucleotide is identified by the signal from its
`label,
`its attached protecting group is cleaved (or
`“deblocked”), allowing the next nucleotide to be incorpo-
`rated.
`Ideally, the label is also cleaved at this time,
`clearing the slate for the next nucleotide’s signal. This
`stepwise process repeats until the sequence of the target
`DNA molecule has been determined.
`
`If a protecting group is not properly cleaved, then the
`newly forming strand will not incorporate the next com-
`plementary nucleotide in that step and will become “out of
`
`

`

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`ILLUMINA CAMBRIDGE LTD. v. INTELLIGENT BIO-SYSTEMS
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`5
`
`phase” with the other strands, i.e., its sequence will no
`longer match the others in any future steps. In contrast,
`if a linker for a label fails to be cleaved, the strand will
`still be in phase despite its incorrect or mixed signals;
`moreover, the linker will likely be cleaved, and the signal
`corrected, in subsequent cycles.
`In 2012, a third party filed suit against Illumina, as-
`serting several DNA sequencing patents for which Intelli-
`gent Bio-Systems, Inc. (“Intelligent Bio-Systems”) is the
`exclusive licensee. In its answer, Illumina counter-
`claimed that Intelligent Bio-Systems infringed Illumina’s
`’026 and ’346 patents. Intelligent Bio-Systems then filed
`petitions for inter partes review at the Board, challenging
`claims 1–8 of the ’026 patent and claims 1, 2, 4, 11, 12, 17,
`18, and 19 of the ’346 patent. The district court case was
`stayed pending resolution of these and several other
`related inter partes review proceedings.
`The Board instituted review of both the ’026 and ’346
`patents on the grounds of anticipation and obviousness.
`2015-1123 Joint App. (“1123-J.A.”) 332–350; 2015-1243
`Joint App. (“1243-J.A.”) 208–221. Instead of submitting
`responses to the institution decisions, Illumina filed
`motions to amend, requesting cancellation of all chal-
`lenged claims of both patents, and entry of substitute
`claims 9–12 for the ’026 patent (“’026-substitute claims”),
`1123-J.A. 501–503, and claims 20–26 for the ’346 patent
`(“’346-substitute claims”), 1243-J.A. 278–279. Noting that
`the cancellation requests were not contingent on the
`original claims being found unpatentable, the Board
`granted Illumina’s motions in part, cancelling all of the
`challenged claims of both patents. 1123-J.A. 29–30; 1243-
`J.A. 23.
`The Board then examined the proposed substitute
`claims for the ’026 patent. Representative proposed
`substitute claim 9 for the ’026 patent reads as follows,
`with Illumina’s annotations for replacing claim 1:
`
`

`

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` ILLUMINA CAMBRIDGE LTD. v. INTELLIGENT BIO-SYSTEMS
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`9. A nucleotide triphosphate or nucleoside mole-
`cule, having a 7-deazapurine base that is linked to
`a detectable label via a cleavable linker, wherein
`the cleavable linker is attached to the 7-position of
`the 7-deazapurine base and wherein the cleavable
`linker contains a disulfide linkage, and wherein
`the nucleotide triphosphate molecule has a ribose
`or deoxyribose sugar moiety comprising a protect-
`ing group attached via the 2′ or 3′ oxygen atom,
`and the disulfide linkage of the cleavable linker
`and the protecting group are cleavable under
`identical conditions.
`1123-J.A. 30. The Board found only one new limitation
`that is different from the original claims: that the cleava-
`ble linker “contains a disulfide linkage.” 1123-J.A. 30.
`Starting with the premise that the obviousness of us-
`ing a disulfide linkage was the main issue to be decided,
`the Board found that all of the claim limitations were
`described in the prior art. 1123-J.A. 37–39. The Board
`also found that the prior art provided a reason to use a
`disulfide linkage to attach a label to a base of a nucleo-
`tide, including for DNA sequencing, and with a reasona-
`ble expectation of success. 1123-J.A. 40–42. Because the
`proposed substitute claims do not require a disulfide
`linkage between the protecting group and the 3′-OH, the
`Board rejected Illumina’s argument that the prior art’s
`requirement of greater than 90% cleavage efficiency for a
`protecting group also applied to the claimed disulfide
`linkage. 1123-J.A. 42–44. Even so, the Board also found
`that one of skill in the art would have expected to achieve
`more than 90% cleavage efficiency of the disulfide bond by
`routine experimentation. 1123-J.A. 44–50. The Board
`determined that Illumina had not met its burden of
`showing that one of skill in the art would not have had a
`reasonable expectation of success, viz., that identical
`conditions could not be selected in which the disulfide
`linkage is cleavable with less than 90% efficiency and the
`
`

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`ILLUMINA CAMBRIDGE LTD. v. INTELLIGENT BIO-SYSTEMS
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`
`protecting group is cleavable with greater than 90%
`efficiency.
`The Board also rejected Illumina’s proffered evidence
`of unexpected results of high cleavage efficiency of disul-
`fide linkages. The Board found that Illumina did not
`provide a proper comparison to the closest prior art, and
`failed to provide evidence that the results were due to the
`claimed subject matter, not the experimental conditions
`or the latent properties of the bond. 1123-J.A. 52–54.
`The Board thus concluded that Illumina had not met its
`burden of showing that the proposed ’026-substitute
`claims are patentable over the prior art of record. 1123-
`J.A. 54. The Board noted that such a showing is required
`in order to establish that the patent owner is entitled to
`the relief requested, i.e., to amend the patent with the
`proposed substitute claims. 1123-J.A. 29, 31 (citing 35
`U.S.C. § 316; 37 C.F.R. § 42.20(c)).
`The Board separately also examined the proposed
`substitute claims for the ’346 patent, which recite meth-
`ods comprising providing, similarly, a nucleotide with a
`linker containing a disulfide linkage for attaching a label
`to the base, and removing the label and the protecting
`group from the nucleotide under a single set of chemical
`cleavage conditions. 1243-J.A. 23–24. The Board again
`found only one new limitation as compared to the original
`claims: that the cleavable linker “contains a disulfide
`linkage.” 1243-J.A. 24. For virtually the same reasons as
`for the ’026-substitute claims, the Board concluded that
`Illumina had not met its burden of showing that the
`proposed ’346-substitute claims are patentable. 1243-J.A.
`26–48.
`The Board therefore denied in part Illumina’s motions
`to amend both patents by entering the proposed substi-
`tute claims. Illumina timely appealed from the Board’s
`final written decisions. We have jurisdiction pursuant to
`28 U.S.C. § 1295(a)(4).
`
`

`

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` ILLUMINA CAMBRIDGE LTD. v. INTELLIGENT BIO-SYSTEMS
`
`DISCUSSION
`We review the Board’s legal conclusions de novo, In re
`Elsner, 381 F.3d 1125, 1127 (Fed. Cir. 2004), and the
`Board’s factual findings underlying those determinations
`for substantial evidence, In re Gartside, 203 F.3d 1305,
`1315 (Fed. Cir. 2000). “Substantial evidence . . . means
`such relevant evidence as a reasonable mind might accept
`as adequate to support a conclusion.” Consol. Edison Co.
`v. NLRB, 305 U.S. 197, 217 (1938).
`Obviousness is a question of law based on underlying
`factual findings, including what a reference teaches and
`whether there would have been sufficient motivation to
`combine the prior art. In re Baxter Int’l, Inc., 678 F.3d
`1357, 1361 (Fed. Cir. 2012); Rapoport v. Dement, 254 F.3d
`1053, 1060–61 (Fed. Cir. 2001); In re Gartside, 203 F.3d at
`1316. For a motion to amend during an inter partes
`review proceeding, the patentee bears the burden of
`showing that its proposed substitute claims are patenta-
`ble over the prior art of record. Microsoft Corp. v. Proxy-
`conn, Inc., 789 F.3d 1292, 1306–08 (Fed. Cir. 2015);
`Prolitec, Inc. v. ScentAir Techs., Inc., 807 F.3d 1353,
`1363–64 (Fed. Cir. 2015).
`Illumina argues that the Board improperly limited its
`analysis to the disulfide linkage limitation, rather than
`also considering the combination of the additional limita-
`tions. Illumina contends that the ’026-substitute claims
`added limitations of both (i) the linker containing a disul-
`fide linkage and (ii) the disulfide linkage being cleavable
`under identical conditions as the protecting group. Simi-
`larly, the ’346-substitute claims added limitations of both
`(i) the linker containing a disulfide linkage and (ii) the
`disulfide linkage and the protecting group being removed
`under a single set of chemical conditions. Although each
`limitation may have been independently disclosed in the
`prior art, Illumina asserts that the Board only found a
`motivation to use a linker with a disulfide linkage in SBS
`
`

`

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`ILLUMINA CAMBRIDGE LTD. v. INTELLIGENT BIO-SYSTEMS
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`9
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`methods, which was insufficient to find the full scope of
`the claimed subject matter obvious. Illumina reasons
`that because the prior art teaches both that SBS requires
`greater than 90% deblocking efficiency, and that cleaving
`disulfide linkages was variable and inefficient, one of skill
`in the art would not have been motivated to combine the
`prior art for SBS methods. Worse yet, Illumina argues,
`the Board improperly imposed a heightened standard of
`nonobviousness by requiring proof that it would have
`been impossible to combine the prior art to arrive at the
`substitute claims, e.g., impossible to achieve higher cleav-
`age efficiency yields for disulfide linkages. Illumina also
`asserts that the Board improperly discounted its evidence
`of unexpected results, which showed not simply high
`cleavage efficiency of the disulfide linkage, but superior
`SBS results using the claimed nucleotides.
`Intelligent Bio-Systems responds that Illumina failed
`to carry its burden of showing that the proposed substi-
`tute claims were patentable over the prior art of record.
`Because the Board had already decided in its Decisions to
`Institute that the prior art taught all of the limitations in
`the original claims, Intelligent Bio-Systems contends, the
`only additional limitation in the proposed claims was the
`disulfide linker, and thus the Board only needed to ad-
`dress the prior art relating to the successful use of disul-
`fide linkers in DNA sequencing. Intelligent Bio-Systems
`characterizes Illumina’s arguments as using the variable
`cleavage efficiency of a disulfide linkage as a proxy for the
`greater than 90% cleavage efficiency of a protecting group
`required by the prior art; however, Intelligent Bio-
`Systems notes, the Board found that the claims do not
`require that they cleave at the same efficiency. Intelli-
`gent Bio-Systems also asserts that the Board did not err
`in finding that Illumina’s evidence of unexpected results
`was insufficient to meet its burden of showing nonobvi-
`ousness.
`
`

`

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` ILLUMINA CAMBRIDGE LTD. v. INTELLIGENT BIO-SYSTEMS
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`We agree with Intelligent Bio-Systems that the Board
`did not err in focusing on the prior art regarding disulfide
`linkages. For the proposed substitute claims in the
`context of inter partes review proceedings, Illumina bore
`the burden of proving patentability over the prior art of
`record; here, specifically, Illumina had to show that the
`substitute claims would not have been obvious in view of,
`inter alia, prior art raised during the review proceedings
`and prior art from the patent’s original prosecution histo-
`ry. See Prolitec v. ScentAir Techs., 807 F.3d at 1363–64.
`Because none of the original claims comprised the limita-
`tion of the linker containing a disulfide linkage, the Board
`chose to primarily address prior art relevant to that
`limitation to determine whether Illumina had proven that
`the addition rendered the claims as a whole nonobvious.
`The Board did not analyze the obviousness of using a
`disulfide linkage in SBS in isolation, however; the original
`claims provided a backdrop for the Board to find that one
`of skill in the art would have reasonably expected to
`succeed in using a linker with a disulfide linkage as
`claimed. The prior art taught the use of linkers contain-
`ing disulfide linkages for attaching a label to a nucleotide,
`as well as the desirability of simultaneously removing
`labels and protecting groups, in DNA sequencing meth-
`ods. One of skill in the art would have been motivated to
`use a commercially available linker to attach a label to a
`nucleotide that also could be removed when removing the
`protecting group, and thus would have been motivated to
`modify SBS prior art with a disulfide linkage as claimed.
`The heightened standard that Illumina decries is instead
`properly Illumina’s burden to show nonobviousness, proof
`that one of skill in the art would not have a reasonable
`expectation of success in using a disulfide linkage. Illu-
`mina simply failed to sufficiently elucidate grounds upon
`which the use of a disulfide linkage for SBS, particularly
`such a linkage cleavable under the same conditions as a
`
`

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`ILLUMINA CAMBRIDGE LTD. v. INTELLIGENT BIO-SYSTEMS
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`protecting group, would not have been obvious in view of
`the prior art.
`Importantly, Illumina’s arguments rely on the idea
`that one of skill in the art would not have used a linker
`with a disulfide linkage—for a desired combination in
`which the label and protecting group would be cleaved in
`identical conditions—because disulfide linkages did not
`appear to have sufficiently high cleavage efficiency to
`match the supposed minimum cleavage efficiency of
`protecting groups for SBS. The proposed substitute
`claims do not require that the linker and the protecting
`group be cleaved at the same efficiency rates, however,
`only that they are cleavable under the same conditions.
`The Board alluded to this by finding that Illumina had
`not met its burden to show that identical conditions could
`not have been selected; the implication being that nonob-
`viousness might have been supported by evidence that
`one of skill in the art would not have expected there to be
`any set of conditions in which a disulfide linkage has
`lower cleavage efficiency than a protecting group and is
`still suitable for SBS.
`Although Illumina provided an expert declaration
`stating that the prior art did not provide an expectation
`that disulfide cleavage conditions would cleave a protect-
`ing group with greater than 90% efficiency, the claims
`also do not require that the protecting group be cleaved at
`greater than 90% efficiency, much less that the linker also
`be cleaved at such efficiency. Nor do the claims limit the
`protecting group to one also involving a disulfide bond,
`which would inherently link its efficiency rate to the
`cleavage efficiency of the linker. We are not persuaded by
`Illumina’s argument that one of skill in the art would not
`have been motivated to use a disulfide linkage as claimed,
`because the prior art does not expressly disclose greater
`than 90% cleavage efficiency of disulfide linkages.
`
`

`

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` ILLUMINA CAMBRIDGE LTD. v. INTELLIGENT BIO-SYSTEMS
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`Regardless, the Board found that even if that cleavage
`efficiency were required of the linker, Illumina had not
`met its burden to show that one of skill in the art would
`not have reasonably expected to achieve greater than 90%
`efficiency. The prior art taught that one of skill in the art
`could reasonably have expected to increase the cleavage
`efficiency of disulfide linkages by simple experimentation.
`Moreover, as the Board noted, it was not critical for the
`prior art to achieve higher cleavage efficiency of disulfide
`bonds. The lack of prior art disclosures of actually achiev-
`ing higher efficiency yields does not render the teachings
`about increasing efficiency irrelevant; obviousness is not a
`question of novelty. See EWP Corp. v. Reliance Universal
`Inc., 755 F.2d 898, 907 (Fed. Cir. 1985) (“A reference must
`be considered for everything it teaches by way of technolo-
`gy and is not limited to the particular invention it is
`describing and attempting to protect.”). Expert testimony
`in the record also supports the Board’s finding that one of
`skill in the art would have reasonably expected to achieve
`increased efficiency for a disulfide linkage. Substantial
`evidence thus supports the Board’s findings that several
`prior art references taught the additional limitations of
`the proposed substitute claims and that one of skill in the
`art would have had a reasonable expectation of success in
`combining the prior art to obtain the claimed invention.
`The Board also did not err in finding that Illumina’s
`evidence of unexpected results relative to the prior art
`was insufficient. Illumina failed to show that the unex-
`pected results obtained were due to the claimed nucleo-
`tide rather than differences from the prior art, e.g., the
`cleavage reagent used or other experimental conditions,
`or a latent property of the disulfide linkage. The Board
`therefore did not err in finding that Illumina had not met
`its burden to prove that the substitute claims were pa-
`tentable over the prior art.
`
`

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`ILLUMINA CAMBRIDGE LTD. v. INTELLIGENT BIO-SYSTEMS
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`CONCLUSION
`We have considered the remaining arguments and
`conclude that they are without merit. Because substan-
`tial evidence supports the Board’s determination that
`Illumina failed to meet its burden in showing that the
`proposed substitute claims in both patents are patentable
`over the prior art of record, we affirm.
`AFFIRMED
`
`

`

`Case: 15-1123 Document: 49-3 Page: 1 Filed: 01/29/2016
`UNITED STATES COURT OF APPEALS
`FOR THE FEDERAL CIRCUIT
`
`Questions and Answers.
`
`Petitions for Panel Rehearing (Fed. Gir. R. 40)
`and
`Petitions for Hearing or Rehearing En Bane (Fed. GiL R. 35)
`
`Q. When is a petition for paoel rehearing appropriate?
`
`merit~ panel has followed circuit precedent:, which the party
`seeks to have overruled by the court en banco
`
`Q. How frequenUy are petitions for panel rehearing granted
`by merits panels or petitions for rehearing en bane granted
`by th~ cout1?
`
`A The data regarding petitions fof panel reheanng since
`1962 shows that merits panels granted some relief ill only
`three percent of the petitions filed. The relief granted'usually
`involved only minor corrections of factual misstatem~nts,
`rarely resulting in a change of outcome in the decision.
`
`En banc petitions have been granted less frequently.
`Historically, the court has initiated en bane review in a few
`of the appeals decided en bane since 1982.
`
`Q. Is it necessary to have filed either of these petitions
`before filing a petition for certioran· in the U. S. Supreme
`Court?
`
`A. No. All that is needed is a final judgmenl of the Court of
`Appeals.
`
`A. Petitions for panel r~nearingar~.rafeIYroilsidered
`meritorious. Consequently,itisei3~ie~ttofirstanswer when
`a petition tor panel reh~aiingis nPt;3~p"oPriate.A petitiOI1
`for panel rehearing' shoiJld not be .~~~dlorea:r!;Jue issues
`already briefed and orally arglJ;c1.lf ap'arty fail7d to..
`.
`persuade the court onarissu¢.}Q.t.t<~~r?lin~~nc~.they do
`not get a second chanc:;e. TtiiS i~:~§P~ib.i~.I~:SO Wheh the .
`court has entereda jUdg(f)erlt.?tflmt,rr@i)~~\N'thC?utopinion
`under Fed. Cir. R 36,a\adj~Rr3,§iti(j[iqlJhis ~~Jure is used
`only when the appellantlP~titiO.n~r/:l.~"~~t!~r1Yfaiiedlo
`raise
`any issues in the appealthai}~9.Q1r~.ah:~pipiont()be
`written in support of thetourt'?juqgrp~fj~pf affirmance.
`
`Q.
`
`\lVhen is a petition for reheanng enhanc appropriate?
`
`A En banc decisions are eXlraofl:jillaryoccuiTeflces. To
`properly answer 'theque~tion~one n'lus[trstunaers'taria the
`responsibility of ,a three~judge (llerits panel of the court.. The
`panel is charged with deciding individual appeals according
`10 the law of the circuit as establishedin the court's
`precedential opinions. While each mentspanel is
`empowered to enter precedential opihibllS, the ultimate duty
`of the court en banc is to set forth the law of the Federal
`Circuit, which m~rits panels are obliged to follow.
`
`Thus, as a usual prerequisite, a merits panel of the court
`must have entered a precedential opinion in support of its
`jUdgment for a petition for rehearing en banc to l?e
`appropriate. In addition, the party seeking rehearing en
`banc must show that either the merits panel has failed to
`follow decisions of the Supreme Court of the United States
`or Federal Circuit precedential opinions, or that ~he
`
`

`

`Case: 15-1123 Document: 49-4 Page: 1 Filed: 01/29/2016
`
`UNlTED STATES COURT OF APPEALS FOR THE FEDERAl CrnCUJT
`
`!NFORMATlON SHEET
`
`FILING A PETITION FOR A WRIT OF CERTJORARJ
`
`There is no automatic right of appeal to 1he Supreme Court of the United States from judgments
`of the Federal Circuit. You must file a petition for a writ of certiorari wrucb the Supreme Court
`wi)) gIant only when there are compe))ing reasons.
`(See Rule I 0 of the Rules of the Supreme
`Court of the United States, hereinafter called Rules.)
`
`Time. The petition must be filed in 1he Supreme Court of the United S1.Lltes within 90 days of
`the entry of judgment in tills Court or within 90 days of the denial of a timely petition for
`rehearing. The judgment is entered on the day the Federal Circuit issues a fmal decision in your
`rThe time does not run from the issuance of the mandate, which bas no effect on the righ1
`case.
`to petition.] (See Rule J3 of the Rules.)
`
`Fees. Either the $300 docketing fee or a motion for leave to proceed in forma pauperis with an
`affidavit in support thereof must accompany the petition. (See Rules 38 and 39.)
`
`Authorized Filer. The petition must be filed by a member of the baJ of the Supreme Colli1 of
`the United States or by the petitioner representing himself or herself.
`
`Format oj a Petition. The Rules are very specific about the order of the required informatIon
`(See Rule 14.) Rules 33 and 34
`and should be consulted before you start drafting your petition.
`should be consulted regarding type size and font, paper size, paper weight, margins, page l:iJnj1S,
`~cover: ~etfCc::-.- - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - - -
`
`Number of Copies. Forty copies of a petition must be filed unJess the petitioner is proceeding in
`forma pauperis, in wruch case an original and ten copies of the petition for writ of certiorari and
`of the motion for leave to proceed in forma pauperis. (See Rule l2.)
`
`'''here to File. You must file your documents at the Supreme Court.
`
`Clerk
`- - - - -- - --Supreme Cour1- of-the United-States
`] First Street, NE
`Washing1on, DC 20543
`(202) 479-3000
`
`No documents are filed 311he Federal Cirelli. and u"'ie Federal Circui~ provides no ir..fGnna130n to
`the Supreme Court unless the Supreme Court asks for the infonnation.
`
`Access to the Rules. The current rules can be found in Title 28 of the United States Code
`Annotated and other legal publications available in m,my public libraries.
`
`R ~vjsed December) 6. ) 999
`
`