In two separate IPR petitions Ariosa alleged that all claims of Verinata’s patent would have been obvious in 2010 based on three prior-art references. The PTAB instituted review but ultimately found that Ariosa failed to carry its burden to prove invalidity. Among other things, the Board criticized a second declaration that Ariosa submitted, which relied on a brochure that described nucleotide sequencing using a commercially available instrument. The Board stated:
This testimony, in effect, replaces [teachings of two of the cited references] with [teachings of the brochure], but neither Petitioner nor [the declarant] explains why [the brochure] could not have been presented as part of the asserted ground of unpatentability in the first instance with the Petition. Therefore we accord this aspect of [the declarant’s] testimony no weight. (emphasis added)
The Federal Circuit noted that Ariosa’s Petitions and opening declarations cited the brochure to explain the knowledge of skilled artisans at the time. The Court found the PTAB’s decision unclear as to whether the PTAB had refused to consider the brochure for any reason at all, including for what it showed about the background knowledge of a skilled artisan, which would have been legal error. Thus, the Court vacated and remanded for clarification, specifically noting that the PTAB need not take new evidence or even accept new briefing; it was free to control the proceeding on remand as it saw fit to address the Court’s concern.
Ariosa had also challenged the PTAB’s refusal to consider portions of one of the prior-art references that the PTAB found Ariosa had cited only in its Reply submissions. The Federal Circuit found no error in the PTAB’s “rejection of Ariosa’s reliance, it its Reply submissions, on previously unidentified portions of a prior-art reference to make a meaningfully distinct contention.”
Ariosa Diagnostics v. Verinata Health, Inc., Nos. 15-1215; -1226 (Fed. Cir. Nov. 16, 2015)