On March 7, 2024, the PTAB denied institution in 10x Genomics, Inc. v. President and Fellows of Harvard College, IPR2023-01299, Paper 15 (PTAB Mar. 7, 2024) (“Decision”). The PTAB denied institution on two separate grounds: (1) the Petitioner, 10x Genomics, did not properly assert a Section 112(f) construction in the alternative in its Petition under 37 C.F.R. § 42.104(b)(3); and (2) the circumstances of a parallel U.S. District Court of Delaware proceeding called for a discretionary denial under 35 U.S.C. § 314(a) under Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) (“Fintiv”).

The docket for the parallel proceeding can be found at 10X Genomics, Inc. et al v. Vizgen, Inc., Docket No. 1:22-cv-00595 (D. Del. May 3, 2022). The counterclaim for infringement relevant to the patent in the Petition was filed August 30, 2022. Decision at 2.

The patent at issue, 11,098,303 B2 (“the ’303 patent”), is directed to a method for determining nucleic acids by exposing a sample to a plurality of nucleic acid probes. Decision at 3. Independent claim 1 of the ’303 patent recites “an error detection or correction system.” Decision at 5. In the parallel proceeding, the Petitioner argued that this phrase is governed by 35 U.S.C. § 112(f) and asserted a corresponding construction. Decision at 9. Vizigen, a co-plaintiff in the parallel proceeding, argued that “an error detection or correction system” is not governed by Section 112(f) and, therefore, “[no] construction [is] necessary.” Id. The district court held that “an error detection or correction system” is governed by Section 112(f) and adopted Petitioner’s construction with a slight modification. Decision at 10.

Before the Board, the Petitioner took the opposite position and asserted “solely for the purposes of this IPR, 10x applies [Vizigen’s] interpretation of the ’303 patent claims from the concurrent litigation.” Decision at 12-13. The Petitioner did not explain in the Petition why Section 112(f) did not apply, nor did it provide a Section 112(f) construction in the alternative. The Patent Owner argued that Petitioner’s claim construction arguments were insufficient under 37 C.F.R. § 42.104(b)(3). Decision at 8.

Rule 104(b)(3) requires that a petition must identify in the specification the structure associated with each function in Section 112(f) means-plus-function claims. 37 C.F.R. § 42.104(b)(3). The Consolidated Trial Practice Guide instructs that under 104(b)(3) “[w]here claim language may be construed according to 35 U.S.C. § 112(f), a petitioner must provide a construction” and “[a] petitioner who chooses not to address construction under Section 112(f) risks failing to satisfy the requirement of 37 C.F.R. § 42.104(b)(3).” Decision at 8.

The PTAB denied institution and held that the Petitioner “failed to satisfy its burden to set forth ‘[h]ow the challenged claim is to be construed’” under 37 C.F.R. § 42.104(b)(3). Decision at 13. The PTAB explained that Petitioner “should have provided reasons why the limitation is not governed by Section 112(f) or provided an express construction of the claim phrase.” Id. And because the Petitioner instead adopted Vizigen’s argument that “no construction [is] necessary”—”while knowing the construction was under dispute under Section 112(f)”—the Petition was not sufficient and the PTAB denied institution. Id.

Separately, the PTAB discretionally denied institution under Section 314(a) and the six Fintiv factors for determining whether a petition should be discretionally denied based on parallel proceedings. Decision at 14.

The PTAB explained all six factors favored denial because: (1) The district court is unlikely to grant a stay and has denied a motion for a stay; (2) Trial will occur at the very least one month and most likely five months before a written decision is due; (3) Both parties and the court have dedicated substantial resources to the proceeding; (4) The Petitioner asserted the same prior art and invalidity arguments in both proceedings; (5) The Petitioner is the counterclaim defendant; and (6) The Petitioner is unlikely to prevail on the merits because the Petitioner failed to offer a construction under Section 112(f). See Decision at 16-21.

The PTAB also noted that the Petitioner failed to file a Sotera stipulation and waited to file its Petition until a year after it was served and nine months after receiving initial infringement contentions—both of which weighed in favor of denial. Decision at 18, 20.

Takeaway:

Petitioners should ensure to include alternative arguments regarding claim construction—especially terms that could be governed by Section 112(f). This decision also serves as a reminder that petitioners should move quickly relative to parallel district court proceeding timelines when deciding to file an IPR.