United States: Statements And Arguments In IPR Proceedings Challenging Unrelated Patents May Impact A District Court's Claim Construction Analysis

Executive Summary

In DNA Genotek Inc. v. Spectrum Solutions, LLC, ¹ DNA Genotek asserted U.S. Patent No. 10,619,187 ("the '187 patent") against Spectrum Solutions ("Spectrum"). The patent is directed to compositions and methods for "preserving nucleic acids at room temperatures for extended periods of time." ² The parties disputed the proper claim construction for the "preserving/preserve" and "reagent compartment" limitations from claim 1 of the '187 patent.

In construing the two limitations, the District Court for the Southern District of California cited arguments and statements from previous IPR proceedings involving the two parties that challenged patents unrelated to the '187 patent. The Court did so to rebut Spectrum's arguments for the first term and DNA Genotek's arguments for the second term.

Detailed Discussion

For the "preserving/preserve" terms, Spectrum alleged that the terms were indefinite for failing to specify (i) a time period or temperature for the claimed preserving and (ii) how to determine if the nucleic acid has been preserved. ³ The Court rejected Spectrum's arguments, relying in part on Spectrum's own evidence presented during an IPR challenging an unrelated patent. In that proceeding, Spectrum asserted as prior art a PCT publication from the same family as the '187 patent, which included a similar "preserving/preserve" limitation. It also submitted an expert declaration that "app[lied]" this limitation from the PCT publication to show that the unrelated patent was invalid. Based on this, the Court concluded that a POSA would have understood the "preserving/preserve" term with reasonable certainty, undermining Spectrum's indefiniteness position. ⁴

The parties also "disputed whether the claimed 'reagent compartment' ... must specifically be [located at] the containment vessel." ⁵ DNA Genotek argued for the plain and ordinary meaning alleging that the claims did not restrict the reagent compartment to a specific location. Spectrum asserted otherwise, arguing the reagent compartment must be in the containment vessel given DNA Genotek's "express[] disavow[al] [of] claim scope" during prosecution. ⁶ The Court sided with Spectrum. ⁷ In doing so, the Court relied on Spectrum's "highly persuasive extrinsic evidence" pointing to IPR proceedings challenging another DNA Genotek patent, which was unrelated to the '187 patent. This IPR proceeding also involved prior art grounds relying on the PCT publication from the '187 patent family. ⁸ During the IPR proceeding, DNA Genotek asserted validity arguments describing two "very different" prior art devices: one of which was disclosed in the related PCT publication and had a reagent compartment located in the containment vessel; and the other of which was disclosed in another prior art reference and included a reagent at a location outside the containment vessel. The Court found that DNA Genotek's statements described the scope of the invention disclosed in the PCT publication, which was the same as the '187 patent invention and, thus, relevant to claim construction. ⁹

Takeaways

This case shows the importance of considering whether previous statements or arguments made in IPRs challenging related or unrelated patents may impact or undermine arguments made in district court litigation.

Footnotes

1. DNA Genotek Inc. v. Spectrum Solutions LLC, No. 3:21-CV-00516-RSH-DDL, 2022 WL 17331255 (S.D. Cal. Nov. 29, 2022).

2. Id. at 2-3.

3. Id. at 13-18.

4. Id. at 18-19.

5. Id., at 31.

6. Id., at 32.

7. Id., at 33-40.

8. Id., at 40-41.

9. Id.¸ at 41-44.

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