Log in or register
Share on LinkedInShare on LinkedIn

ARTICLE · 27 MARCH 2014

Successful Use Of Inter Partes Review To Cancel Claims Asserted In Parallel Litigation

Duane Morris LLP
Duane Morris LLP
Contributor
Explore more from Duane Morris LLP

In a trio of March 6, 2014 inter partes review (IPR) decisions, the Patent Trial and Appeal Board (PTAB) canceled patent claims related to next generation DNA sequencing technology, after Illumina, Inc. countered Columbia University’s patent infringement suit by successfully petitioning for IPR of claims in three of five of Columbia’s patents-in-suit.

United StatesIntellectual Property
Vicki Norton, Ph.D.
Vicki Norton, Ph.D.
Author LinkedIn connections

In a trio of March 6, 2014 inter partes review (IPR) decisions, the Patent Trial and Appeal Board (PTAB) canceled patent claims related to next generation DNA sequencing technology, after Illumina, Inc. countered Columbia University's patent infringement suit by successfully petitioning for IPR of claims in three of five of Columbia's patents-in-suit. 

The decisions illustrate the utility of the new IPR process before the PTAB, implemented under the America Invents Act (AIA), as a parallel venue in which patent litigation defendants can challenge the patentability of claims asserted against them in litigation, more expeditiously and less costly than in court proceedings.  

The three patents, U.S. Patent Nos. 7,713,698 (the '698 patent), 7,790,869 (the '869 patent), and 8,088,575 (the '575 patent), were three of five patents-in-suit at issue in Trustees of Columbia University & Intelligent Biosystems v. Illumina, Inc., 1:12-cv-00376-UNA, pending in federal court

We operate a free-to-view policy, asking only that you register in order to read all of our content. Please login or register to view the rest of this article.

Register for freeORLog in

Related Articles

Legal Intelligence Newsletters: sign up for the latest legal and regulatory news on your chosen topics

Read more about

Related Comparative Guides

See more popular content from

Article

UMG v. DistroKid: When AI Becomes A Consumer Protection Issue

Universal Music Group's lawsuit against DistroKid raises a critical question about AI disclosure in consumer markets: when does the use of artificial intelligence become material information that must be disclosed to consumers? The case centers on allegations that DistroKid distributed mass-generated AI music while creating the impression it was created by legitimate human artists, potentially violating existing consumer protection laws even without specific AI disclosure requirements.
United StatesIntellectual Property
Frankfurt Kurnit Klein & Selz PC
Frankfurt Kurnit Klein & Selz PC
Article

PTAB/USPTO Update - October 2026

The USPTO has released new templates and guidance for AIA trial proceedings, announced key appointments including a Chief AI Officer, and published updated procedures for patent applications and subject matter eligibility declarations. Director Squires delivered multiple addresses emphasizing the constitutional importance of intellectual property rights while the agency expanded its community engagement efforts and international collaboration through WIPO's Global IP Assignment Platform pilot program.
United StatesIntellectual Property
WilmerHale
WilmerHale
Article

The Trademark Scam Field Guide: Look-Alike Filing Sites, Fake USPTO Notices, And How To Get Out If You’ve Been Caught

A business decides to file a trademark. Someone on the team searches for a familiar online legal-services brand, clicks the first result, and lands on a site with a similar-sounding name, a polished design, five-star reviews, and a low flat fee. The application gets filed. Months later the business learns the “service” was not who they thought it was, the filing was signed by someone with no authority to sign it, and the USPTO has suspended the application along with hundreds or thousands of others from the same shop.
United StatesIntellectual Property
Harness IP
Harness IP
Article

Is This Real? Navigating AI Impersonation Under New And Existing Laws

Is this AI-generated, or is it real? As generative AI tools have become increasingly capable of creating realistic images, videos, and audio, they have also made it easier to impersonate real people without their consent. In response, states are increasingly adopting laws that impose civil and criminal liability for certain AI-generated content that replicates an individual’s identity, likeness, voice, or other personal attributes.
United StatesIntellectual Property
Wiley Rein
Wiley Rein
Article

DHS Proposes $70,000 And $30,000 Fees For F-1 Optional Practical Training

The Department of Homeland Security has proposed a controversial new rule requiring SEVP-certified schools to pay substantial fees—$70,000 for a student's first Optional Practical Training recommendation and $30,000 for each subsequent OPT application, including STEM extensions. With only a 30-day comment period and potential annual costs reaching up to $16.5 billion across nearly 2,500 affected institutions, the proposed regulation is expected to face significant legal challenges if finalized.
United StatesImmigration
Duane Morris LLP
Duane Morris LLP
Article

SEC Proposes Rule Amendments To Expand Retail Access To Private Markets

The SEC has proposed sweeping amendments to expand retail investor access to private market strategies, including changes to performance-based compensation rules for registered investment advisers and modernization of the interval fund framework. The proposals also explore new credential-based pathways for individuals to qualify as accredited investors, potentially opening private offerings to a broader pool of eligible participants.
United StatesFinance and Banking
Duane Morris LLP
Duane Morris LLP