PTAB Grants institution of Inter Partes Review for Digital Amplification Patent

March 19, 2018 – Ambry Genetics Corp. had filed a petition for inter partes review against Patent Owner Johns Hopkins University related to U.S. Patent 7,824,889 for a method of diagnostic genetic analyses. The patent at issue in IPR 2017-02093 is a method of “digital amplification” that allows “methods for determining the presence of a selected genetic sequence in a  population of genetic sequences.”  Ex. 1001, 2:3-5. Ambry Genetics challenged claims 1 and 8 of the patent on the ground of anticipation. On March 19, 2018, the PTAB granted an inter partes review, persuaded that Petitioner showed a reasonably likelihood that it would prevail in showing claims 1 and 8 are anticipated by references Sykes and/or Chiang.

The ’889 patent was also asserted in litigation styled Esoterix Genetic Laboratories, LLC and The Johns Hopkins University v. Myriad Genetics, Inc. and Myriad Genetics Laboratories, Inc., United States District Court for the Middle District of North Carolina, Case No. 1:16-cv-1112-WE-JEP, but that case has been dismissed. Pet. 2; Paper 4, 2.

The ’889 patent was also asserted in litigation styled Esoterix Genetic Laboratories, LLC and The Johns Hopkins University v. Life Technologies Corp, et al., Civil Action No. 1:12-cv-01173-CCE-JEP (MDNC). Paper 4, 2–3.

Petitioner also filed petitions for inter partes review of certain claims of related U.S. Patent No. 6,440,706 (IPR2017-02086); U.S. Patent No. 7,915,015 (IPR2017-02095); and U.S. Patent No. 8,859,206 (IPR2017- 02096). Pet. 2; Paper 4, 2.

By: Judy Kim