STANFORD v. CHINESE UNIVERSITY OF HONG KONG

STANFORD v. CHINESE UNIVERSITY OF HONG KONG, Appeal No. 2015-2011 (Fed. Cir. June 27, 2017). Before O’Malley, Reyna and Chen.  Appealed from N.D. Cal. (Judge Illston).  (Written Description)

Background:

In this case, in February 2007, Stanford patented a method for detecting genetic abnormalities in fetuses by analysis of the mother’s serum.  The claims recited detection of “targeted sequences” by obtaining maternal tissue containing both maternal and fetal genetic material and measuring the presence of different target sequences.

Then, in 2008, CUHK filed an application for a random sequencing method that does not require the detection of specific target sequences.  In response to CUHK’s application, Stanford amended claims of a pending continuation application, which later became a patent, to cover random sequencing methods.  This caused an issue as to whether there was support for these claims.

As a result, both parties filed requests for interferences to determine who invented the random sequencing method.  CUHK argued that the Stanford patent was invalid because it lacked written description for the random sequencing.  Stanford countered that the random sequencing is disclosed in the specification.  The PTAB agreed with CUHK’s argument, primarily on the basis of expert testimony.  Stanford appealed to the Northern District of California, who had to pass the appeal to the Federal Circuit due to a jurisdictional issue.

Issue/Holding:

Did the PTAB err in relying on the expert testimony to hold that the Stanford patent lacked sufficient written description for random sequencing?  (continue reading)

Summary by:  Nat McQueen

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