On Remand, PTAB Finds Travers Prior Art Not Enabled and Again Rejects Guardant's Challenge to UW's '127 Patent

The proceeding

IPR2022-00817 is captioned Guardant Health, Inc. v. University of Washington. The Board's Final Written Decision on Remand (Paper 59, October 14, 2026) was written by Administrative Patent Judge Zhenyu Yang for a panel of Judges Sheridan K. Snedden, Yang, and Timothy G. Majors. It concludes that Guardant "has not shown the unpatentability of claims 1-30 by a preponderance of the evidence" (Paper 59 at 43). The challenged grounds were obviousness of claims 1-10, 12, and 15-28 over Travers '075 and Travers 2010; claim 11 adding NEB Expressions; and claims 13, 14, 29, and 30 adding McCloskey (Paper 59 at 2-3, 42-43).

The Board's enablement analysis

The Board treated the Federal Circuit's mandate as asking "whether Travers '075 enabled RCR amplification followed by SMRT sequencing," decided it on the existing trial record, and declined to authorize additional briefing (Paper 59 at 4-5). It started from the presumption that prior art patents and publications are enabled, citing Amgen, Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313 (Fed. Cir. 2003), and In re Antor Media Corp., 689 F.3d 1282 (Fed. Cir. 2012), and held that UW had "sufficiently rebutted the presumption" (Paper 59 at 4, 15-16). The Board credited UW's evidence, including its expert Dr. Rahul Satija, that rolling circle replication concatemers present technical problems for PacBio's SMRT sequencing, such as multiple primer and polymerase binding sites on each concatemer, and it noted that Guardant's Reply did not address UW's Wands-factor arguments (Paper 59 at 20-21, 40-41). It found that "neither Travers reference provides any direction or guidance on, or working example of, sequencing RCR concatemers with SMRT sequencing" (Paper 59 at 41). Applying Raytheon Technologies Corp. v. General Electric Co., 993 F.3d 1374 (Fed. Cir. 2021), it held that an obviousness case resting on a non-enabled reference fails when no other evidence supplies enablement (Paper 59 at 42).

The Board also rejected two arguments Guardant raised after remand. It held that UW's trial arguments, although framed as a combination of the two Travers references, remained relevant because Travers '075 itself teaches both steps, and it found that Guardant had waived an argument based on the prosecution of U.S. Patent 9,910,956 because that patent was not in the record and Guardant did not rely on it in its Reply (Paper 59 at 16-18). It did not reach the parties' dispute over objective indicia of nonobviousness (Paper 59 at 42 n.10).

The 2023 decision and the Federal Circuit remand

In its original Final Written Decision (Paper 47, October 10, 2023), a panel of Administrative Patent Judges John G. New, Zhenyu Yang, and Tina E. Hulse held that Guardant had not proven, by a preponderance of the evidence, that claims 1-30 of the '127 patent are unpatentable on obviousness grounds based on Travers '075 and Travers 2010, alone or combined with other references. According to the Federal Circuit, the Board found that Guardant had not shown a reason to combine, or a reasonable expectation of success in performing, rolling circle replication amplification followed by SMRT sequencing, and it did not reach whether Travers '075 enabled that sequence.

In Guardant Health, Inc. v. University of Washington, No. 2024-1129 (Fed. Cir. Jan. 23, 2026) (nonprecedential), Judge Stoll, writing for a panel of Chief Judge Moore and Judges Hughes and Stoll, held that the Board erred by requiring Guardant to show a motivation to combine and a reasonable expectation of success for amplification followed by sequencing, because paragraph 122 of Travers '075 expressly discloses those steps in that order in a single embodiment and the petition did not rely on modifying them. The court vacated the decision and remanded. It declined to decide UW's alternative argument that paragraph 122 of Travers '075 is not enabled, which the Board had not reached, and left that issue to the Board in the first instance.

Related district judgment

The '127 patent is asserted against Guardant in TwinStrand Biosciences, Inc. v. Guardant Health, Inc., No. 1:21-cv-01126 (D. Del.), in which TwinStrand and UW are co-plaintiffs. The Board's decision recites UW's notice that on August 21, 2026 the district court entered a Final Judgment against Guardant on validity and willful infringement of claims 24 and 30 of the '127 patent, the two claims tried to the jury, and on damages of $83.4 million based on the jury verdict (Paper 59 at 5, citing Paper 56). TwinStrand's October 15, 2026 announcement gives a larger figure, more than $245.2 million in damages, accrued royalties, and interest through May 2026, plus an ongoing 6% royalty through March 2033; that figure is TwinStrand's and was not checked against the Delaware docket. TwinStrand also says it holds an exclusive license to the '127 patent and that a reexamination of its U.S. Patent 10,287,631 remains pending.

What to watch next

Watch whether Guardant appeals the remand decision to the Federal Circuit; the decision notes that a party seeking judicial review must comply with 37 C.F.R. 90.2 (Paper 59 at 44). Watch the pending reexamination of the '631 patent and post-judgment proceedings in the Delaware case.