NOTE: This disposition is nonprecedential. 

## United States Court of Appeals for the Federal Circuit

2009-1253, -1260

APPLERA CORPORATION – APPLIED BIOSYSTEMS GROUP, Plaintiff-Appellant,

v. ILLUMINA, INC. and ST EPHEN C. MACEVICZ, Defendants-Appellees, and SOLEXA, INC., Defendant-Cross Appellant.

Edward R. Reines , Weil, Gotshal & Manges LLP, of Redwood Shores, California, argued for plaintiff-appellant. With him on the brief was Sonal N. Mehta . Of counsel on the brief was Kurtis D. MacFerrin , Life Technologies Corporation, of Foster City, California. Kevin M. Flowers , Marshall, Gerstein & Borun LLP, of Chicago, Illinois, argued for defendants-appellees and defendant-cross appellant. With him on the brief were Thomas I. Ross , Mark H. Izraelewicz , John R. Labbe , and Cullen N. Pendleton

. Appealed from: United States District Cour t for the Northern District of California Judge William H. AlsupNOTE: This disposition is nonprecedential. 

## United States Court of Appeals for the Federal Circuit

2009-1253, -1260 APPLERA CORPORATION – APPLIED BIOSYSTEMS GROUP, Plaintiff-Appellant,

v. ILLUMINA, INC. and ST EPHEN C. MACEVICZ, Defendants-Appellees, and SOLEXA, INC., Defendant-Cross Appellant.

Appeals from the United States District Cour t for the Northern District of California in case no. 07-CV-02845, J udge William H. Alsup.

__________________ _________ DECIDED: March 25, 2010

__________________ _________ Before LOURIE, GAJARSA, and MOORE, Circuit Judges

. MOORE, Circuit Judge

. Applera Corp. – Applied Biosystems Group (Applera) appeals the United States District Court for the Northern District of California’s denial of its motions for judgment as a matter of law or, alternativel y, for a new trial on ownership of U.S. Patent Nos. 5,740,341 (the ’341 patent), 5,969,119 (the ’119 patent), and 6,306,597 (the ’597 patent). Applera al so appeals the district cour t’s order denying its motions for judgment as a matter of law or, alternativ ely, for a new trial on validity of the ’119patent. Solexa, Inc., the assignee of the patents-in-suit, cr oss-appeals the court’s judgment, pursuant to summary judgment, that certain of Applera’s accused products did not infringe claim 1 of t he ’597 patent, and the co urt’s order, entered pursuant to stipulation by the parties, that under the court’s claim construction claim 1 of the ’597 patent was invalid. Fo r the reasons discussed below, we affirm

. BACKGROUND The district court set forth the backg round of this case and described the technology at issue in Applera Corp. – Applied Biosystems Gr oup v. Illumina, Inc. , No. 07-2845, 2008 WL 501391, at **1-3 (N.D. Cal. Feb. 21, 2008). We therefore confine ourselves to those facts relev ant to the resolution of this appeal. Dr. Stephen Macevicz, the sole inventor listed on the patents-in-suit, is a patent attorney with a Ph.D. in biophysics. While working as in-house counsel at DNAX Research Institute, Dr. Macevi cz developed a method for sequencing DNA that uses the hybridization of mixed oligonucleot ide probes to target strands of DNA. He received U.S. Patent No. 5,002,867 (t he ’867 patent) on this invention in 1991. In 1992, Dr. Macevicz began working as in -house patent counsel at Applera. When he joined Applera, Dr. Macevicz si gned an Employee Inv ention Agreement (EIA) requiring him to assign to Applera any inventions that he developed during his employment at Applera unless certain conditions were met. At that time, he offered to sell Applera his ’867 patent, but Appler a declined the offer. Ownership rights to the ’867 patent are not at issue here. In 1993, Dr. Macevicz agreed to prosecut e a patent application for Dr. Sydney Brenner, a subsequent Nobel Priz e winner not affiliated with Ap plera. At that time,

2009-1253, -1260 2Dr. Macevicz was still employ ed by Applera, however, A pplera permitted its patent attorneys to take on outside work. Dr. Macevicz prosecuted Dr. Brenner’s patent application on his own time, not as part of his responsibilities for Applera. Dr. Brenner’s invention related to a new me thod of sequencing DN A based on repeated rounds of ligation and cleavage of oligonucleotide probes. See U.S. Patent No. 5,552,278 (“DNA Sequencing by St epwise Ligation and Cleavage”). In 1994, while continuing to work fo r Applera, Dr. Ma cevicz developed a method of sequencing DNA that, similar to Dr. Brenner’s met hod, used repeated rounds of ligation and cleava ge of oligonucleotid e probes. Dr. Macevicz described his inventions in a personal laboratory notebook and us ed his home computer to prepare a patent applicati on. This application eventually led to the patents-in-suit. Dr. Macevicz did not tell Applera about his in ventions or his pat ent application. In 1995, Dr. Macevicz left Applera and joined Lynx Therapeutics (Solexa) 1 as Vice President of Intellect ual Property. Solexa was in terested in developing Dr. Brenner’s ligation-and-cleavag e DNA sequencing technique and hired Dr. Macevicz in part because of his role prosecuting Dr. Brenner’s patent. Solexa acquired Dr. Brenner’s patent as well as the patents-in-suit. Sole xa approached Applera about the opportunity to develop a product bas ed on Dr. Brenner’s ligation-and-cleavage technology. At that time, Applera marketed a DNA analyzer based on “Sanger” sequencing technology—technology developed in the 1970s. Applera declined the

1 In 2005, Lynx Therapeutics acquired Solexa, Inc. and the company became known as Solexa. In 2007, Illu mina acquired Solexa. For simp licity, Lynx and Illumina are referred to herein as Solexa.

2009-1253, -1260 3opportunity to develop Dr. Brenner’s technol ogy, reasoning that it was “far too expensive” and “complex” and thus not a “via ble commercial product” for Applera. In 2006, Applera acquir ed Agencourt Personal Genomics (Agencourt), a company that developed a ligation- and-cleavage type next-generation DNA sequencing technology. Appler a then developed its SOLiD TM System DNA sequencing instruments, which are the focus of Solexa’s infringement contentions. Applera filed the present declaratory judgment action against Dr. Macevicz and Solexa, raising issues of ownership , noninfringement, and invalidity of the patents-in-suit. The court and the parties narrowed the issues eventually presented to the jury. See, e.g. , Applera , 2008 WL 501391 (construing claim terms); Applera Corp. – Applied Biosystems Group v. Illumina, Inc. , No. 07-2845 (N.D. Cal. Aug. 22, 2008) (granting summary judgment that certain of Applera’s products did not infringe the ’341 and ’597 patents); Joint Sti pulation and Order Regar ding Infringement and Invalidity of the ’5 97 Patent, Applera , No. 07-2845, D.I. 402 (N.D . Cal. filed Jan. 26, 2009). The court conducted a two-phas e jury trial. In Phase I, the jury returned a verdict for Dr. Macevicz and Solexa on patent ownership. In Phase II, the jury determined that claim 1 of t he ’119 patent was not invalid for obvious ness but that it was not infringed. The cour t denied the parties’ post-tr ial motions challenging the jury verdict. Applera appeals with respect to ownership and the validity of the ’119 patent. Solexa cross-appeals the court’ s order concerning invalidi ty and its judgment of partial noninfringement of the ’597 patent. We have jurisdiction pursuant to 28 U.S.C. § 1295(a).

2009-1253, -1260 4DISCUSSION We apply the law of the regional circuit when reviewing the denial of a motion for JMOL or for a new trial. Z4 Techs., Inc. v. Microsoft Corp. , 507 F.3d 1340, 1346- 47 (Fed. Cir. 2007). “In the Ninth Circuit, the court of appeals reviews a district court’s denial of a motion for JMOL de novo. The test is whether the evidence, construed in the light most favorable to the nonmoving party, permits only one reasonable conclusion, and that conclusion is c ontrary to that of the jury. A jury’s verdict must be upheld if supported by subs tantial evidence.” Re volution Eyewear, Inc. v. Aspex Eyewear, Inc. , 563 F.3d 1358, 1370 (Fed. Cir. 2009) (internal citations omitted). “In the Ninth Cir cuit, the denial of a motion fo r a new trial is reviewed for an abuse of discretion.” Id. at 1371. I. Ownership Applera asserts that the jury improper ly determined that Dr. Macevicz could keep his inventions under hi s employment contract, the EIA. The EIA required Dr. Macevicz to assign to Applera any patent rights for inventions developed during his employment at Applera unless: (1) the invention was developed entirely on his own time; (2) “no equipment, supplies, facility, or trade secret of the Company was used in its development;” and (3) “(i) it does not relate to the business or actual or demonstrably anticipated research or development of the Compan y, or (ii) it does not result from any work perform ed by [him] for the Company.” Following trial, the jury indicated by spec ial verdict that Dr. Macevicz’s inventions meet these three exc eption criteria. Applera moved for JMOL or, in the alter native, for a new trial. The district court concluded that ample evidence supported the jury ’s verdict and noted that

2009-1253, -1260 5Applera presented inconsistent trial themes. The court further determined that the jury’s verdict was not so far against the we ight of the evidence as to warrant a new trial. The court noted that it allowed Applera to put in undisclosed evidence and to pursue a last-minute theory based on Dr . Macevicz’s notebook and “the supposed filching of company files. ” Applera Corp. – Applied Biosystems Group v. Illumina, Inc. , No. 07-2845, slip op. at 4 (N.D. Cal. Mar. 6, 2009) (denia l of JMOL). It concluded that “[h]aving lost fair and square, the losing si de must simply accept the jury’s verdict and move on.” Id. at 4. Thus, the district court denied Applera’s motions. We agree with the district c ourt that substantial eviden ce supports the jury’s determination that Dr. Macevicz’s inventions meet all three except ion criteria. The first criterion is not in dispute; Dr. Macevicz offered unrefuted testimony that he made his invention at home on his own time. The second criterion concerns w hether Dr. Macevicz used any Applera equipment, supplies, facility, or trade secret in the devel opment of his inventions. Dr. Macevicz’s inventions existed only on paper—he did not perform any laboratory work, and he detailed his inventions in a laboratory notebook that he purchased himself. Thus, the only dispute concer ns whether Dr. Macevicz used any of Applera’s trade secrets. Appl era points out that in his ro le as a patent attorney at Applera, Dr. Macevicz lear ned of a confidential ligati on reaction developed by Dr. Steven Fung, an Applera scientist, and Dr. Ma cevicz referred to Dr. Fung’s ligation reaction in his notebook. But Dr. Macevicz’s patents do not disclose or rely on Dr. Fung’s reaction. And Dr. Macevicz explained to the ju ry that Dr. Fung’s ligation

2009-1253, -1260 6reaction was not part of his inventions; it merely represented one way to carry out his inventions. His notebook also describes an additional (nonconfident ial) method of making a phosphoramidat e linkage. When asked what Dr. Fung’s work on phosphoramidate formation had to do with his c onception, Dr. Macevicz testified: “It didn’t have anything to do with the concept ion. The conception was the cyclical reactions. The two examples on the page [showing two ways to carry out ligation] are just two ways to carry out the concept.” Dr. Macevicz further testified that his inventions originated from his earlier work on sequencing by hybridization and ideas that he obtained working on Dr. Brenner’s patent applica tion—not because of any work he performed at Applera. In light of Dr. Macevicz’s testimony, we conclude that substantial evidence supports the jury’s det ermination that Dr. Macevicz’s inventions met the second criterion of the EIA. The third criterion focuses on whether Dr . Macevicz’s inventi ons (1) relate to Applera’s business or (2) result from work performed by Dr. Macevicz for Applera. Dr. Macevicz argues that the plain language of the EIA r equires that his inventions satisfy only one of these two criteria. Applera argues that Dr. Macevicz’s inventions must satisfy both criteria, ci ting Cubic Corp. v. Marty , 185 Cal. App. 3d 438 (1986), for support. Contract interpretation is a matt er of state law, Rege nts of the Univ. of N. M. v. Knight , 321 F.3d 1111, 1118 (Fed. Cir. 2003), that we review de novo , Republic Sav. Bank, F. S.B. v. United States , 584 F.3d 1369, 1373 (Fed. Cir. 2009). In 1986, the California Court of Appeal construed a similar provision in § 2870 of the California L abor Code. Cubic , 185 Cal. App. 3d 438. The then-existing text of § 2870 read:

2009-1253, -1260 7Any provision in an employment agr eement which provides that an employee shall assign or offer to assi gn any of his or her rights in an invention to his or her employer sha ll not apply to an invention for which no equipment, supplies, facility, or trade secret information of the employer was used and which was dev eloped entirely on the employee’s own time, and (a) which does not relate (1) to the business of the employer or (2) to the employer’s actual or demonstrably anticipated research or development, or (b) which does not result from any work performed by the employee for the employer. Any provision which purports to apply to such an invention is to that extent against the public policy of this stat e and is to that extent void and unenforceable. Cal. Lab. Code § 2870 (West 1979). In Cubic , the appellant argued that where the other conditions of the statute were met, he need only satisfy condition (a) or (b)— but not both—to render the assignment provision unenforceable. Cubic , 185 Cal. App. 3d at 452. The court disagreed. It reasoned that under the appellant’s reading of the statute, “the language relating to the scope of the employer’s business becomes irrelevant; so long as the inventio n did not result from work the employee performed for the employer (and § 2870’s ot her conditions are met), the invention belongs to the employee, the scope of the employer’s business being irrelevant.” Id. Thus, the court concluded that unless both condition (a) and (b) were met, § 2870 would not render the agreement unenforceable. 2 Id. Applera argues that we s hould construe the EIA to require that Dr. Macevicz satisfy both conditions because it “availed it self of precisely the rights contemplated

2 Notably, the California legislat ure amended § 2870 in 1986 following the Cubic decision. The statute now clearly requires that an invent ion meet both criteria to render an agreement unenforceable. Cal. Lab. Code § 2870 (West 1986).

2009-1253, -1260 8by the California Labor C ode.” As an initial matter, we note that § 2870 does not confer any rights on employ ers—it protects employee s by rendering assignment agreements unenforceable to the extent they exceed permissi ble limits. Moreover, the assignment provision of the EIA does not incorporate § 2870 by reference. Tr. of Oral Arg. at 3:32-40, Applera , No. 09-1253, -1260 (Fed. Cir. Feb. 2, 2010). Thus, Applera did not “avail itself” of any ri ghts envisioned by this statute. We are not persuaded that the California Supreme Court would construe the EIA contrary to its plain language. Under t he plain language of the EIA, to retain his invention Dr. Macevicz need only show that his invention (1) does not relate to the business or actual or demonstrably anticipat ed research or development of Applera

or (2) does not result from any work performed by Dr. Macevicz for Applera. California law requires us to construe contractual obligations “most strongly against the party who caused the uncertainty to exist.” Cal. Civ. Code § 1654. Here, Applera drafted the EIA. We cannot agree with Applera th at the California Supreme Court would rewrite the EIA changing the “or” to an “and” in this case. We agree with the district c ourt that there is substa ntial evidence that Dr. Macevicz’s invention did not result from any work performed by Dr. Macevicz for Applera. Applera argues that Dr. Macevicz’s invention resulted “at least in part” from “his work as a patent attorney and day-t o-day close collaboration with [Applera] scientists.” Dr. Macevicz explained to the ju ry that “nothing at [Applera] contributed to [his] conception.” And as noted above, he testified that the inventions-in-suit originated from his work at DNAX and his work on Dr. Brenner’s patent application. Applera also argues that “ without his job as a patent attorney for [Applera], Dr.

2009-1253, -1260 9Macevicz would never have had the idea for his techniques in the first place.” Applera relies in part on Dr. Macevicz’s a cknowledgement that his general interest in DNA sequencing started after he began worki ng part-time as outside patent counsel for Applera, which occurred in 1985. Notably, Dr. Macevicz acknowledged that his interest in this area started after he began working for Applera—not as a result of his work for Applera. In fact, Dr. Macevicz test ified that his initial interest in sequencingby-hybridization (described in the ’867 patent ) originated from his work as a patent attorney at DNAX. Dr. Macevicz obtai ned a patent on his early sequencing-byhybridization invention in 1991, and he did not sign the EIA with Applera until 1992. Dr. Macevicz’s testimony provides ample s upport for the jury’s verdict. Because we conclude that substantial evidence s upports the conclusion that Dr. Macevicz’s invention did not result from any work he performed for Applera, we need not address whether Dr. Macevicz’s invention met the alternative conditi on that his work did not relate to Applera’s business. As substantial evidence supports the jury’s verdict that all three conditions of the EIA were met, we affirm the district court’s denial of Applera’s motion for JMOL. In light of the evidence, we also conclude that the district c ourt did not abuse its discretion in denying Applera’ s motion for a new trial.
II. Nonobviousness The jury determined that Applera failed to prove by clear and convincing evidence that claim 1 of the ’119 patent would have been obvious. We review the jury’s conclusion on obviousness de novo and its underlying factual findings for substantial evidence. Cordis Corp. v. Boston Sci. Corp. , 561 F.3d 1319, 1332 (Fed. Cir. 2009).

2009-1253, -1260 10Claim 1 reads: 1. An oligonucleotide probe of the formula: HO—(3’)(B)j(5’)—OP(=O)(O—)NH—(B)k-Bt* wherein: B is a nucleotide or an analog thereof; j is in the range of from 1 to 12; k is in the range of from 1 to 12, such that the sum of j and k is less than or equal to 12; Bt* is a labeled, nonextendable chain terminating moiety. The parties agree that an article by Mathias Mag et al., “Synthesis and Selective Cleavage of an Oligonucleotide Containi ng a Bridged Non-Chiral Internucleotide 3-Phosphoramidat e Linkage,” Tetrahedron Letters , 23(48): 7319-22 (1992) (Mag), discloses an oligon ucleotide of the type disclos ed in the claim, except Mag’s oligonucleotide lacked the label on the chain te rminating moiety, represented by an asterisk (*) in the claim. Mag discl oses the synthesis of an oligonucleotide with a phosphoramidate linkage and teaches that the phosphoramidate bond could be selectively cleaved (i.e., the phosph oramidate bond coul d be cleaved while leaving the other internucleotide linkages in ta ct). The last sentence of Mag refers to a potential application of the oligonucleotides: “The in corporation of a P-N linkage into a specific position of an ODN (primer) and the subsequent chemical cleavage can be applied for the nicking and manipulat ion of DNA, e.g., in a DNA probe based affinity assay.” Mag at 7322. The parties also agree that labeled ol igonucleotides were generally known in the art and, in particular, di sclosed in U.S. Patent No. 5,403,708 (Brennan). Thus the only disputed issue is whet her one skilled in t he art would have combined a label

2009-1253, -1260 11with the oligonucleotide disclosed in Mag. At trial, Applera presented the motivationto-combine issue as a credibilit y battle between the experts: [T]his question of invalidity comes down to a question of who you should believe? Dr. Backman [S olexa’s expert] . . .



### . Or Dr. Metzker [Applera’s expert] . . . . It’s Ba ckman and Metzker. And that’s why we have jury trials, bec ause this is what juries are really good at, sizing up people. J.A. 22456. Applera’s expert testifi ed that it was “very comm on” to label probes and that it would have been obvious to combi ne the label in Bren nan with the probe in Mag. Solexa’s expert testified that prior to Dr. Macevicz’s invention, one skilled in the art would not have had any reason to ma ke a probe that was both cleavable (as disclosed in Mag) and labeled (as disclosed in Brennan). The jury apparently found the testimony of Solexa’s expert more credi ble. We will not disturb its verdict. III. Claim Construction We review claim construction de novo . Cybor Corp. v. FAS Techs., Inc. , 138 F.3d 1448, 1455-56 (Fed. Cir. 1998) (en banc). The words of a claim are generally given their ordinary and customary meani ng as understood by a person of ordinary skill in the art in question at the time of the invention. Phillips v. AWH Corp. , 415 F.3d 1303, 1312-13 (Fed. Cir. 2005) ( en banc). “[T]he person of ordinary skill in the art is deemed to read the claim term not only in the context of the particular claim in which the disputed term appears, but in the c ontext of the entire patent, including the specification.” Id. at 1313. Solexa argues that the district court improperly construed certain terms of claim 1 of the ’597 patent. Cla im 1 of the ’597 patent reads:

2009-1253, -1260 121. A method for identifying a sequence of nuc leotides in a polynucleotide, the method comprising the steps of: (a) extending an initializing oli gonucleotide along the polynucleotide by ligating an oligonucleotide probe thereto to form an extended duplex ; (b) identifying one or more nucleotides of the polynucleotide; and (c) repeating steps (a) and (b) until the sequence of nucleotides is determined

. Solexa challenges the district court’s construction of each step. The construction of step (a) centers on whether each olig onucleotide probe must be ligated to an initializ ing nucleotide during repetiti on of the cycle or whether the oligonucleotide probe can be ligated to an extended duple x (an initializing probe that has already been extend ed by an oligonucleotide probe) . Solexa argues for the former construction. The district court determined that “step (a) includes an extension process, whereby, with each repetiti on, an additional probe is added to what is already there, so that the chain gets l onger and longer.” Applera , No. 07- 2845, D.I. 383, at 7 (N.D. Cal. Jan. 22, 2009) (Supplemental Claim Construction Order). The court further explained that “step (a) includes a scenario where the initializing oligonucleotide is originally attached to the polynucleotide and thereafter an ever-extending chain of probes is ligat ed thereto to form an ever-extending duplex, all beginning with the same in itializing oligonucleotide.” Id. Solexa argues that step (a) requires ligating a probe to an initializing nucleotid e—not an extended duplex—and therefore during each repeti tion of the cycle, a new initializing nucleotide must be laid down along the polynucleotide. The specification describes the in vention as “repeated cycles of duplex extension.” ’597 patent col.3 l.2. It further discloses that:

2009-1253, -1260 13such extension starts from a dup lex formed between an initializing oligonucleotide and the template. The initializing oligonucleotide is extended in an initial extension cycl e by ligating an oligonucleotide probe to its end to form an extended dupl ex. The extended duplex is then repeatedly extended by subs equent cycles of ligation

. Id. col.3 ll.3-9 (emphasis added). Thus, once an extended duplex is formed, it “is further extended in s ubsequent cycles.” Id. col.3 ll.15-16. This description of the invention is echoed throughout the specif ication, which repeatedly describes regenerating an extendable en d on the extended duplex to allow for successive cycles of ligation. See, e.g. , id. col.8 l.55-col.9 l.55 ( describing the regeneration extendable termini on extended duplexes to allow for succe ssive cycles of ligation); id. col.10 l.33-col.11 l.11 (describing schemes for extending an in itializing nucleotide or an extended duplex); id. col.16 ll.26-28 (stating that at the end of Example 1, the extendable duplexes have regen erated 3’-hydroxyls and ar e ready for the next cycle of ligation/extension/cleavag e). We agree with the dist rict court that step (a) includes repeated cycles of ext ension of extended duplexes. The district court dete rmined that the term “i dentifying one or more nucleotides” in step (b) “requires that at least one nucleotide be id entified during step (b), that is, its identity as an A, G, C, or T must be determined.” Supplemental Claim Construction Order at 7. The court also determined that step (c) requires that each identification step occur “withi n each cycle” (i.e., it is not sufficient to repeatedly add oligonucleotide probes and then perform one i dentification step at the end). Applera , No. 07-2845, D.I. 133, at 16 (N.D. Cal. F eb. 21, 2008) (Claim Construction Order). Solexa argues that the term comprising “ permits an accused method to include additional steps beyond those expressly recited in the cl aims.” In simple terms, claim 1 requires that one ex tend, identify, and repeat. Under Solexa’s proposed

2009-1253, -1260 14construction, the word “comprising” indica tes that one could systematically skip the identification step duri ng each cycle, and so long as o ne or more nucleotides were identified at the end of the process, that would sa tisfy the claim limitations. “‘Comprising’ is not a weasel word with wh ich to abrogate claim limitations.” Dippin’ Dots, Inc. v. Mosey , 476 F.3d 1337, 1343 (Fed. Cir. 2007) (citation omitted). Here, the claims require repeating the extend and identify steps until a sequence of nucleotides is determined. This repetition is described in the specification, which states that “[i]n one aspect, the inventi on calls for repeated steps of ligating and identifying of oligonucleotide probes.” ’597 patent col.8 ll.57-58. The specification further explains that “the lig ation of multiple probes to the same extended duplex in the same step would usually introduc e identification problems.” Id. at col.8 ll.59-60. The specification does not describe any way in which one could ligate multiple probes to the same extended duplex and la ter identify a sequence of nucleotides. Therefore, we agree with the district court that step (b) requires the identification of one or more nucleotides during each cycle. In other words, in order to repeat steps (a) and (b), one must actually perform step (b). The district court construed step (c) as “conditional, meaning that there is no need for repetition if the sequence of the polynucleot ide has been fully determined in the first cycle.” Solexa argues that this construc tion is inconsistent with arguments made during the prosecution history. Duri ng prosecution, the applicant distinguished the invention from a prior art reference by noting that “[t]he refe rence does not teach ‘repeating steps (a) and (b) until the sequence of nucleot ides is determined, as recited in the present claim. Because the prior art method identifies only a single

2009-1253, -1260 152009-1253, -1260 16 nucleotide, not a sequence of nucleotides, there woul d be no need for such repetition.” Contrary to Solexa’s argument, this statement does not require one to repeat steps (a) and (b) even when the poly nucleotide has been determined in the first cycle (indeed, it states th at the cycle is repeated “until the sequence of nucleotides is determined”). The distinguis hing feature of the in vention is that it taught a method for identifying a sequence of nucleotides, rather than a method for identifying a single nucleotide. Using the method of claim 1, a sequence of nucleotides may be identified after only on e cycle using parallel reactions employing different initializing nucleotides, each out of register by one nucleotide. See ’597 patent col.3 ll.19-36, ex. 1. Thus, we reject Solexa’s argument based on the prosecution history. We cons true step (c), as the district court did, to have its plain and ordinary meaning. To meet the limitati ons of claim 1, one must repeat steps (a) and (b) until the sequence of nucleot ides is determined. T here is no need for repetition once the sequence of the poly nucleotide has been fully determined. Because the district court properly cons trued the terms of claim 1 of the ’597 patent, we affirm the court’s judgment of n oninfringement with re spect to Applera’s accused products, and the court’s order, entered pursuant to stipulation, concerning invalidity.

CONCLUSION For the foregoing reasons, we affi rm all of the appealed orders and judgments.