throbber
Filed on behalf of Histologics, LLC
`
`By:
`
`
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`
`
`Rudolph A. Telscher (rtelscher@hdp.com)
`Bryan K. Wheelock (bwheelock@hdp.com)
`Greg W. Meyer (gmeyer@hdp.com)
`Harness, Dickey & Pierce, PLC
`7700 Bonhomme Ave., Suite 400
`St. Louis, MO 63105
`Telephone: (314) 726-7500
`Facsimile: (314) 726-7501
`
`
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`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`In the Inter Partes Review of:
`
`U.S. Patent No. 6,258,044
`
`Issued: November 19, 2002
`
`Inventor(s): Neal M. Lonky; Jeremy
`James Michael Papadopoulos
`
`Assignee: Shared Medical Resources,
`LLC, and CDX Diagnostics, Inc.
`
`
`Title: Apparatus and Method for
`Obtaining Transepithelial Specimen of a
`Body Surface Using a Non-Lacerating
`Technique
`
`
`Trial Number: TBA
`
`Attorney Docket No.: 15298-400036
`
`Petitioner: Histologics, LLC
`
`Panel: To Be Assigned
`
`
`
`
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`
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`
`
`DECLARATION OF JOHN ROMNEY MARSHALL, M.D.
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`
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`
`
`1
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`

`

`I, John Romney Marshall, M.D., state under oath the following:
`
`I.
`
`BACKGROUND
`
`1.
`
`I am over 18 years of age and otherwise competent to make this
`
`declaration.
`
`2.
`
`I have been retained as an expert witness to provide testimony on
`
`behalf of Histologics, LLC, as part of an inter partes review (“IPR”) directed to
`
`U.S. Patent No. 6,258,044 (EX1001, “the ‘044 patent”). I am being compensated
`
`for my time in connection with this IPR at a rate of $350.00 per hour.
`
`3.
`
`I have been asked to provide my opinion relative to the subject matter
`
`of claims 1-39 of the ‘044 patent (“the challenged claims”), which I understand
`
`Histologics is challenging as being obvious from the devices and literature know at
`
`the time the ‘044 application was filed on July 23, 1998. Independent claims 1,
`
`12, 26 and 37 of the ‘044 Patent are directed to apparatuses and methods related to
`
`the collection of epithelial tissue of a body. I have reviewed the following
`
`documents:
`
`• U.S. Patent No. 6,258,044 to Lonkey et al., EX1001
`
`• Prosecution History of U.S. Patent No. 6,258,044, EX1002
`
`• U.S. Patent No. 2,955,592 to MacLean, EX1003
`
`• U.S. Patent No. 5,713,369 to Tao et al., EX1004
`
`
`
`2
`
`

`

`• Exploiting the “Toothpick effect” of the cytobrush by Plastic
`
`Embedding of Cervical Samples, Acta Cytologica by Boon et al.,
`
`January 1991, EX1005
`
`• The Cytobrush Plus cell collector in oral cytology. Oral Surgery Oral
`
`Medicine Oral Pathology, by Jones et al., published January 1994,
`
`EX1006
`
`• Trylon Inc.’s S-1 filed in 1996, EX1007
`
`• U.S. Patent No. 5,191,899 to Strickland et al., EX1008
`
`• U.S. Patent 4,754,764 to Bayne et al., EX1009
`
`• U.S. Patent 5,067,195 to Sussman et al., EX1012
`
`• U.S. Patent 4,759,376 to Stromby, EX1013
`
`• Declaration of Dr. Funk, EX1025
`
`• Petition
`
`4. My opinions are based on the documents listed above, and my general
`
`understanding of the field of transepithelial specimens, and in particular histology
`
`and cytology, before July 1998, when the ‘044 application was filed.
`
`5.
`
`I have considered the ‘044 patent in light of expertise in my field in
`
`1998, and I have given claim terms their broadest reasonable meaning in the
`
`context of the ‘044 patent.
`
`
`
`3
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`

`

`II. MY EXPERIENCE AND QUALIFICATIONS
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`6.
`
`I am a physician licensed in the State of California. A true and correct
`
`copy of my curriculum vitae is attached as EX1024.
`
`7.
`
`Between 1951 and 1953, I attended Pomona College, leaving to attend
`
`medical school. Between 1954 and 1958 I attended the Medical School at the
`
`University of Pennsylvania, earning my Medical Doctorate in 1958. From 1960 to
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`1963 I served as a resident physician in Obstetrics and Gynecology at the George
`
`Washington University.
`
`8.
`
`I specialize in the field of obstetrics and gynecology and have actively
`
`practiced in obstetrics and gynecology since 1960. I have taught, and continue to
`
`teach in the field of obstetrics and gynecology. I have served as Assistant Clinical
`
`Professor at the George Washington University School of Medicine; Professor and
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`Vice Chairman of the Ob/Gyn Department at the UCLA School of Medicine;
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`Department Chairman at Harbor/UCLA Medical Center; and Adjunct Professor in
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`the School of Medicine at Mercer University, the School of Public Health at
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`Georgia Southern University, and the School of Nursing at the Georgia Southern
`
`University.
`
`9.
`
`I have also served as Senior Investigator and Associate Surgeon in the
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`Surgery Branch of the National Cancer Institute at the National Institute of Health.
`
`
`
`4
`
`

`

`10.
`
`I am Board Certified by the American Board of Obstetrics and
`
`Gynecology and for ten years served as an examiner for that Board.
`
`11.
`
`I am a Fellow of the American College of Obstetrics and Gynecology
`
`and a member of the American Gynecologic and Obstetric Society, the American
`
`Society of Reproductive Medicine, and the Society of Gynecologic Investigation.
`
`12.
`
`I served as a member of the Editorial Board of the journal, Obstetrics
`
`and Gynecology, as a reviewer for numerous other professional journals, and as
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`Chairman of the Obstetrics and Gynecology Test Committee of the National Board
`
`of Medical Examiners.
`
`13.
`
`I have authored over 105 scientific/medical articles and have edited or
`
`authored over 10 books or book chapters.
`
`14.
`
`I have served as President of the Los Angeles Obstetrical and
`
`Gynecological Society.
`
`15.
`
`I am knowledgeable about brush cytology and have used said devices
`
`extensively in my practice. I have experience using brushes, beginning prior to
`
`July 1998, in the examination and testing of reproductive system of women.
`
`Specifically, I have various types of brushes to perform several hundred, if not
`
`thousands, of pap smears and similar cancer screening procedures from the
`
`beginning of my career up until my retirement in 2009. I am familiar with various
`
`techniques and maneuvers for using brushes, such as those discussed herein,
`
`
`
`5
`
`

`

`including, for example, the pressures applied, indicators from the procedures, such
`
`as bleeding, etc.
`
`16.
`
`I am familiar with the stiffness of nylon bristles required in tissue
`
`sample brushes, based on at least my use of and experience with such brushes prior
`
`to the filing of the ‘044 patent.
`
`17. Given my extensive experience as a physician specializing in
`
`obstetrics and gynecology, I am qualified to provide the opinions that I set forth
`
`below.
`
`III. A PERSON OF ORDINARY SKILL IN THE ART
`
`18.
`
`I understand that a person having ordinary skill in the art relevant to
`
`the ‘044 patent is one who is presumed to be aware of all pertinent prior art, who
`
`approaches problems consistent with the conventional wisdom in art, and is a
`
`person having ordinary creativity.
`
`19. A person having ordinary skill in the relevant art would have the
`
`knowledge of instrumentalities and procedures for obtaining transepithelial
`
`specimens or samples from the body. A person having ordinary skill in the field of
`
`sampling epithelial tissue would have a medical degree and several years of
`
`practical experience collecting tissue samples.
`
`
`
`6
`
`

`

`IV. THE ‘044 PATENT
`
`20. The ‘044 patent is directed to a transepithelial, non-lacerating
`
`sampling brush, and techniques for using the same. EX1001 at claim 1.
`
`A.
`
`The Background of the ‘044 Patent
`
`21. The background section of the ‘044 patent describes some of the
`
`brushes available prior to the filing of the ‘044 application, and the particular
`
`issues with the brushes, which were well known in the art. The background
`
`introduced the concept of cytology as being commonly utilized as an alternative to
`
`performing lacerating biopsies. EX1001 at 2:26-30.
`
`22. Cytology is the examination of exfoliated cells. In one example a
`
`cytology brush is described as “designed of various soft materials which can
`
`collect the cervical mucous with minimal abrasion to the underlying epithelium.”
`
`EX1001, 2:64-66.
`
`23. The background further indicates that it was well known that cytology
`
`may be insufficient where a lesion is covered with keratinized cells, which may
`
`hide abnormal cells underneath them and prevent their exfoliation by the “softer”
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`brushes known at the time. EX1001 at 3:50-61. In fact, it was known from a
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`major study, which indicated “[t]he false negative rate… to be as high as 30%.”
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`EX1001, 4:12-15. Further, the prior art, before the ‘044 patent, certainly
`
`recognized that:
`
`
`
`7
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`

`

`
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`EX1001, 4:19-25.
`
`24.
`
`In other words, the ‘044 patent states that at the time the ‘044
`
`application was filed, it was well known that some prior art brushes were too soft
`
`to reach certain abnormal layers of the epithelium, yet lacerating the tissue was
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`undesirable.
`
`B.
`
`The Detailed Description of the ‘044 Patent
`
`25. The detailed description of the ‘044 patent describes a non-lacerating
`
`brush, which has bristles sufficiently stiff to collect a transepithelial sample. The
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`brush is illustrated in FIGS. 4-5, reproduced below:
`
`26. As shown, the brush includes a handle 20 with a proximal end 22 and
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`
`
`
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`a distal end 24, and a brush head 26. The brush head 26 includes bristles 40.
`
`
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`8
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`

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`27. The ‘044 patent specifically describes the stiffness of the bristles 40 as
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`having “a stiffness of between 0.04-0.2 lbs./inch.” EX1001, 7:51-54. The ‘044
`
`patent states: “[a] although in the prior art, the sampling brushes provided have
`
`been soft brushes with soft bristles, in the present invention, bristles 40 are
`
`specifically made stiff or semi-rigid, going against the teachings of the art.”
`
`EX1001, 7: 59-62. The ‘044 patent further states:
`
`
`
`EX1001, 8:10-19. More plainly, the ‘044 patent contemplates a certain amount of
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`spot bleeding to be indicative of transcending the epithelial layers – but because
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`the brush is non-lacerating, spot bleeding would not be indicative of laceration.
`
`28. The detailed description of the ‘044 patent further describes the use of
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`the transepithelial brush. In particular, “the stiff bristles [40] are pressed down and
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`brushed or rotated into a lesion of potential concern to penetrate or ‘drill’ into the
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`lesion.” EX1001, 10:34-39. The ‘044 patent says that this pressing provides
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`thorough sampling of all layers of the epithelium, without the necessity of
`
`performing a surgical laceration. Id.
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`
`
`9
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`

`

`C.
`
`The Claims of the ‘044 Patent
`
`29.
`
`I understand that all thirty-nine claims of the ‘044 patent are
`
`challenged in the Petition for IPR. I have reviewed the challenged claims, as part
`
`of my review of the ‘044 patent.
`
`30.
`
`I did note that claim 26 recites a “means” to traverse said superficial,
`
`intermediate and basal layers and to collect cells from said three layers. I have
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`reviewed the entire ‘044 patent, and the disclosed brush is the only structure in the
`
`‘044 patent suitable to traverse the stated three layers and collect cells from these
`
`layers.
`
`D. The Prosecution of the ‘044 Patent
`
`31.
`
`32.
`
`I have reviewed the EX1002 prosecution history of the ‘044 patent.
`
`I read applicant’s response to the rejection where applicant argued that
`
`the “subject invention concerns a specific non-lacerational transepithelial cell
`
`collecting brush.” EX1002 at 78-79. The Applicants said:
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`
`
`10
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`

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`EX1002, at 79. And, the Applicant further argued:
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`
`
`
`
`11
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`

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`tip deflection stiffness. Measurements were made and the stiffness of between
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`.04 and .2lbsfinch were identified as the preferential stiffness of each of the
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`bristles which provide the structural stiffness to allow the bristles to non-
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`lecerationally transepithelially collect cells from more than a single layer.
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`One of the factors that relates to stiffness is the property of the materiel
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`utilized. Thus, once Tynex‘ is employed, the modulus of stiffness is the same
`
`because the same nylon material is utilized. On the other hand, the thickness of
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`the bristle relates to the moment of inertia which is pert of the stiffness factor.
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`Generally. the moment of inertia is n x r‘ + 4. Thus, where the radius or diameter
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`is increased by a factor of 3. the stiffness factor wfll be increased by a factor of 3‘
`
`or 81times.
`
`The prior art Stormby reference has a bristle which is 2 mils whereas the
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`bristle of the present invention is 6 mils. Since the diameter of the present
`
`invention is three times the diameter of that in the Stormby bristle, the stiffness of
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`the bristles of the present invention is significantly greater and probably 81 times
`
`as stiff as that of the Stormby reference.
`
`Of course this is not surprising because if the Stormby brush (submitted
`
`herewith) is significantly softer than the brush of the present invention. The
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`Stormby reference is illustrative of the prior art in which relatively soft brush
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`surfaces with an abrading action are employed to remove cells generally from the
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`superficial layer of the tissue being sampled. There is no suggestion or showing in
`
`
`
`
`
`12
`12
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`

`

`
`
`EX1002, at 79-81.
`
`
`33.
`
`I understood that applicant was arguing that prior cytology brushes
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`were too soft to penetrate beyond the superficial layer of the epithelium, although
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`in my experience this is not the case. Brushes available at the time the ‘044 patent
`
`application was filed could penetrate the entire epithelium and sometimes even the
`
`basement membrane.
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`V. THE PRIOR ART
`
`34. The prior art discussed in this Declaration is related to brushes for use
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`in obtaining transepithelial samples.
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`35. Before addressing the prior art relied upon by Histologics I need to
`
`explain the physiology of the epithelial tissue of the human body.
`
`36. The epithelial tissue serves as a protective barrier for the body
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`between the internal and external environments. Epithelium covers nearly all
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`external and internal body surfaces. The epithelial tissue includes three layers: the
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`superficial, intermediate and basal layers.
`
`37. The image below illustrates a cross-section of a normal cervical
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`epithelium, and the three layers of the epithelium. The tissue transitions between
`
`
`
`13
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`

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`the basal layer at the dark “line” of cells, i.e., the basement membrane, up to the
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`intermediate layer, and then up to the superficial layer near or at the surface. The
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`cell layers have less and less water as they graduate from the basal layer up to the
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`superficial layer. In this image, the top layer (on the left) is a layer of dried, dead
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`cells, which is a form of “keratinized” layer (but in the cervix).
`
`38. Long before the filing of the ‘044 patent, the basement membrane,
`
`i.e., the dark line, was well known to separate the epithelium (above) from the
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`submucosa (below), which is where the blood vessels are located. The epithelial
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`tissue is non-vascular or avascular, while the submucosa is vascular.
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`Normal Cervical Epithelium
`
`
`
`39. The image below shows a cross-section, similar to the image above,
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`but which is precancerous, i.e., in situ cancer. Cancer cells originate at the
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`basement membrane of the epithelial tissues. As the cancer cells mature, they lose
`
`
`
`14
`
`

`

`water and migrate upward through the layers of the epithelial tissue. However, the
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`cancer cells (identifiable by their dark blue-staining nuclei) maintain their dark
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`blue-staining nuclei as they migrate upward to ward the surface of the epithelium.
`
`Cervical Intraepithelial Neoplasia
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`
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`40. While cotton swabs or spatulas may be adequate to collect cancer
`
`cells that have migrated to the surface level, such instruments are inadequate to
`
`collect cells at the lower epithelial layers. In my experience, it was well known,
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`before the ‘044 patent application was filed that existing brushes could obtain
`
`tissue samples below the surface level into the epithelium.,
`
`
`
`15
`
`

`

`41. Even a layman can appreciate, the more tissue that is sampled, the
`
`more likely that cancer cells will be obtained, therefore, the earlier cancer may be
`
`diagnosed.
`
`42. All the above was well known prior to the filing of the ‘044
`
`application. Specifically, it was desirable to sample multiple layers of epithelium,
`
`and in designing a new sampling device it was desirable that the device sample the
`
`entire epithelium down to the basement layer.
`
`43.
`
`I have been asked to summarize the Prior Art relied upon by
`
`Histologics.
`
`A. MacLean
`
`44.
`
`I have reviewed U.S. Patent 2,955,592 to K. S. MacLean, which is
`
`EX1003 to the IPR (“MacLean”). I understand MacLean is prior art to the ‘044
`
`patent.
`
`45.
`
`I understand MacLean to disclose a diagnostic brush for use to obtain
`
`a tissue sample to determine if cancer was present. EX1003, FIG. 1 and 1:15-32.
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`MacLean specifically discloses the brush’s use for sampling tissue in the lining of
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`the stomach and bronchus. One of ordinary skill at the time of the filing of the
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`‘044 patent would have considered the sampling brush of MacLean to be suitable
`
`to gather tissue in other parts of the body.
`
`
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`16
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`

`

`46. The disclosed brush includes a bristle structure 25 disposed at the
`
`distal end of a tube 15, which is attached to a handle or gripping part 17. EX1003,
`
`FIG. 1, reproduced below.
`
`
`
`47. MacLean discloses a “mounting core 24” with “a row of bristles 25”
`
`forming a brushing surface, which functions as a “brush abrader.” EX1003, 2;49-
`
`50 and 2:68.
`
`48. MacLean includes a detailed illustration of the bristle structure 25 in
`
`FIG. 4, reproduced below. The bristles 25 are directed radially outwardly from the
`
`mounting core 24 in a spiral path, i.e., a helical brush structure. EX1003, FIG. 4.
`
`The bristles 25 are captured between and extend from two “twisted wires strands.”
`
`EX1003, FIG. 4 and 2:48-51.
`
`
`
`
`
`17
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`

`

`49.
`
` In my opinion, it is an inherent property of bristle tips, and is
`
`expressly disclosed in MacLean that the ends of the bristles “should embody
`
`characteristics such that they will scrape or scarify the surface of tissues with
`
`which they are engaged.” EX1003, 2:69-71 MacLean also explains “[w]here a
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`brush abrader is employed, the bristles of the latter should be relatively quite stiff.”
`
`EX1003, 2:68-69.
`
`50.
`
`In my opinion, something that “scrapes” or “scarifies” or is “relativity
`
`quite stiff” would be transepithelial and obtain an adequate tissue sample for
`
`cancer screening, i.e., penetrate and collect cells from the entire epithelium,
`
`including all three layers.
`
`51. At the time of the filing of the ‘044 patent, even flexible bristles were
`
`known to be able to penetrate the entire epithelium. When the ‘044 application
`
`was filed, even devices like the Cytobrush, with bristles that the ‘044 patent would
`
`have characterized as flexible, were known to recover samples from the entire
`
`epithelium. See EX1005.
`
`52.
`
`In my opinion, prior to the filing of the ‘044 patent, it was understood
`
`that the MacLean brush was a non-lacerational sampling brush having sufficient
`
`stiffness to penetrate the entire epithelium.
`
`
`
`18
`
`

`

`B.
`
`Tao
`
`53.
`
`I have reviewed U.S. Patent 5,713,369 to Liang-Che Tao et al., which
`
`is EX1004 (“Tao”) to the petition. I understand Tao is prior art to the ‘044 patent.
`
`54. Tao discloses a brush for obtaining samples of tissue from the uterine
`
`endometrium, which is useful to collects samples for cancer screening. EX1004,
`
`Abstract. FIG. 1 is reproduced below.
`
`FIG. 1 of Tao
`
`
`
`55. Prior to discussion of the brush 10, it is worth noting that the
`
`Background section of Tao recognizes that brushes had been known for sample
`
`collection of uterine endometrial tissue. EX1004, 1:26-37. Tao goes on to
`
`recognize that the known brushes lacked specific stiffness. EX1004, 1:26-37. Tao
`
`then describes brush 10 having good exfoliating (e.g., abrading, etc.) and collecting
`
`abilities. EX1004, 2:35-45. Tao specifically discloses bristles spaced apart by 0.5
`
`to 1.5 mm and having bristle stiffness equivalent to nylon-6,12 at a diameter of
`
`0.076 to 0.152 mm. EX1004, 2:42-45.
`
`
`
`19
`
`

`

`56.
`
`I also understand the bristles 20 in Tao to form an abrasive surface
`
`suitable to abrade or exfoliate the epithelial of the test site. Specifically, Tao
`
`describes “tissue removal by surface rubbing or abrasion.” EX1004, 2:28-31.
`
`57. Bristles 20 are directed radially outwardly from the core 12 to provide
`
`a diameter of 0.2 – 0.3 inches, providing a radius of less than about 0.1 – 0.15
`
`inches. EX1004, 5:43-45. That was a very conventional size range for bristles at
`
`the time of filing of the ‘044 patent, given that many of these brushes must fit in
`
`endoscope lumens or other devices, and thus it would be obvious to make bristles
`
`of this size.
`
`58. The thickness of the bristles is disclosed in Tao as up to 0.006 inches.
`
`EX1004, 2:41-45. The bristles in the ‘044 patent has that same thickness of 0.006
`
`inches. EX1001 at 7:57-58. The bristles further include sharpened tips forming an
`
`assemblage of penetrating edges. See EX1004, 7:53-59. The Tao bristles 20 are
`
`the same kind of abrasive surface disclosed in the ‘044 patent.
`
`59. The brush 10, as shown in FIG. 1, includes a handle 34 having a distal
`
`end and a proximal end. EX1004, 5:18-40 and FIGS. 1-3. The handle forms a
`
`cylinder. EX1004, FIG. 1. The resilient bristles 20 are captured between steel
`
`wires 22 extending from the distal end for tissue removal by surface rubbing or
`
`abrasion. EX1004, FIG. 1, 2:30 and 5:54-55.
`
`
`
`20
`
`

`

`60. The bristles 20 form a brush member 18, at which the bristles 20 are
`
`directed radially outward from the steel wires 22. EX1004, FIGS. 1, 5 and 7.
`
`61. The brush 10 is further disclosed for use in histology, which requires
`
`cells from all levels of the epithelium down to the basement membrane, i.e., a
`
`transepithelial sample. Specifically, for example, the architecture of the epithelial
`
`tissue is necessary in histology to determine the degree of endometrial hyperplasia,
`
`for example, and the architecture is only evident from sampling the entire
`
`endometrium. Tao would only be useful in histology if it collects cells from the
`
`entire epithelium.
`
`62. This disclosure would have indicated to a person of ordinary skill –
`
`prior to the filing of the ‘044 patent – that the brush 10 disclosed in Tao was
`
`suitable to penetrate the three layers of epithelial tissue, i.e., the entire epithelium.
`
`63. Additionally Tao discloses making a determination as to endometrial
`
`hyperplasia being mild, moderate of severe. EX1004, 10:17-18. Tao therefore
`
`necessarily discloses penetrating the entire endometrium. Specifically, the
`
`architecture of the tissue is necessary for the degree of endometrial hyperplasia to
`
`be determined, and the architecture is only evident when a sufficient sample has
`
`been obtained. Thus Tao discloses a brush that is capable of obtaining both
`
`superficial and deep tissue samples.
`
`
`
`21
`
`

`

`64. Tao further explains that it is the stiffness that is “critical” to sample
`
`and collect for each of the conditions listed, and others. EX1004, 6:2-4, 65-67.
`
`Thus, different stiffness would have different exfoliating and different collecting
`
`abilities.
`
`65. Tao specifically states that different stiffnesses would have different
`
`exfoliating and different collecting abilities. EX1004, 7:4-6.
`
`66. One of ordinary skill in the art in 1997 would have readily understood
`
`this as a direction, with certainty of success, to adjust stiffness to balance sampling
`
`and collection (as well a patient comfort) to the particular epithelial to be sampled.
`
`C.
`
`The Boon Article
`
`67.
`
`I have reviewed “Exploiting the “Toothpick effect” of the cytobrush
`
`by Plastic Embedding of Cervical Samples, Acta Cytologica” by Boon et al.,
`
`January 1991, EX1005 (“Boon”). I understand Boon is prior art to the ‘044
`
`patent.
`
`68. Boon discloses a shift in the analysis of tissue samples from brushes.
`
`Prior to the Boon, it was known to smear tissues samples of endocervical cells
`
`across a slide and then analyze the slide. Due to a “toothpicking” effect of the
`
`Cytobrush, fragments or chunks of the epithelial tissue (spanning multiple layers
`
`thereof) were being collected by the bristles of the Cytobrush and smeared across
`
`
`
`22
`
`

`

`the slide. EX1005, p. 57. The epithelial fragments interfered with continental
`
`analysis. EX1005, p. 57.
`
`69. Boon, however, proposed preparing thin sections of the tissue
`
`fragment, as an alternative to the smear technique, to turn the epithelial chunks
`
`obtained by the Cytobrush from a disadvantage to an advantage. EX1005, p. 58.
`
`Boon, shows that before the ‘044 application was filed, known brushes, including
`
`the Cytobrush, obtained clumps of tissue from multiple layers of the epithelium. In
`
`fact it was a problem.
`
`VI. THE PRIOR ART APPLIED TO THE CLAIMS OF THE ‘044
`PATENT
`
`70.
`
`71.
`
`I have reviewed the challenged claims of the ‘044 patent
`
`In my opinion, in view of the prior art references cited herein, the
`
`subject matter of the challenged claims 1-39 are each obvious based on one or
`
`more of MacLean, Tao, Boon, Strickland, Wang, Jones, Sussman, and/or Bayne,
`
`and combinations thereof.
`
`A.
`
`Claims 1-3
`
`72. MacLean, Tao, and Boon are in the same field as the ‘044 patent, i.e.,
`
`epithelial tissue sampling. While MacLean is directed to the stomach and
`
`bronchus, and Tao and Boon are directed to the cervix, each body part includes a
`
`layer of tissue that protects the interior of the body from exterior environmental
`
`conditions, for which the brushes disclosed may be used and/or adapted.
`
`
`
`23
`
`

`

`MacLean, Tao, Boon, and the ‘044 patent further relate to the same problem of
`
`sampling sufficient tissue for an accurate and complete examination of the
`
`epithelium.
`
`73. As summarized above, and shown in the claim chart included in the
`
`Petition, MacLean discloses a brush for use in collecting samples of cells, which
`
`may then be examined to determine if the condition of cancer prevails. EX1003,
`
`1:15-20. MacLean explains “[w]here a brush abrader is employed, the bristles of
`
`the latter should be relatively quite stiff.” EX1003, 2:68-69. “Relativity quite
`
`stiff” would have been understood, prior to the filing of the ‘044 patent to be able
`
`to obtain tissue from the deeper layers of epithelial tissue.
`
`74. The bristles have ends, which “should embody characteristics such
`
`that they will scrape or scarify the surface of tissues with which they are engaged.”
`
`EX1003, 2:69-72.
`
`75. Likewise, Tao discloses a brush for obtaining samples of tissue from
`
`the uterine endometrium, which may be useful to collect samples for cancer
`
`screening or for monitoring ongoing estrogen replacement therapy. A brush
`
`member 18 is disposed at the distal end of the core 12 and includes a plurality of
`
`resilient bristles 20. Each of the bristles has a stiffness equivalent to that possessed
`
`by nylon-6,12 at a diameter of 0.003 to 0.006 inches. The brush, as shown in FIG.
`
`1 of Tao, is provided below.
`
`
`
`24
`
`

`

`76. Tao discloses that stiffness is critical, and that different stiffnesses
`
`provide different exfoliating and collection capabilities. EX1004, 2:45-49 and 6:2-
`
`
`
`6.
`
`77.
`
`I am informed that the nylon-6,12 disclosed in Tao, at the thickness
`
`disclosed in Tao, would have virtually identical stiffness as the bristles disclosed in
`
`the ‘044 patent. See Declaration of Dr. Funk at ¶¶ 16-27. I am further informed
`
`the tip stiffness of each bristle is between 0.04 and 0.2 lbs./inch. See Declaration
`
`of Dr. Funk at ¶¶ 16-27.
`
`78.
`
`It would have been obvious to a designer of cell collection brushes,
`
`prior to the filing of the ‘044 patent, to combine the teachings of MacLean, Tao,
`
`and Boon, as needed, to provide the apparatus described in claims 1-3 of the ‘044
`
`patent.
`
`79.
`
`In particular, at the time ‘044 patent was filed, brushes with
`
`“relatively quite stiff” bristles, such as those disclosed in MacLean, were known to
`
`recover samples from more than one layer of the epithelium.
`
`80. Further, it was well known prior to the filing of the ‘044 patent that
`
`the ability of brush bristles to penetrate and sample epithelial tissue depended upon
`
`
`
`25
`
`

`

`their stiffness. This knowledge comes from every day experience with various
`
`brushes from tooth brushes to brooms, and from actual experience with cell
`
`collection brushes with different bristles.
`
`81. Tao further teaches that the stiffness of the bristles is critical for
`
`exfoliation and collection of tissue samples. EX1004, 2:61-3:6 and 6:2-14. By
`
`doing so, Tao teaches designers to adjust stiffness as necessary for performance of
`
`the bristles. And, at the time of filing of the ‘044 patent, it would have been
`
`obvious to select a stiffness that achieved the desired penetration (and thus the
`
`desired tissue samples), such stiffness, as explained above are disclosed in Tao.
`
`82. By adjusting the stiffness, the ease and speed of use, as well as the
`
`required force to penetrate the epithelial would be improved. Thus, at that time
`
`one would be motivated to select a bristle stiffness that sampled cells from more
`
`than one layer of the epithelium, because a sample of just the superficial layer, or
`
`even just the superficial and intermediate layers of the epithelium, would be more
`
`likely to be unsatisfactory and/or insufficient – especially for the type for
`
`screenings disclosed in MacLean and Tao.
`
`83.
`
`It was well within the skill of the art to adjust the stiffness of brush
`
`bristles in a device like MacLean to achieve the desired goal of collecting epithelial
`
`cells from multiple layers of epithelium. See EX1005.
`
`
`
`26
`
`

`

`84.
`
`It was known at the time that cancer begins at the basement
`
`membrane, and the motivation in making a sampling brush would be to obtain as
`
`deep a sample as possible. Brushes were used because their abrasive action was
`
`able to penetrate the epithelium as deep as desired, and at the time the ‘044
`
`application was filed, it was known that brushes could and did collect cells from all
`
`three layers of the epithelium, the superficial, intermediate and basal layers. The
`
`motivation would further be to obtain more tissue (i.e., greater quantity), which
`
`brush abrasion accomplishes.
`
`85.
`
`In view of the teachings of MacLean’s “relatively quite stiff” bristles,
`
`and Tao’s teaching to select stiffness to get the desired rate and depth of
`
`penetration, it would have been obvious to select a stiffness for the bristles on a
`
`MacLean or Tao device to penetrate to the deeper tissue layers.
`
`86. While drawing blood is not the goal of cell collection, it occasionally
`
`occurs, and when it does, it establishes that the basement membrane has been
`
`penetrated, because the epithelium is avascular (lacks blood vessels) and the blood
`
`is coming from the submucosa. Boon (EX1005) and Strickland (EX1008), for
`
`example, indicate that brushes were known to draw blood in some uses. Again,
`
`drawing blood was not the goal, but certainly was an indicator that the entire
`
`epithelium had been sampled down to the submucosa.
`
`
`
`27
`
`

`

`87. Even where a brush penetrated sufficiently to cause bleeding, i.e.,
`
`penetrated the entire epithelium (including all three layers thereof), it would not
`
`have been considered, in my opinion, to be equivalent to a biopsy obtained by a
`
`biopsy obtained with a scalpel.
`
`88. Stated differently, to the extent the brushes disclosed in the ‘044
`
`patent are non-lacerational, the brush disclosed in MacLean and Tao are also non-
`
`lacerational, because the bristles on the MacLean and Tao brushes provide the
`
`same kind of abrasive surface disclosed and claimed in the ‘044 patent.
`
`89. Thus, it was well within the skill of the art to adjust the stiffness of
`
`brush bristles to achieve the desired goal of collecting epithelial cells deeper than
`
`the superficial layer, and to expect the stiffer bristles to be successful in reaching
`
`deeper layers down to and through the basement membrane if the brush is further
`
`agitated.
`
`90.
`
`In view of the above, it would have been obvious to adjust , prior to
`
`the filing of the ‘044 patent and with certainty of success, the stiffness of MacLean
`
`to achieve the same penetration as other devices, including, for example, the Tao
`
`brush and Cytobrush (EX1005), were achieving prior to the filing of the’044
`
`patent.
`
`
`
`28
`
`

`

`B.
`
`Claims 4 and 24
`
`91. Claim 4 depends from claim 2, discussed above, and claim 24
`
`depends from claim 12, discussed below. E

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