Varian Medical Systems, Inc.
`v.
`William Beaumont Hospital and Elekta Ltd.
`
`Varian’s Presentation
`
`IPR2016-00162
`IPR2016-00166
`Patent 6,842,502
`
`
`IPR2016-00170
`IPR2016-00171
`Patent 7,471,765
`
`1
`
`Varian – William Beaumont Hospital
`IPR2016-00162
`Exhibit 1143
`
`
`v.
`William Beaumont Hospital and Elekta Ltd.
`
`Varian’s Presentation
`
`IPR2016-00162
`IPR2016-00166
`Patent 6,842,502
`
`
`IPR2016-00170
`IPR2016-00171
`Patent 7,471,765
`
`1
`
`Varian – William Beaumont Hospital
`IPR2016-00162
`Exhibit 1143
`
`
`
`Introduction: Instituted Grounds
`
`Instituted Grounds (162):
`1. Claims 1–8, 10-14, 16–29, 33, and 35–38 of
`’502 patent obvious over a combination of
`Cho, Antonuk, Jaffray 1997, Adler, and Depp
`2. Claim 9 of ’502 patent obvious over a
`combination of Cho, Antonuk, Jaffray 1997, Boyer,
`Adler, and Depp
`
`
`US Patent No. 6,842,502 B2
`
`2
`
`
`
`Introduction: Instituted Grounds
`
`Instituted Grounds (166):
`1. Claims 43–46, 48–55, 57, and 59 of ’502 patent
`obvious over a combination of Cho, Antonuk,
`Jaffray 1997, Adler, and Depp
`2. Claims 60–66 and 68 of ’502 patent obvious over
`a combination of Cho, Antonuk, Jaffray 1997,
`Adler, Depp, and Yan
`
`US Patent No. 6,842,502 B2
`
`3
`
`
`
`4
`
`Introduction: Instituted Grounds
`
`Instituted Ground (170):
`Claims 1‒13 and 20‒31 of ’765 patent
`obvious over Cho, Antonuk, Jaffray 1997,
`Adler, and Depp
`
`
`
`US Patent No. 7,471,765 B2
`
`
`
`Introduction: Instituted Grounds
`
`Instituted Grounds (171):
`1. Claims 14‒16 of ’765 patent obvious over a
`combination of Cho, Antonuk, Jaffray 1997,
`Adler, and Depp
`2. Claims 17‒19 of ’765 patent obvious over a
`combination of Cho, Antonuk, Jaffray 1997,
`Adler, Depp, and Yan
`
`US Patent No. 7,471,765 B2
`
`5
`
`
`
`’502 Patent—Prosecution History
`
`Ex. 1109
`(Apr. 2004 Office Action)
`
`–(162) Ex. 1109 at 006 (emphasis added)
`
`6
`
`
`
`’765 Patent—Prosecution History
`
`Ex. 1007 (Aug. 2008
`Notice of Allowance)
`
`–(169) Ex. 1007 at 006–007 (emphasis added)
`
`7
`
`
`
`Claim construction of “three dimensional information” and
`“CBCT system”
`
`Disclosure of beam control based on 3D information in Adler/Depp
`
`Motivation to combine
` Disclosures of Adler/Depp
` Timing / Dose / Image Quality and Expectation of Success
`
`Secondary Considerations
`
`8
`
`
`
`Patent Owner does not dispute the cited prior art discloses every
`element of the challenged claims, save one element of the
`independent claims
`
`Patent Owner does not address dependent claims at all
`
`9
`
`
`
`Claim 1—’502 Patent
`
`Claim 1—’502 Patent
`
`~
`mliiimm!m!H"iiiiiii
`
`US Patent No. 6,842,502 B2
`US Patent No. 6,842,502 B2
`
`1. A radiation therapy system comprising:
`a radiation source that moves about a path and directs a
`be am of radiation towards an object;
`a cone-beam computed tomography system comprising:
`an X-ray source that emits an X-ray beam in a cone-
`beam form towards said object;
`a flat-panel imager receiving X-rays after they pass
`through the object, said imager providing an image
`of said object, wherein said image contains at least
`three dimensional information of said object based
`on one rotation of said X-ray source around said
`object; and
`a computer connected to said radiation source and said
`cone beam computed tomography system, wherein said
`computer receives said image of said object and based
`on said image sends a signal to said radiation source
`that controls said path of said radiation source.
`
`10
`
`
`
`Claim 1—’502 Patent
`
`US Patent No. 6,842,502 B2
`(emphasis added)
`
`11
`
`
`
`Claims 43 and 60—’502 Patent
`
`US Patent No. 6,842,502 B2
`
`12
`
`
`
`Claims 43 and 60—’502 Patent
`
`US Patent No. 6,842,502 B2
`(emphasis added)
`
`13
`
`
`
`Claims 1, 7, 20, and 26—’765 Patent
`
`–US Patent No. 7,471,765 B2
`
`14
`
`
`
`Claims 1, 7, 20, and 26—’765 Patent
`
`–US Patent No. 7,471,765 B2 (emphasis added)
`
`15
`
`
`
`Claims 14 and 17—’765 Patent
`
`US Patent No. 7,471,765 B2
`
`16
`
`
`
`Claims 14 and 17—’765 Patent
`
`US Patent No. 7,471,765 B2
`(emphasis added)
`
`17
`
`
`
`Claim construction of
`“three dimensional information”
`
`18
`
`
`
`Claim Construction—“three-dimensional information”
`
`US Patent No. 6,842,502 B2
`(emphasis added)
`
`19
`
`
`
`Claim Construction—“three-dimensional information”
`
`Petitioner’s Construction
`
`Patent Owner’s Construction
`
`“information concerning three
`dimensions of an object (such as
`length, width, and depth).”
`
`(Adopted in Institution Decision)
`
`“a volumetric image of an object
`generated by reconstructing 2-D
`projection images.”
`
`See Petition (162 Paper 1) at 13-14
`
`See Patent Owner Response (162 Paper 25) at 16
`
`20
`
`
`
`Claim Construction—“three-dimensional information”
`
`US Patent No. 6,842,502 B2
`
`–’502 Specification: 9:62–66
`
`21
`
`
`
`Claim Construction—“three-dimensional information”
`
`US Patent No. 6,842,502 B2
`
`–’502 Specification: 16:22–24
`
`22
`
`
`
`Claim Construction—“three-dimensional information”
`
`US Patent No. 6,842,502 B2
`
`–’502 Specification: 3:40–43
`
`23
`
`
`
`Claim Construction—“three-dimensional information”
`
`In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994)
`
`“Although an inventor is indeed free to define the specific terms used
`to describe his or her invention, this must be done with reasonable
`clarity, deliberateness, and precision.”
`
`24
`
`
`
`Claim Construction—“three-dimensional information”
`
`Thorner v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1366–68
`(Fed. Cir. 2012)
`
`“We do not read limitations from the specification into claims; we do
`not redefine words. Only the patentee can do that.”
`
`“[Both ] lexicography or disavowal … require a clear and explicit
`statement by the patentee.”
`
`25
`
`
`
`Claim Construction—“three-dimensional information”
`
`Q. And the construction says “reconstructed from a number of
`two-dimensional projection images.” Do you see that?
`A. Yes.
`Q. What is the number of two-dimensional projection images that
`are encompassed within that language?
`A. It depends on how accurately you would like to represent your
`volumetric data.
`
`Ali Bani-Hashemi, PhD
`
`–(162) Ex. 1502 at 83:14–25
`
`26
`
`
`
`Claim Construction—“three-dimensional information”
`
`Q. Can you give me a range of numbers that one of ordinary skill
`in the art would understand would be appropriate for this
`context?
`A. No, I will not be able to give you a range because that really
`depends on the application that you have at hand.
`Q. Could it be as few as two projections?
`A. I do not believe that two projections will generate a volumetric
`data that is of use.
`
`Ali Bani-Hashemi, PhD
`
`–(162) Ex. 1502 at 84:2–13
`
`27
`
`
`
`Claim Construction—“three-dimensional information”
`
`Q. Sitting here today, to the best of your ability to recall what
`you’ve seen in the literature, what is the lowest number,
`fewest number, of projections that you’ve seen used to
`reconstruct a CBCT image?
`A. Again, it really depends on what application you have at hand.
`So without specifying what application that it is you’re trying to
`do, I wouldn’t be able to give you what that minimum number
`of projections would be that would result in objectionable
`artifacts.
`
`Ali Bani-Hashemi, PhD
`
`–(162) Ex. 1502 at 85:21–86:8
`
`28
`
`
`
`Claim Construction—“three-dimensional information”
`
`Q. Image-guided radiotherapy for patient positioning where the
`cone-beam CT is based on projections that are acquired while
`the patient is on the treatment table.
`A. Yes.
`Q. So narrowing the question down to that context, what is the
`fewest number of projections you’ve seen used in the scientific
`literature for reconstructing a CBCT image?
`A. For reconstructing cone-beam CT, the fewest number, I can’t
`really tell because, again, that depends on the application that
`you have at hand.
`
`Ali Bani-Hashemi, PhD
`
`–(162) Ex. 1502 at 86:22–87:11
`
`29
`
`
`
`Claim construction of “CBCT system”
`
`30
`
`
`
`Claim Construction—“CBCT system”
`
`US Patent No. 6,842,502 B2
`(emphasis added)
`
`31
`
`
`
`Claim Construction—“CBCT system”
`
`Petitioner’s Construction
`“plain and ordinary meaning”
`
`Patent Owner’s Construction
`“a system that generates a
`three-dimensional, volumetric
`image reconstructed from a
`number of two-dimensional
`projection images obtained by
`rotating a cone-beam x-ray
`source and detector about
`an object”
`
`See Reply (162 Paper 42) at 3-4
`
`See Patent Owner Response (162 Paper 25) at 12
`
`32
`
`
`
`Claim Construction—“CBCT system”
`
`Petitioner’s Construction
`“plain and ordinary meaning”
`
`Patent Owner’s Construction
` “a system that generates a
`
`three-dimensional, volumetric
`image reconstructed from a
`number of two-dimensional
`projection images obtained by
`rotating a cone-beam x-ray
`source and detector about
`an object”
`
`See Reply (162 Paper 42) at 3-4
`
`See Patent Owner Response (162 Paper 25) at 12
`(emphasis added)
`
`33
`
`
`
`Disclosures of the prior art
`
`34
`
`
`
`Disclosure of the Prior Art—Adler/Depp
`
`US Patent No. 5,207,223
`
`–(162) Ex. 1103 at Fig. 1
`
`35
`
`
`
`Disclosure of the Prior Art—Adler/Depp
`
`US Patent No. 5,207,223
`
`–(162) Ex. 1103 at Fig. 4
`
`36
`
`
`
`Disclosure of the Prior Art—Adler/Depp
`
`US Patent No. 5,207,223
`
`–(162) Ex. 1103 at 5:10–39
`
`37
`
`
`
`Disclosure of the Prior Art—Adler/Depp
`
`* * * * *
`
`* * * * *
`
`US Patent No. 5,207,223
`
`–(162) Ex. 1103 at 7:6–12, 7:18–23, 7:42–58
`
`38
`
`
`
`Disclosure of the Prior Art—Adler/Depp
`
`* * * * *
`
`US Patent No. 5,207,223
`
`–(162) Ex. 1103 at 8:32–38, 8:43–47
`
`39
`
`
`
`Disclosure of the Prior Art—Cho
`
`Physics in Medicine & Biology
`Volume 40, Number 11
`November 1995
`
`* * * * *
`
`–(162) Ex. 1105, Cho, at 024, 015 (emphasis added)
`
`40
`
`
`
`Disclosure of the Prior Art—Cho
`
`Physics in Medicine & Biology
`Volume 40, Number 11
`November 1995
`
`* * * * *
`
`* * * * *
`
`–(162) Ex. 1105, Cho, at 020, 022
`
`41
`
`
`
`Disclosure of the Prior Art—Antonuk
`
`IEEE Transactions on
`Medical Imaging
`Volume 13, Number 3
`September 1994
`
`–(162) Ex. 1106, Antonuk, at 005 (emphasis added)
`
`42
`
`
`
`Disclosure of the Prior Art—Antonuk
`
`IEEE Transactions on
`Medical Imaging
`Volume 13, Number 3
`September 1994
`
`–(162) Ex. 1106, Antonuk, at 007
`
`43
`
`
`
`Disclosure of the Prior Art—Jaffray 1997
`
`Exploring “Target Of The Day”
`Strategies for A Medical Linear
`Accelerator With Conebeam-
`CT Scanning Capability,
`D.A. Jaffray and J.W.Wong
`
`* * * * *
`
`–(162) Ex. 1107, Jaffray 1997, at 004 (citations omitted)
`
`44
`
`
`
`Disclosure of the Prior Art—Jaffray 1997
`
`Exploring “Target Of The Day”
`Strategies for A Medical Linear
`Accelerator With Conebeam-
`CT Scanning Capability,
`D.A. Jaffray and J.W.Wong
`
`–(162) Ex. 1107, Jaffray 1997, at 005
`
`45
`
`
`
`Disclosure of the Prior Art—Jaffray 1997
`
`Exploring “Target Of The Day”
`Strategies for A Medical Linear
`Accelerator With Conebeam-
`CT Scanning Capability,
`D.A. Jaffray and J.W.Wong
`
`* * * * *
`
`–(162) Ex. 1107, Jaffray 1997, at 004 (citations omitted)
`
`46
`
`
`
`Disclosure of the Prior Art—Yan
`
`* * * * *
`…
`
`Radiation Oncology
`Volume 41, Number 3
`June 1, 1998
`
`–(166) Ex. 1308, Yan, at 011
`
`47
`
`
`
`Petitioner’s Prima Facie Obviousness
`Evidence
`
`48
`
`
`
`Prima Facie Obviousness
`
`–US Patent No. 6,842,502
`
`–US Patent No. 7,471,765
`
`49
`
`
`
`Prima Facie Obviousness
`
`–US Patent No. 6,842,502
`
`–US Patent No. 7,471,765
`
`50
`
`
`
`Claim Construction—“three-dimensional information”
`
`A. So Adler/Depp, that is what’s going on. You have radiographic
`projections from two angles ideally octagonal to one another,
`and you are imaging--creating a radiographic image of the
`patient that typically does not show any soft tissues. It shows
`bony landmarks. And if you have surgically implanted fiducial
`markers, those would be also visible by means of what is
`known as triangulation. You can calculate the three-
`dimensional distinct points that you see in these pairs of
`radiographs.
`
`Ali Bani-Hashemi, PhD
`
`–(162) Ex. 1502 at 79:22–80:7
`
`51
`
`
`
`Claim Construction—“three-dimensional information”
`
`Q. And then based on that three-dimensional information,
`according to Adler and Depp methods you’re discussing, the
`position--relative position of the radiation source and the
`patient could be adjusted?
`A. The relative position of the radiation source and the markers
`or landmarks that you have identified could be positioned.
`
`Ali Bani-Hashemi, PhD
`
`–(162) Ex. 1502 at 80:8–16
`
`52
`
`
`
`Claim Construction—“three-dimensional information”
`
`Q. Is the process of comparing the information obtained in Adler’s process to the
`3D reference something that is referred to in the field as using a digitally
`reconstructed radiograph?
`A. That is correct….
`Q. [H]ow would one of skill in the art have understood that process to work, the
`process being the use of a DRR, a digitally reconstructed radiograph, with the
`treatment room image for imaging purposes?...
`A. A digitally reconstructed radiograph is a computed--is a calculated image
`based on planning CT data. In its computation of a radiograph, in a digital
`form, it uses the same geometry that is used to acquire the real image. So if
`everything is perfect, if the patient is in the right position, in the desired
`position, the digitally reconstructed radiograph and the radiograph acquired
`with the real machine are going to match. And any mismatch would indicate
`misalignment of the patient, improper position of the patient.
`
`–(162) Ex. 1502 at 135:10–136:11
`
`53
`
`Ali Bani-Hashemi, PhD
`
`
`
`Claim Construction—“three-dimensional information”
`
`US Patent No. 5,207,223
`
`–(162) Ex. 1103, Adler at 7:6–12
`
`54
`
`
`
`Motivation to Combine—
`Disclosures of Adler/Depp
`
`55
`
`
`
`Motivation to Combine—Level of Skill in the Art Is High
`
`Petitioner’s Definition
`
`Patent Owner’s Definition
`
`“a person with a graduate degree (M.S. or
`Ph.D.) in medical physics or a related field
`(e.g. Physics, Engineering) and three years of
`experience in radiation oncology physics,
`imaging science, and image processing
`related to radiation oncology applications
`beyond the completion date of their degree.”
`
`“a medical physicist with a Ph.D. (or similar advanced
`degree) in physics, medical physics, or a related field,
`and two or more years of experience in radiation
`oncology physics and image processing/computer
`programming related to radiation oncology
`applications. Alternatively, one of ordinary skill in the
`art might have an M.D. degree and a similar level of
`familiarity and practice experience with the radiation
`oncology topics already mentioned, in a therapy
`setting. One of ordinary skill in the art will also be
`familiar with diagnostic imaging, including x-ray and
`computed tomography topics. Finally, as of 1999, one
`of ordinary skill in the art would be familiar with the
`issue of patient setup error in radiation oncology and
`the related topics of image-guided or dynamic
`conformal radiation therapy.”
`
`–(162) Ex. 1102 (Balter Decl.) at ¶ 13
`
`–(162) Ex. 2080 (Bani-Hashemi Decl.) at ¶ 17
`
`56
`
`
`
`Motivation to Combine
`
`In re Applied Materials, Inc., 692 F.3d 1289, 1298
`(Fed. Cir. 2012)
`
`“A reference must be considered for everything that it teaches, not
`simply the described invention or a preferred embodiment.”
`
`57
`
`
`
`Motivation to Combine
`
`In re Inland Steel Co., 265 F.3d 1354, 1361 (Fed. Cir. 2001) (quoting In
`re Boe, 148 U.S.P.Q. 507, 510 (1966))
`
`“[A]ll of the disclosures in a reference, including non-preferred
`embodiments, ‘must be evaluated for what they fairly teach
`one of ordinary skill in the art.’”
`
`58
`
`
`
`Motivation to Combine
`
`Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006);
`Finjan Inc. v. Fireeye, Inc., IPR2014-00492, Paper 29, at 28
`(P.T.A.B. July 10, 2015)
`
`“[A] given course of action often has simultaneous advantages and
`disadvantages, and this does not necessarily obviate motivation to
`combine.”
`
`59
`
`
`
`Disclosure of the Prior Art—Adler/Depp
`
`US Patent No. 5,207,223
`
`–(162) Ex. 1103, Adler at 5:10–39
`
`60
`
`
`
`Motivation to Combine—Depp’s Modification of Adler
`
`US Patent No. 5,427,097
`
`–(162) Ex. 1104, Depp at 2:48–68 (emphasis added)
`
`61
`
`
`
`Motivation to combine—
`Timing / Dose / Image Quality
`
`62
`
`
`
`Motivation to Combine—Timing
`
`* * * * *
`
`* * * * *
`
`Exploring “Target Of The Day”
`Strategies for A Medical Linear
`Accelerator With Conebeam-
`CT Scanning Capability,
`D.A. Jaffray and J.W.Wong
`
`–(162) Ex. 1107, Jaffray 1997, at 005, 006 (emphasis added)
`
`63
`
`
`
`Motivation to Combine—Dose
`
`* * * * *
`
`Exploring “Target Of The Day”
`Strategies for A Medical Linear
`Accelerator With Conebeam-
`CT Scanning Capability,
`D.A. Jaffray and J.W.Wong
`
`–(162) Ex. 1107, Jaffray 1997, at 005, 004 (emphasis added)
`
`64
`
`
`
`Motivation to Combine—Dose
`
`Physics in Medicine & Biology
`Volume 40, Number 11
`November 1995
`
`Exploring “Target Of The Day”
`Strategies for A Medical Linear
`Accelerator With Conebeam-
`CT Scanning Capability
`
`–(162) Ex. 1105, Cho, at 022
`
`–(162) Ex. 1107, Jaffray 1997, at 005
`
`65
`
`
`
`Motivation to Combine—Dose
`
`* * * * *
`
`US Patent No. 6,842,502 B2
`
`–’502 Patent at 11:29–32 and 13:15–21
`
`66
`
`
`
`Motivation to Combine—Dose
`
`Low-dose Megavoltage
`Cone-beam CT for Radiation
`Therapy
`
`* * * * *
`
`* * * * *
`
`–(162) Ex. 1507 at 001,
`007 (emphasis added)
`
`67
`
`
`
`Motivation to Combine—Dose
`
`* * * * *
`
`A Multi-platform Approach to
`Image Guided Radiation
`Therapy (IGRT)
`
`–(162) Ex. 1518 at 001,
`003 (emphasis added)
`
`68
`
`
`
`Motivation to Combine—Image Quality
`
`Allergan, Inc. v. Apotex Inc., 754 F.3d 952, 965-66 (Fed. Cir. 2014);
`Intelligent Bio-Systems, 821 F.3d 1359, 1367 (Fed. Cir. 2016)
`
`“[F]ailure to consider the appropriate scope of the…patent’s claimed
`invention in evaluating the reasonable expectation of
`success…constitutes a legal error that [is] review[ed] without
`deference.”
`
`69
`
`
`
`Motivation to Combine—Image Quality
`
`Q. In your opinion, is an exact CBCT reconstruction necessary to
`use CBCT as an IGRT imaging modality?
`A. It depends.
`Q. What does it depend on?
`A. It depends on how much tolerance you have for the cone-
`beam artifacts that are present in a cone beam acquired with
`insufficient sampling of the radon space.
`
`Ali Bani-Hashemi, PhD
`
`–(162) Ex. 1502 at 53:23–54:6
`
`70
`
`
`
`Motivation to Combine—Image Quality
`
`Q. In the same paragraph, you wrote: Although much effort has
`been expended trying to improve the reconstruction algorithms
`and scanning geometries to eliminate these artifacts, the
`solutions have proved to be impractical to this day. Do you see
`that?
`A. I do.
`Q. Now, CBCT is used as an IGRT imaging modality; is it not?
`A. It is.
`
`Ali Bani-Hashemi, PhD
`
`–(162) Ex. 1502 at 54:7–17
`
`71
`
`
`
`Motivation to Combine—Image Quality
`
`Q. You said IGRT did not introduce an exact CBCT reconstruction
`method. So my question was, what CBCT reconstruction
`method did IGRT introduce?
`A. So the image-guided radiation therapy that is currently
`practiced, currently, with the attachment of a flat-panel imager
`attached to a radiotherapy machine, a linear accelerator, going
`around the patient 360 degrees will have cone-beam artifacts,
`but those for the applications—for many applications of image-
`guided radiotherapy are tolerable.
`
`Ali Bani-Hashemi, PhD
`
`–(162) Ex. 1502 at 56:10–24
`
`72
`
`
`
`Motivation to Combine—Image Quality
`
`Q. The modality for CBCT acquisition that’s described in the
`specifics in the ‘502 patent, does that permit exact CBCT
`reconstruction, in your opinion?
`A. It does not.
`Q. Nevertheless, the authors proposed using their CBCT method
`as an imaging modality for IGRT; did they not?
`A. They did.
`
`Ali Bani-Hashemi, PhD
`
`–(162) Ex. 1502 at 70:20–71:7
`
`73
`
`
`
`Motivation to Combine—Image Quality
`
`Q. [W]ith respect to the methods described in the ’502 patent,
`can the IGRT be performed by comparison of anatomical
`landmarks other than the target?
`A. It depends on the clinical case.
`Q. Are there clinical cases in which that could be done, in your
`opinion?
`A. There could be.
`
`Ali Bani-Hashemi, PhD
`
`–(162) Ex. 1502 at 78:7–20
`
`74
`
`
`
`Motivation to Combine—Image Quality
`
`Q. And you’re saying at the bottom of paragraph 182 that the
`presence of artifacts in reconstructive CBCT images is still a
`problem even today; right?
`A. Depending on the clinical application that you have at hand,
`there are always artifacts in cone-beam CT. There are always
`artifacts in conventional—also conventional CT machines.
`There are always artifacts there.
`
`Ali Bani-Hashemi, PhD
`
`–(162) Ex. 1502 at 170:5–13
`
`75
`
`
`
`Motivation to Combine—Teachings of Cho
`
`* * * * *
`
`Physics in Medicine & Biology
`Volume 40, Number 11
`November 1995
`
`–(162) Ex. 1105, Cho, at 020, 022
`
`76
`
`
`
`Motivation to Combine—Teachings of Cho
`
`IEEE Transactions on
`Medical Imaging
`Volume 13, Number 3
`September 1994
`
`–(162) Ex. 1106, Antonuk, at 003 (emphasis added)
`
`Physics in Medicine & Biology
`Volume 40, Number 11
`November 1995
`
`–(162) Ex. 1105, Cho, at 24 (emphasis added)
`
`
`
`77 77
`
`
`
`Motivation to Combine—Teachings of Antonuk
`
`IEEE Transactions on
`Medical Imaging
`Volume 13, Number 3
`September 1994
`
`–(162) Ex. 1106, Antonuk, at 007 (Ex. 1017)
`
`78
`
`
`
`Motivation to Combine—Teachings of Antonuk
`
`IEEE Transactions on
`Medical Imaging
`Volume 13, Number 3
`September 1994
`
`–(162) Ex. 1106, Antonuk, at 008 (Ex. 1017)
`
`79
`
`
`
`Motivation to Combine—Image Quality
`
`US Patent No. 6,842,502 B2
`
`–’502 Patent at 16:22–65
`
`80
`
`
`
`Motivation to Combine—Image Quality
`
`* * * * *
`
`* * * * *
`
`Cone-Beam Computed
`Tomography With a Flat-Panel
`Imager: Effects of Image Lag,
`J. H. Siewerdsen and
`D. A. Jaffray
`
`–(162) Ex. 1508 at 012
`
`81
`
`
`
`Secondary Considerations
`
`82
`
`
`
`Secondary Considerations—No Nexus
`
`Gnosis S.p.A. v. Merck & Cie, IPR2013-00117, Paper 71 at 31
`(P.T.A.B. June 20, 2014) (quoting In re Kao, 639 F.3d 1057, 1068 (Fed.
`Cir. 2011)), aff’d, Merck & Cie v. Gnosis S.P.A., 808 F.3d 829 (Fed. Cir.
`2015)
`
`“[O]bjective evidence that results from something that is not ‘both
`claimed and novel in the claim’ lacks a nexus to the merits of the
`invention.”
`
`
`83
`
`
`
`Secondary Considerations—No Nexus
`
`Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299, 1312
`(Fed. Cir. 2006) (citations omitted)
`
`“[I]f the commercial success is due to an unclaimed feature of the
`device, the commercial success is irrelevant. So too if the feature
`that creates the commercial success was known in the prior art, the
`success is not pertinent.”
`
`84
`
`
`
`Secondary Considerations—No Nexus
`
`Patent Owner argues four categories
`of secondary considerations
`
` Industry praise
`
` Solution to a long-felt need
`
` Commercial success
`
` Copying
`
`85
`
`
`
`Industry Praise—No Nexus
`
`Journal of Clinical Oncology,
`March 10, 2007
`
`–(162) Ex. 2015 at WBH_Elekta_00583
`
`86
`
`
`
`Industry Praise—No Nexus
`
`R&D Magazine,
`September 2006
`
`–(162) Ex. 1515 at 006
`
`87
`
`
`
`Solution to a Long-Felt Need—No Nexus
`
`Techniques for Adaptive
`Prostate Radiotherapy
`
`–(162) Ex. 2033 at WBH_Elekta_00822, 824 (emphasis added)
`
`88
`
`
`
`Commercial Success—No Nexus
`
`Ethicon Endo-Surgery, Inc. v. Covidien LP, 812 F.3d 1023, 1034
`(Fed. Cir. 2016) (citation omitted)
`
`“Ethicon’s own evidence demonstrates that other non-patented
`features and features known in the prior art underlay the commercial
`success of Covidien’s allegedly infringing product. ‘[I]f the
`commercial success is due to an unclaimed feature of the device’ or
`‘if the feature that creates the commercial success was known in the
`prior art, the success is not pertinent.’”
`
`89
`
`
`
`Commercial Success—No Nexus
`
`Cisco Sys., Inc. v. Crossroads Sys., Inc., IPR2014-01463,
`Paper 49 at 36 (P.T.A.B. Mar. 16, 2016)
`
`“[T]he mere existence of several licenses, without more specific
`information about the circumstances surrounding the licensing,
`is often not a good indicator of nonobviousness.”
`
`90
`
`
`
`Commercial Success—No Nexus
`
`ABT Sys., LLC v. Emerson Elec. Co., 797 F.3d 1350, 1361-62
`(Fed. Cir. 2015)
`
`“While licenses can sometimes tilt in favor of validity in close cases,
`they cannot by themselves overcome a convincing case of invalidity
`without showing a clear nexus to the claimed invention.”
`
`91
`
`
`
`Commercial Success—No Nexus
`
`Ex. 1509 (emphasis added)
`
`Ex. 1510
`
`–(162) Exs. 1509, 1510
`
`92
`
`
`
`Commercial Success—No Nexus
`
`Q. Do you know whether, when the OBI product was first
`launched in March of 2004, it had the capability to do
`cone-beam CT?
`A. It did.
`
`Ali Bani-Hashemi, PhD
`
`–(162) Ex. 1502 at 166:25–167:3
`
`93
`
`
`
`Commercial Success—No Nexus
`
`Varian TrueBeam brochure
`
`–(162) Ex. 2056 at WBH_Elekta_01367 (emphasis added)
`
`94
`
`
`
`Copying—No Nexus
`
`Iron Grip Barbell Co. v. USA Sports, Inc., 392 F.3d 1317, 1325
`(Fed.Cir. 2004)
`
`Not every competing product that arguably falls within the scope of a
`patent is evidence of copying; otherwise, “every infringement suit
`would automatically confirm the nonobviousness of the patent.”
`
`95
`
`
`
`Copying—No Nexus
`
`Wyers v. Master Lock Co., 616 F.3d 1231, 1246
`(Fed. Cir. 2010)
`
`“Our case law holds that copying requires evidence of efforts to
`replicate a specific product, which may be demonstrated through
`internal company documents, direct evidence such as disassembling
`a patented prototype, photographing its features, and using the
`photograph as a blueprint to build a replica, or access to the
`patented product combined with substantial similarity to the patented
`product.”
`
`96
`
`
`
`Copying—No Nexus
`
`Q. How do you know that these workers copied the ’502 patented technology
`rather than came up with it on their own?
`A. Well, it just appears that it’s what has been disclosed by Jaffray prior to that.
`So that’s what I would call copy. Maybe “copied” is a strong word, but—
`Q. Well, that’s what I was getting at, is what you meant by copied. You mean
`that they looked at the ’502 patent and copied it?
`I don’t know if they did that.
`A.
`Q. Do you know one way or another where Thilmann and co-workers got the
`idea to use a flat-panel imager on that system?
`I do not know where they got the idea.
`
`A.
`
`Ali Bani-Hashemi, PhD
`
`–(162) Ex. 1502 at 161:5–22 (emphasis added)
`
`97
`
`
`
`Copying—No Nexus
`
`Ex. 1512
`1997–1999
`
`Ex. 1513
`2000
`
`Ex. 1514
`Submitted Mar. 2002
`
`–(162) Exs. 1512-1514
`
`98
`
`
`
`Thank you
`Thank you
`
`99
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
