Trials@uspto.gov Paper 79
`Tel: 571-272-7822
`
`Entered May 4, 2017
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`VARIAN MEDICAL SYSTEMS, INC.,
`Petitioner,
`
`v.
`
`WILLIAM BEAUMONT HOSPITAL,
`Patent Owner.
`____________
`
`Case IPR2016-00169
`Patent 7,471,765 B2
`____________
`
`
`
`Before MICHAEL W. KIM, KALYAN K. DESHPANDE, and
`MATTHEW R. CLEMENTS, Administrative Patent Judges.
`
`DESHPANDE, Administrative Patent Judge.
`
`FINAL WRITTEN DECISION
`Inter Partes Review
`35 U.S.C. § 318(a); 37 C.F.R. § 42.73
`
`
`
`
`
`
`

`

`Case IPR2016-00169
`Patent 7,471,765 B2
`
`
`I.
`
`INTRODUCTION
`
`A. Background
`Varian Medical Systems, Inc. (“Petitioner”) filed a Petition to institute
`an inter partes review of claims 1‒13 and 20‒31 of U.S. Patent No.
`7,471,765 B2 (Ex. 1001, “the ’765 patent”). Paper 1 (“Pet.”). William
`Beaumont Hospital (“Patent Owner”) filed a Preliminary Response. Paper
`11 (“Prelim. Resp.”).
`Pursuant to 35 U.S.C. § 314, we instituted inter partes review of the
`ʼ765 patent, on May 5, 2016, under 35 U.S.C. § 103(a), as to claims 1‒13
`and 20‒31 on the basis that these claims would have been obvious over
`Jaffray 1999 SPIE,1 Jaffray 1999 JRO,2 Adler,3 and Depp.4 Paper 14
`(“Dec.”).
`Patent Owner filed a Response (Paper 25, “PO Resp.”), and Petitioner
`filed a Reply (Paper 51, “Pet. Reply”). A consolidated oral hearing was held
`on January 31, 2017, and the hearing transcript has been entered in the
`record. Paper 76 (“Tr.”). Patent Owner also filed a Motion to Exclude
`(Paper 59, “PO Mot.”), to which Petitioner filed an Opposition (Paper 65,
`“Pet. Opp.”) and Patent Owner filed a Reply (Paper 69, “PO Reply”).
`
`
`1 D.A. Jaffray et al., Performance of a Volumetric CT Scanner Based
`Upon a Flat-Panel Imager, SPIE, 3659:204–14 (Feb. 1999) (Ex. 1005,
`“Jaffray 1999 SPIE”).
`2 David A. Jaffray et al., A Radiographic and Tomographic Imaging System
`Integrated into a Medical Linear Accelerator for Localization of Bone and
`Soft-Tissue Targets, Int. J. Radiation Oncology Biol. Phys., 45:773–89 (Oct.
`1999) (Ex. 1006, “Jaffray 1999 JRO”).
`3 U.S. Patent No. 5,207,223, issued May 4, 1993 (Ex. 1003).
`4 U.S. Patent No. 5,427,097, issued June 27, 1995 (Ex. 1004).
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`After the oral hearing, we authorized additional briefing on the proper
`claim construction of the phrase “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,” as recited by independent
`claim 1 of the U.S. Patent 6,842,502 B2, and as similarly recited by
`independent claims 1, 7, 20, and 26. Paper 75. Patent Owner filed a
`Response (Paper 77) and Petitioner filed a Response (Paper 78).
`We have jurisdiction under 35 U.S.C. § 6. This Final Written
`Decision is issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73.
`Pursuant to our jurisdiction under 35 U.S.C. § 6, we conclude, for the
`reasons discussed below, Petitioner has not shown by a preponderance of the
`evidence that claims 1–13 and 20‒31 of the ʼ765 patent are unpatentable
`under 35 U.S.C. § 103(a).
`
`B. Related Proceedings
`The parties indicate that the ’765 patent is involved in the following
`district court case: Elekta Ltd. and William Beaumont Hosp. v. Varian Med.
`Sys., Inc., Case No. 2:15-cv-12169-AC-MKM (E.D. Mich.). Pet. 1; Paper 4,
`2. Petitioner and Patent Owner identify further the following inter partes
`reviews that also involve the ’765 patent: IPR2016-00170 and IPR2016-
`00171. Pet. 1; Paper 4, 1. Patent Owner identifies further the following
`inter partes reviews directed to U.S. Patent 6,842,502 B2 (“the ’502
`patent”), which the ’765 patent claims priority to: IPR2016-00160,
`IPR2016-00162, IPR2016-00163, and IPR2016-00166. Paper 4, 2. Patent
`Owner identifies further the following inter partes reviews directed to U.S.
`Patent 7,826,592 B2, which claims priority to the ’765 patent: IPR2016-
`00187. Id.
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`C. The ʼ765 Patent
`The ’765 patent discloses that it is directed to a cone-beam computed
`tomography system that employs an amorphous silicon flat-panel imager for
`use in radiotherapy applications where images of a patient are acquired with
`the patient in a treatment position on a treatment table. Ex. 1001, 1:16–21.
`Figure 17(b) (below) depicts a diagrammatic view of one orientation of an
`exemplary wall-mounted cone beam computerized tomography system
`employing a flat-panel imager. Id. at 6:48–52.
`
`
`Specifically, Figure 17(b) above shows wall-mounted cone beam
`computerized tomography system 400 including an x-ray source, such as x-
`ray tube 402, and flat-panel imager 404 mounted on gantry 406. Id. at
`19:41‒43. X-ray tube 402 generates beam of x-rays 407 in a form of a cone
`or pyramid. Id. at 19:43‒56. Flat-panel imager 404 employs amorphous
`silicon detectors. Id. at 19:46‒47.
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`D. Illustrative Claim
`Petitioner challenges claims 1‒13 and 20‒31 of the ’765 patent. Pet.
`14‒60. Claim 1 is illustrative of the claims at issue and is reproduced below:
`1. A radiation therapy system comprising:
`a radiation source that moves about an object and directs a
`beam of radiation towards said object;
`a cone-beam computed tomography system comprising:
`an x-ray source that moves about said object and
`emits toward said object from multiple positions around
`said object x-ray beams in a cone-beam form;
`a flat-panel imager positioned to receive x-rays after
`at least a portion of said x-ray beams pass through said
`object, said imager providing an image that contains three-
`dimensional information concerning said object based on
`a plurality of two-dimensional projection images; and
`a computer coupled to said cone-beam computed
`tomography system, wherein said computer receives said
`three-dimensional information and based on said three
`dimensional information received controls a path of said
`beam of radiation through said object by controlling a
`relative position between said radiation source and said
`object, wherein said receiving said x-rays by said flat
`panel imager is performed substantially at a time of
`occurrence of said controlling said path of said beam of
`radiation through said object.
`Ex. 1001, 28:2–24.
`Instituted Ground of Unpatentability
`E.
`We instituted inter partes review of claims 1–13 and 20‒31 of the
`’765 patent under 35 U.S.C. § 103(a) as obvious over a combination of
`Jaffray 1999 SPIE, Jaffray 1999 JRO, Adler, and Depp. Dec. 26–27.
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`II. ANALYSIS
`A. Claim Construction
`We interpret claims of an unexpired patent using the broadest
`reasonable interpretation in light of the specification of the patent in which
`they appear. See 37 C.F.R. § 42.100(b); see also Cuozzo Speed Techs., LLC
`v. Lee, 136 S. Ct. 2131, 2144–46 (2016) (upholding the use of the broadest
`reasonable interpretation standard as the claim construction standard to be
`applied in an inter partes review proceeding). Under the broadest
`reasonable interpretation standard, claim terms are generally given their
`ordinary and customary meaning, as would be understood by one of ordinary
`skill in the art, in the context of the entire disclosure. In re Translogic Tech.
`Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). See Vivid Techs., Inc. v. Am.
`Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly those terms
`need be construed that are in controversy, and only to the extent necessary to
`resolve the controversy.”).
`In our Decision on Institution, we were not persuaded that the terms
`“computer” (claim 1), “controller” (claim 7), “structure” (claim 20), and
`“support table” (claim 26) fail to recite sufficiently definite structure, and,
`therefore, we declined to construe these terms as means-plus-function
`limitations in accordance with 35 U.S.C. § 112 ¶ 6. Dec. 10‒12. Neither
`Patent Owner nor Petitioner provide any more argument or evidence to
`disturb our interpretation of these terms. See PO Resp. 17‒20. Accordingly,
`we do not construe these terms as means-plus-function limitations under 35
`U.S.C. § 112 ¶ 6. See SAS Institute, Inc. v. ComplementSoft, LLC., 825 F.3d
`1341, 1351 (Fed. Cir. 2016) (The Board may not change a claim
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`interpretation from the institution decision where neither party anticipated
`that “already-interpreted terms were actually moving targets.”).
`Patent Owner offers constructions for the terms “radiation therapy
`system,” “cone-beam tomography system,” and “an image that contains
`three-dimensional information concerning said object based on a plurality of
`two-dimensional projection images.” PO Resp. 13‒17. In addition, after
`oral argument, we authorized briefing on the construction of “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,” as recited by independent claim 1 of the ’502 patent, and as
`similarly recited by independent claims 1, 7, 20, and 26. Paper 75. Both
`parties submitted briefing. Papers 77, 78.
`For purposes of this Decision, we determine that it is necessary to
`construe only (1) “substantially at a time;” (2) the claim phrase containing
`“three-dimensional information;” and (3) “wherein said computer receives
`said three-dimensional information and based on said three dimensional
`information received controls a path of said beam of radiation through said
`object by controlling a relative position between said radiation source and
`said object.”
`1. “substantially at a time”
`In our Decision on Institution, we construed “substantially at a time”
`to mean “substantially at the same time,” where the “receiving” of the x-rays
`is substantially at the same time of the “controlling” of the radiation path.
`Dec. 6‒8. Subsequent to our initial construction, Patent Owner agrees with
`our initial construction, and further provides examples of support for our
`construction in the ’765 patent specification. PO Resp. 24‒28. Petitioner
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`does not provide any more argument or evidence to disturb our construction
`of this term. Accordingly, after considering our initial construction anew in
`light of Patent Owner’s assertions, we construe “substantially at a time” to
`mean “substantially at the same time,” where the “receiving” of the x-rays is
`substantially at the same time of the “controlling” of the radiation path.
`2. “an image that contains three-dimensional information
`concerning said object based on a plurality of two-
`dimensional projection images”
`Independent claim 1 recites “an image that contains three-dimensional
`information concerning said object based on a plurality of two-dimensional
`projection images.” Independent claims 7, 20, and 26 recite substantially
`similar limitations. Petitioner asserts that “three-dimensional information”
`should be construed as “information concerning three dimensions of an
`object (such as length, width, and depth).” Pet. 17–18 (citing Ex. 1001,
`3:41–44; Ex. 1002 ¶ 39); Pet. Reply 1–4 (citing Exs. 1500 ¶¶ 7–20;5 1502,
`78:22–80:16, 83:14–87:11, 135:10–136:11).6 Patent Owner asserts that the
`aforementioned claim limitation, in its entirety, should be construed as “a
`volumetric image of an object generated by reconstructing 2-D projection
`images.” PO Resp. 14–17 (citing Ex. 1001, 1:40–50, 2:44–56, 3:41‒56,
`5:5–9, 16:24‒28, 16:39‒42; Ex. 2080 ¶¶ 90–95). We agree with Petitioner.
`
`
`5 In evaluating the assertions set forth in the Declaration of James Balter,
`Ph.D. in Support of Petitioner’ Reply (Ex. 1500), we considered Patent
`Owner’s Motion for Observations on the Cross-Examination of Dr. James
`Balter (Paper 58) and Petitioner’s Response to Patent Owner’s Motion for
`Observations on Cross-Examination (Paper 66).
`6 In the Decision on Institution, we preliminarily agreed with Petitioner’s
`proposed construction of “three-dimensional information.” Dec. 8–10.
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`We begin first with the claim language, and note that “three-
`dimensional information” appears facially to be co-extensive with any
`information relevant to three-dimensions. We discern that “length, width,
`and depth” are just such information. We have considered Patent Owner’s
`above-cited portions of the ’765 patent, but are unpersuaded that those
`portions narrow “three-dimensional information” with sufficient “reasonable
`clarity, deliberateness, and precision” such that one of ordinary skill would
`have understood “three-dimensional information” as co-extensive with
`Patent Owner’s proffered construction. In re Paulsen, 30 F.3d 1475, 1480
`(Fed. Circ 1994). For example, column 2, lines 44‒56 certainly disclose that
`“volume” is desirable, but does not provide any equivalence between “three-
`dimensional information” and “volume.” Indeed, column 2, lines 55–56
`disclose “provide information regarding the location of soft-tissue target
`volumes,” indicating that “information” is a subset of “volume.” In another
`example, column 3, lines 41–56, mentions “three-dimensional (3-D)
`images,” which we agree would appear to require “volumetric data;”
`however, the claim limitation at issue is the broader term “three-dimensional
`information.” In a further example, column 9, line 54‒64, clearly refers to
`“volumetric data,” but does not indicate its relation to “three-dimensional
`information.” In yet another example, column 16, lines 23–25 and 38–42,
`do not recite “three-dimensional information,” instead disclosing “3-D
`structure” and “3-D nature” in relation generally to “volumetric data,” but,
`again, not in a manner sufficient to indicate a particular relationship.
`Finally, in regards to assertions set forth in the Declaration of
`Dr. Hashemi, we discern some merit in his assertion that when reading the
`claim limitation “three-dimensional information” in conjunction with
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`another claim limitation “cone-beam computed tomography,” “a CBCT
`image is a volumetric image that provides the location, shape, and spatial
`orientation of the target volume in all directions, not just its length, width,
`and depth.” Ex. 2080 ¶ 91. Furthermore, the claim limitation does not
`preclude an image having more information than “three-dimensional
`information concerning said object” (such as length, width, and depth),
`“based on a plurality of two-dimensional projection images.” Under Patent
`Owner’s construction, however, the image would be required to have such
`information. We are unpersuaded that such information is required under a
`proper construction of “three-dimensional information” for the reasons set
`forth supra.
`We construe “three-dimensional information” as “information
`concerning three dimensions of an object (such as length, width, and
`depth).”
`
`3. “wherein said computer receives said three-dimensional
`information and based on said three dimensional
`information received controls a path of said beam of
`radiation through said object”
`Independent claim 1 recites “wherein said computer receives said
`three-dimensional information and based on said three dimensional
`information received controls a path of said beam of radiation through said
`object.” Independent claims 7, 20 and 26 recite substantially similar
`limitations.7
`
`
`7 Patent Owner asserts that the limitation “wherein said computer receives
`said three-dimensional information and based on said three dimensional
`information received controls a path of said beam of radiation through said
`object” (hereinafter “controls a path”) is unique to independent claim 1, and
`“is not found in any other claims in this proceeding.” Paper 77, 1 n.1. We
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`Petitioner asserts that “[a person of ordinary skill in the art] would
`understand this claim language to encompass both a computer system
`operated by a user and a system that autonomously carries out the recited
`control function.” Paper 78, 1. Patent Owner agrees that “based on the
`intrinsic evidence and basic principles of claim construction, the relevant
`limitation of claim 1 of the ’765 patent should be construed to encompass a
`computer configured to permit human operation to perform the recited
`control function.” Paper 77, 5.
`Both parties agree that this construction is supported by both the
`intrinsic evidence and the extrinsic evidence. Paper 78, 1–5 (citing
`Ex. 1001, Abstract, 4:56–61, claims 1, 7, 13, 20, 26, 31; Ex. 1500 ¶¶ 36–38;
`Ex. 1502, 120:14–121:11; Ex. 2080 ¶¶ 61‒65, 108, 109, 126‒130); Paper 77,
`1–5 (citing Ex. 1001, 26:12–27, claim 1; Tr. 5:20‒6:14, 9:4‒11:14, 55:17‒
`56:11; Ex. 2080 ¶ 108; Ex. 2084, WBH_Elekta_01912,
`WBH_Elekta_01946, WBH_Elekta_01976, WBH_Elekta_01999).
`
`
`do not agree with Patent Owner. As an initial matter, dependent claims 2‒6
`incorporate this limitation by dependence on independent claim 1.
`Furthermore, independent claim 7 recites “a controller to control a path of
`said radiation through said object,” independent claim 20 recites “said
`radiation therapy system has a structure for controlling a path of said beam
`of radiation through said object,” and independent claim 26 recites “said
`support table controls a path of said beam of radiation through said object.”
`As neither party has explained, and we are unable to discern independently,
`any substantive differences between the aforementioned limitations, we
`determine that all of these limitations are substantially similar to the
`“controls a path” limitation of independent claim 1. Dependent claims 8‒13,
`21‒25, and 27‒31 incorporate these limitations from independent claims 7,
`20, and 26 respectively. Accordingly, we determine that all of the remaining
`challenged claims, claims 2‒13 and 20‒31, recite substantially similar
`limitations to the “controls a path” limitation of independent claim 1.
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`We agree. We, therefore, construe “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” to
`encompass a person or user operating the computer to perform the recited
`control functions. As discussed above, independent claims 7, 20, and 26
`recite similar limitations, and, therefore, we interpret these limitations to
`similarly encompass a person or user operating the computer to perform the
`recited control functions.
`B. Level of Ordinary Skill in the Art
`“Section 103(a) forbids issuance of a patent when ‘the differences
`between the subject matter sought to be patented and the prior art are such
`that the subject matter as a whole would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said
`subject matter pertains.’” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`(2007).
`Dr. Balter, Petitioner’s expert, proffers that a hypothetical person of
`ordinary skill in the art, with respect to and at the time of the’765 Patent,
`would have the following qualifications: “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.” Ex. 1002 ¶ 13. Dr. Hashemi, Patent Owner’s expert,
`essentially agrees, with the only major differences to the above being that an
`M.S. is acceptable in lieu of a Ph.D., and that three years of experience is
`preferred. Ex. 2080 ¶ 17. Nominally, we accept Petitioner’s proffered level
`of ordinary skill in the art based on Dr. Balter more complete explanation.
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`We note, however, that neither party has explained substantively any
`significance that the difference in the proffered levels of ordinary skill in the
`art would have in the obviousness analysis. See Graham v. John Deere Co.,
`383 U.S. 1, 17–18 (1966); Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed.
`Cir. 2001) (“[T]he level of skill in the art is a prism or lens through which a
`judge, jury, or the Board views the prior art and the claimed invention.”);
`Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991) (“The
`importance of resolving the level of ordinary skill in the art lies in the
`necessity of maintaining objectivity in the obviousness inquiry.”). To that
`end, we note that the prior art itself often reflects an appropriate skill level.
`See Okajima, 261 F.3d at 1355.
`B. Whether Jaffray 1999 SPIE and Jaffray 1999 JRO are Prior Art
`to Claims 1‒13 and 20‒31
`Petitioner asserts that (1) claims 1–13 and 20–31 are not entitled to the
`benefit of priority of the February 18, 2000 filing date of provisional
`application no. 60/183,590 (“the ’590 Application”), and, thus, Jaffray 1999
`SPIE and Jaffray 1999 JRO are prior art under 35 U.S.C. § 102(b)8 (Pet. 24–
`29; Pet. Reply 6–14); and (2) even if the claims are entitled to the benefit of
`the February 18, 2000, filing date of the ’590 Application, Jaffray 1999 SPIE
`and Jaffray 1999 JRO are still prior art under 35 U.S.C. § 102(a) (Pet. 29;
`Pet. Reply 14–24).
`Patent Owner asserts that (1) the challenged claims are entitled to the
`benefit of priority of the February 18, 2000, filing date of the
`’590 Application, and, thus, Jaffray 1999 SPIE and Jaffray 1999 JRO are not
`prior art under 35 U.S.C. § 102(b) (PO Resp. 20–37); and (2) Jaffray 1999
`
`
`8 All references to 35 U.S.C. §§ 102, 103 herein will be pre-AIA.
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`SPIE and Jaffray 1999 JRO are not prior art under 35 U.S.C. § 102(a),
`because the portions of Jaffray 1999 SPIE and Jaffray 1999 JRO upon which
`Petitioner relies is the work of the named inventors of the ’765 patent, not of
`the coauthors not named as inventors (id. at 37–45).
`We agree with Patent Owner for the reasons explained below.
`1. Principles of Law
`Petitioner has the burden of persuasion to prove unpatentability by a
`preponderance of the evidence. Dynamic Drinkware, LLC v. Nat’l
`Graphics, Inc., 800 F.3d 1375, 1379 (Fed. Cir. 2015). Petitioner also has the
`initial burden of production to show that a reference is prior art to certain
`claims under a relevant section of 35 U.S.C. § 102. Id. Once Petitioner has
`met that initial burden, the burden of production shifts to Patent Owner to
`argue or produce evidence that the asserted reference is not prior art to
`certain claims, for example, because those claims are entitled to the benefit
`of priority of an earlier-filed application. Id. at 1380. Once Patent Owner
`has met that burden of production, the burden is on Petitioner to show that
`the claims at issue are not entitled to the benefit of priority of the earlier filed
`application. Id.
`Section 102(a) recites “[a] person shall be entitled to a patent
`unless . . . (a) the invention was known or used by others in this country, or
`patented or described in a printed publication in this or a foreign country,
`before the invention thereof by the applicant for patent.” “[O]ne’s own work
`is not prior art under [§] 102(a) even though it has been disclosed to the
`public in a manner or form which otherwise would fall under [§ 102(a)].” In
`re Katz, 687 F.2d 450, 454 (Fed. Cir. 1982). Generally, “[a] patent is ‘to
`another’ when the ‘inventive entities’ are different.” In re Fong, 378 F.2d
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`977, 980 (CCPA 1967); see also In re Land, 368 F.2d 866, 877 (CCPA
`1966) (“There appears to be no dispute as to the law that A is not ‘another’
`as to A, B is not ‘another’ as to B, or even that A & B are not ‘another’ as to
`A & B. But that is not this case, which involves . . . , the question whether
`either A or B is ‘another’ as to A & B as joint inventors under
`section 102(e).”).
`What we have in this case is ambiguity created by the
`printed publication. The article does not tell us anything specific
`about inventorship, and appellant is only one of three authors
`who are reporting on scientific work in which they have all been
`engaged in some capacity at the Harvard Medical School. It was
`incumbent, therefore, on appellant to provide a satisfactory
`showing which would lead to a reasonable conclusion that he is
`the sole inventor.
`In re Katz, 687 F.2d at 455 (footnote omitted).
`2. Whether Jaffray 1999 SPIE and Jaffray 1999 JRO are Prior
`Art under 35 U.S.C. § 102(b)
`Applying the framework from Dynamic Drinkware, we determine that
`Petitioner has met its initial burden of production by asserting that
`independent claims 1, 7, 20, and 26 were not entitled to the benefit of
`priority of the ’590 Application, and, thus, that both Jaffray 1999 SPIE and
`Jaffray 1999 JRO are prior art under 35 U.S.C. § 102(b). Pet. 24–29.
`Specifically, Petitioner asserts that the ’590 Application does not provide
`sufficient written description support for “wherein said receiving said x-rays
`by said flat panel imager is performed substantially at a time of occurrence
`of said controlling said path of said beam of radiation through said object,”
`as recited in independent claims 1, and as similarly recited by independent
`claims 7, 20, and 26, because “the provisional application discloses a
`benchtop CBCT-FPI system” and “has no discussion of using the benchtop
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`system to control a path of a radiotherapy beam substantially at the same
`time as the x-rays are received by the FPI.” Id. at 24–25; see also id. at 26
`(“One of ordinary skill in the art, would not have recognized that the
`applicants possessed the missing “substantially at a time” element based on
`the ’590 provisional application.”). As a result, according to Petitioner, the
`effective date of independent claims 1, 7, 20, and 26 is February 16, 2001,
`the filing date of U.S. Application No. 09/788,335, which issued as the ’502
`patent that the ’765 claims priority to. Id. at 27‒28. Petitioner concludes
`that Jaffray 1999 SPIE and Jaffray 1999 JRO are each prior art under 35
`U.S.C. § 102(b), because each has a publication date earlier than February
`18, 2000. Id. at 29.
`The burden of production having shifted to Patent Owner, Patent
`Owner asserts that independent claims 1, 7, 20, and 26 are entitled to the
`benefit of priority of the ’590 Application, because the ’590 Application
`provides sufficient written description support for the disputed limitation in
`independent claim 1. Prelim. Resp. 19–37 (citing Polaris Wireless, Inc. v.
`TruePosition, Inc., Case No. IPR2013-00323, 2013 WL 8563953, at *17
`(PTAB Nov. 15, 2013) (Paper 9) (“Patent Owner has to make a sufficient
`showing of entitlement to earlier filing date or dates, in a manner that is
`commensurate in scope with the specific points and contentions raised by
`Petitioner.”)). Specifically, Patent Owner identifies several portions of the
`’590 Application that allegedly provide written description support for the
`aforementioned limitation of independent claims 1, 7, 20, and 26.
`Patent Owner principally identifies the following portions: “[t]he
`specific geometries used in the discussion herein are shown in Figure 2, and
`are set to simulate the imaging geometry that would be implemented for a
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`CBCT system incorporated on a radiotherapy treatment machine” (Ex. 1009,
`7:13–16); “the host computer advances the motorized rotation stage”
`(Ex. 1009, 11:6); and “[a] CBCT system is proposed for radiotherapy
`guidance on a treatment-by-treatment basis using CT data obtained with a
`kV x-ray source and a large-area, indirect detection flat-panel imager (FPI).
`This imaging system can be installed on a conventional radiotherapy linear
`accelerator for application to image-guided radiation therapy” (Ex. 1009,
`6:11–15). PO Resp. 29–30. In addition, Patent Owner identifies Figure 3 of
`the ’590 Application, and provides an annotated comparison, reproduced
`below, to Figure 17(c) of the ’765 patent:
`
`Id. at 31.
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`Patent Owner also argues that “[a person of ordinary skill in the art]
`would have recognized that disclosure of a conventional medical linear
`accelerator at the time of the invention expressly disclosed a linear
`accelerator computer-controlled support tables to position the patient” (PO
`Resp. 31), and that “a [person of ordinary skill in the art] would have
`recognized that the disclosed drum-based Elekta linear accelerator”—like
`that disclosed in Figure 3 of the ’590 Application—“included a computer
`control system, which facilitated control of the relative position of the
`patient and radiation source.” PO Resp. 32 (citing Ex. 2080 ¶¶ 129‒130).
`As a result, according to Patent Owner, a person of ordinary skill in the art
`would have understood the ’590 Application’s recitation of “image-guided
`radiation therapy” (Ex. 1009, 6:14–15), “guiding radiation therapy on a
`medical linear accelerator” (id. at 31:6–7), “on-line imaging and guidance”
`(id. at 1:19), “on-line tomographic guidance” (id. at 2:18–19), and
`“navigational imaging for therapies” (id. at 30:5–6) to
`constitute an express disclosure of the process of imaging a target
`tumor immediately prior to treatment, comparing the image to
`prior diagnostic or simulation images, and correcting the
`patient’s position on the treatment couch relative to the treatment
`beam
`PO Resp. 33. Patent Owner concludes that
`based on the explicit reference to performing image-guided
`radiation therapy with a cone-beam CT, flat-panel imaging
`system on a medical linear accelerator, one of ordinary skill in
`the art would have understood the ’590 provisional to expressly
`disclose possession of a system that obtains 3-D images and then
`controls the path of the beam (based on the 3-D images) while
`the patient is on the linear accelerator immediately prior to
`treatment, i.e. “substantially at a time” of treatment. (Ex. 2080 at
`¶¶ 136-139).
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`Id. at 35‒36.
`We find that Patent Owner has produced sufficient evidence to have
`met its burden of production, and the burdens9 concerning this issue are on
`Petitioner. Petitioner replies that the support Patent Owner relies on is in the
`’765 patent specification, and not in the ’590 Application. Pet. Reply 7–8.
`According to Petitioner, “[i]t is undisputed that the path of the radiation
`source can be controlled by manual means in which a human operator, not a
`computer, performs the tasks of image analysis and determination of path
`control based on the image.” Id. at 10; see also id. at 11 (arguing that known
`adjustment of beam position, in real time, based on imaging was “manual
`and unaided by computer control of beam path based on imaging.”).
`Having considered the arguments and evidence, we agree with Patent
`Owner that the ’590 Application provides sufficient written description
`support for “wherein said receiving said x-rays by said flat panel imager is
`performed substantially at a time of occurrence of said controlling said path
`of said beam of radiation through said object.” As an initial matter, we
`understand that Petitioner acknowledges that the ’590 Application supports
`the limitation “substantially at a time,” and arguments raised towards this
`limitation were originally presented as arguments towards indefiniteness.
`MR. SMITH: . . . The way it started off, when we petitioned, we
`said that that [sic] substantially limitation was vague because it
`was a term of degree. And when is it? What's substantially at a
`time? We have no idea. And the initial institution decision
`rejected that but agreed with us substantially at a time means it
`was substantially at a time, I believe. I think I messed up those
`two, but basically substantially at a t