Trials@uspto.gov Paper 81
`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 IPR2016-00171
`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
`
`
`
`
`
`
`
`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 IPR2016-00171
`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 IPR2016-00171
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`
`
`I.
`
`INTRODUCTION
`
`A. Background
`Varian Medical Systems, Inc. (“Petitioner”) filed a Petition to institute
`an inter partes review of claims 14‒19 of U.S. Patent No. 7,471,765 B2
`(Ex. 1201, “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 14‒16
`on the basis that these claims would have been obvious over Jaffray 1999
`SPIE,1 Jaffray 1999 JRO,2 Adler,3 and Depp;4 as to claims 17‒19 on the
`basis that these claims would have been obvious over Jaffray 1999 SPIE,
`Jaffray 1999 JRO, Adler, Depp, and Yan;5 as to claims 14‒16 on the basis
`
`
`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. 1205,
`“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. 1206, “Jaffray 1999 JRO”).
`3 U.S. Patent No. 5,207,223, issued May 4, 1993 (Ex. 1203).
`4 U.S. Patent No. 5,427,097, issued June 27, 1995 (Ex. 1204).
`5 D. Yan et al., The Use of Adaptive Radiation Therapy to Reduce
`Setup Error: A Prospective Clinical Study, Int’l J. Radiation Oncology Biol.
`Phys., 41:715–20 (1998) (Ex. 1210) (“Yan”).
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`that these claims would have been obvious over Cho,6 Antonuk,7
`Jaffray 1997,8 Adler, and Depp; and as to claims 17‒19 on the basis that
`these claims would have been obvious over Cho, Antonuk, Jaffray 1997,
`Adler, Depp, and Yan. Paper 14 (“Dec.”).
`Patent Owner filed a Response (Paper 26, “PO Resp.”), and Petitioner
`filed a Reply (Paper 52, “Pet. Reply”). A consolidated oral hearing was held
`on January 31, 2017, and the hearing transcript has been entered in the
`record. Paper 77, (“Tr. 1”); Paper 78 (“Tr. 2”). Patent Owner also filed a
`Motion to Exclude (Paper 60, “PO Mot.”), to which Petitioner filed an
`Opposition (Paper 66, “Pet. Opp.”) and Patent Owner filed a Reply (Paper
`70, “PO Reply”).
`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 ’502 patent, and as similarly recited by independent claims 14
`and 17. Paper 76. Patent Owner filed a Response (Paper 79) and Petitioner
`filed a Response (Paper 80).
`
`
`6 P.S. Cho et al., Cone-beam CT for radiotherapy applications, Phys. Med.
`Biol., 40:1863-83 (1995) (Ex. 1207, “Cho”).
`7 L.E. Antonuk et al., Thin-Film, Flat-Panel, Composite Imagers for
`Projection and Tomographic Imaging, IEEE Transactions on Medical
`Imaging, 13:482-90 (1994) (Ex. 1208, “Antonuk”).
`8 D.A. Jaffray et al., Exploring “Target Of The Day” Strategies for A
`Medical Linear Accelerator With Conebeam-CT Scanning Capability,
`Proceedings of the 12th International Conference on the Use of Computers
`in Radiation Therapy, Medical Physics Publishing, pp. 172-75 (1997)
`(Ex. 1209, “Jaffray 1997”).
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`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 14–19 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: IPR2016-00169 and IPR2016-
`00170. Pet. 1; Paper 4, 2. 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.
`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. 1201, 1:16–21.
`Figure 17(b) (below) depicts a diagrammatic view of one orientation of an
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`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.
`D. Illustrative Claim
`Petitioner challenges claims 14‒19 of the ’765 patent. Pet. 19‒60.
`Claims 14 and 17 are the only independent claims at issue, and are
`reproduced below:
`14. A method of treating an object with radiation, comprising:
`positioning said object on a support table;
`generating three-dimensional information concerning said
`object by:
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`passing multiple x-ray beams in a cone beam form
`through said object from different angles;
`creating a two-dimensional projection image of said
`object based on each of said multiple x-ray beams passing
`through said object by using a flat-panel imager to detect
`portions of said multiple x-ray beams passing through said
`object;
`generating an image containing three-dimensional
`information concerning said object, wherein said three-
`dimensional information concerning said object is based
`on a plurality of two-dimensional projection images; and
`controlling a path of a radiation beam through said
`object by controlling a relative position between said
`radiation beam and said object based on said three-
`dimensional information substantially at a time when said
`detecting portions of said multiple x-ray beams passing
`through said object is performed.
`Ex. 1201, 29:19–41.
`
`17. A method of planning a treatment of an object with radiation,
`comprising:
`positioning said object on a support table;
`generating three-dimensional information concerning said
`object by:
`
`passing multiple x-ray beams in a cone beam form
`from an x-ray source through said object from different
`angles;
`acquiring a two-dimensional projection image of
`
`said
`object based on each of said multiple x-ray beams passing
`through said object by using a flat-panel imager to detect
`portions of said multiple x-ray beams passing through said
`object;
`generating an image containing three-dimensional
`information concerning said object based on said acquired
`two-dimensional projection
`image and other
`two-
`dimensional projection images acquired by said flat panel
`imager; and
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`modifying a radiation therapy treatment plan based
`on said three-dimensional information substantially at a
`time when said detecting portions of said multiple x-ray
`beams passing through said object is performed.
`Id. at 29:47–67.
`Instituted Ground of Unpatentability
`E.
`We instituted inter partes review of claims 14–19 of the ’765 patent
`under the following grounds:
`
`Reference(s)
`
`Basis
`
`Challenged Claims
`
`Jaffray 1999 SPIE, Jaffray 1999
`JRO, Adler, and Depp
`Jaffray 1999 SPIE, Jaffray 1999
`JRO, Adler, Depp, and Yan
`Cho, Antonuk, Jaffray 1997,
`Adler, and Depp
`Cho, Antonuk, Jaffray 1997,
`Adler, Depp, and Yan
`Dec. 35–36.
`
`§ 103(a) 14‒16
`
`§ 103(a) 17‒19
`
`§ 103(a) 14‒16
`
`§ 103(a) 17‒19
`
`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.
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`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.”).
`Patent Owner offers constructions for the limitation of “an image
`containing three-dimensional information concerning said object . . . based
`on a plurality of two-dimensional projection images.” PO Resp. 9‒12. 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 76.
`Both parties submitted briefing. Papers 79, 80.
`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) “controlling a path of a radiation
`beam through said object by controlling a relative position between said
`radiation beam and said object based on said three-dimensional
`information.”
`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. 7‒10. Subsequent to our initial construction, neither Petitioner nor
`Patent Owner provides any more argument or evidence to disturb our
`construction of this term. Accordingly, after considering our initial
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`construction anew, 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 containing three-dimensional information
`concerning said object . . . based on a plurality of two-
`dimensional projection images”
`Independent claim 14 recites “an image containing three-dimensional
`information concerning said object . . . based on a plurality of two-
`dimensional projection images.” Independent claim 17 recites 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. 15–16 (citing Ex. 1201,
`3:41–44; Ex. 1202 ¶ 39); Pet. Reply 1–2 (citing Exs. 1500 ¶¶ 13–25;9 1502,
`78:22–80:16, 83:14–87:11, 135:10–136:11).10 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. 9–12 (citing Ex. 1201, 1:40–50, 2:44–56, 3:41‒56, 5:5–
`9, 16:24‒28, 16:39‒42; Ex. 2080 ¶¶ 87–92). We agree with Petitioner.
`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,
`
`
`9 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 59) and Petitioner’s Response to Patent Owner’s Motion for
`Observations on Cross-Examination (Paper 67).
`10 In the Decision on Institution, we preliminarily agreed with Petitioner’s
`proposed construction of “three-dimensional information.” Dec. 10–11.
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`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. Cir. 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
`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,
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`and depth.” Ex. 2080 ¶ 88. 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. “controlling a path of a radiation beam through said object
`by controlling a relative position between said radiation
`beam and said object based on said three-dimensional
`information”
`Independent claim 14 recites “controlling a path of a radiation beam
`through said object by controlling a relative position between said radiation
`beam and said object based on said three-dimensional information.”
`Independent claim 17 recites substantially similar limitations.11
`
`
`11 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 79, 1 n.1. We
`do not agree with Patent Owner. Independent claim 14 recites “controlling a
`path of a radiation beam through said object by controlling a relative
`position between said radiation beam and said object based on said three-
`dimensional information,” and independent claim 17 recites “modifying a
`radiation therapy treatment plan based on said three-dimensional
`information substantially at a time when said detecting portions of said
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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 80, 1.12 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 79, 5.13
`Both parties agree that this construction is supported by both the
`intrinsic evidence and the extrinsic evidence. Paper 80, 1–5 (citing
`
`
`multiple x-ray beams passing through said object is performed.” 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 14‒
`16 and 18‒19 incorporate these limitations from independent claims 14 and
`17 respectively. Accordingly, we determine that all of the challenged claims
`in this proceeding, claims 14‒19, recite substantially similar limitations to
`the “controls a path” limitation of independent claim 1.
`12 Petitioner asserts this position with respect to independent claim 1.
`Paper 80, 1. For the reasons discussed above, we understand Petitioner’s
`position to be applicable to independent claims 14 and 17 because
`independent claims 14 and 17 recite substantially similar limitations for the
`reasons discussed above.
`13 Patent Owner asserts this position with respect to independent claim 1.
`Paper 79, 5. For the reasons discussed above, we understand Petitioner’s
`position to be applicable to independent claims 14 and 17 because
`independent claims 14 and 17 recite substantially similar limitations for the
`reasons discussed above.
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`Ex. 1201, Abstract, 4:56–61, claims 1, 7, 13, 20, 26, 31);14 Paper 79, 1–5
`(citing Ex. 1201, 26:12–27, claim 1; Ex. 1216, 125‒126; Paper 77, 31:1‒
`33:13; Paper 78, 44:22‒45:13; Ex. 2084, WBH_Elekta_02055,
`WBH_Elekta_02089, WBH_Elekta_02142).
`We agree. We, therefore, construe “controlling a path of a radiation
`beam through said object by controlling a relative position between said
`radiation beam and said object based on said three-dimensional information”
`to encompass a person or user operating the computer to perform the recited
`control functions. As discussed above, independent claim 17 recites 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.
`
`
`14 Petitioner further cites to papers and exhibits filed in IPR2016-00169.
`Varian Med. Sys., Inc. v. William Beaumont Hosp., IPR2016-00169,
`Paper 68 (citing IPR2016-00169: Ex. 1500 ¶¶ 36–38; Ex. 1502, 120:14–
`121:11; Ex. 2080 ¶¶ 61‒65, 108, 109, 126‒130).
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`(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. 1202 ¶ 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.
`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 14‒19
`Principles of Law
`1.
`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
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`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
`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
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`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) and 35 U.S.C.
`§ 102(a)
`Petitioner asserts that (1) claims 14–19 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)15 (Pet. 16–20; Pet.
`Reply 3–5); 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. 16‒
`20; Pet. Reply 6–10).
`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. 14–19); and (2) Jaffray 1999
`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 ’502 Patent, not of
`the coauthors not named as inventors (id. at 19–23).
`Petitioner presents substantially the same arguments and evidence
`here as those asserted in IPR2016-00169. Compare Varian Med. Sys., Inc.
`v. William Beaumont Hosp., IPR2016-00169, Paper 1 (“169 Pet.”), 24‒29
`
`
`15 All references to 35 U.S.C. §§ 102, 103 herein will be pre-AIA.
`
`16
`
`
`
`Case IPR2016-00171
`Patent 7,471,765 B2
`
`with Pet. 16‒20; compare Varian Med. Sys., Inc. v. William Beaumont
`Hosp., IPR2016-00169, Paper 51 (“169 Pet. Reply”), 6‒24 with Pet. Reply
`3‒10. Patent Owner also presents substantially the same arguments and
`evidence here as those asserted in IPR2016-00169. Compare Varian Med.
`Sys., Inc. v. William Beaumont Hosp., IPR2016-00169, Paper 11 (“169
`Prelim. Resp.”), 19‒37 with Prelim. Resp. 23‒35; compare Varian Med.
`Sys., Inc. v. William Beaumont Hosp., IPR2016-00169, Paper 25 (“169 PO
`Resp.”), 20‒45 with PO Resp. 3‒10.16
`As discussed above, independent claims 14 and 17 recite substantially
`the same subject matter as independent claims 1, 7, 20, and 26. Neither
`party has explained, and we are unable to discern independently, any
`substantive differences between the aforementioned claims. That is, neither
`party has presented additional or unique arguments, evidence, or rationale
`towards independent claims 14 and 17 than those that were presented in
`IPR2016-00169 concerning independent claims 1, 7, 20, and 26.
`In light of Petitioner’s and Patent Owner’s arguments and supporting
`evidence, we determine that Petitioner has not shown sufficiently, on this
`record, that both Jaffray 1999 SPIE and Jaffray 1999 JRO are prior art to
`independent claims 14 and 17, and the challenged claims that depend
`therefrom, under 35 U.S.C. § 102(b) for the same reasons we set forth in our
`
`
`16 We recognize that the arguments and evidence argued by both Petitioner
`and Patent Owner in IPR2016-00169 are not identical to the arguments and
`evidence advanced here. Although the arguments and evidence set forth
`here have been reduced from those set forth in IPR2016-00169,
`presumptively in order to comply with word count limits, we understand the
`general thrust of the arguments and evidence in this proceeding and
`IPR2016-00169 to be the same.
`
`17
`
`
`
`Case IPR2016-00171
`Patent 7,471,765 B2
`
`analysis of claims 1‒13 and 20‒31 of the ’765 patent in IPR2016-00169.
`Varian Med. Sys., Inc. v. William Beaumont Hosp., IPR2016-00169, Paper
`79, 13‒21. We also determine that Petitioner has not met its burden of
`showing sufficiently that both Jaffray 1999 SPIE and Jaffray 1999 JRO are
`prior art to independent claims 14 and 17, and the challenged claims that
`depend therefrom, under 35 U.S.C. § 102(a) for the same reasons we set
`forth in our analysis of claims 1‒13 and 20‒31 of the ’765 patent in
`IPR2016-00169. Varian Med. Sys., Inc. v. William Beaumont Hosp.,
`IPR2016-00169, Paper 79, 21‒32.
`Claims 14‒19 as Unpatentable over the Cited Prior Art
`C.
`Petitioner asserts that a combination of Jaffray 1999 SPIE, Jaffray
`1999 JRO, Adler, and Depp renders obvious claims 14–16. Pet. 25–41.
`Petitioner asserts that a combination of Jaffray 1999 SPIE, Jaffray 1999
`JRO, Adler, Depp, and Yan renders obvious claims 17–19. Pet. 41‒50.
`Petitioner relies solely upon Jaffray 1999 SPIE and Jaffray 1999 JRO for
`several limitations of independent claims 14 and 17.
`For example, independent claim 14 recites “generating three-
`dimensional information concerning said object” by “passing multiple x-ray
`beams in a cone beam form through said object from different angles” and
`“creating a two-dimensional projection image of said object based on each
`of said multiple x-ray beams passing through said object by using a flat-
`panel imager to detect portions of said multiple x-ray beams passing through
`said object.” Petitioner relies solely on Jaffray 1999 SPIE and Jaffray 1999
`JRO to meet these claim limitations. See Pet. 27‒28 (citing Ex. 1205, 17,
`25; Ex. 1206, 9, 15; Ex. 1202 ¶¶ 66‒67). Independent claim 17 recites
`similar limitations, and Petitioner again relies solely on Jaffray 1999 SPIE
`
`18
`
`
`
`Case IPR2016-00171
`Patent 7,471,765 B2
`
`and Jaffray 1999 JRO to disclose this limitations. As discussed above,
`however, we not persuaded that Jaffray 1999 SPIE and Jaffray 1999 JRO are
`prior art to claims 14–19. Moreover, Petitioner does not contend that Adler
`or Depp teach these limitations.
`As a result, we are not persuaded that Petitioner has met its burden of
`showing, by a preponderance of the evidence, that claims 14–16 are obvious
`over a combination of Jaffray 1999 SPIE, Jaffray 1999 JRO, Adler, and
`Depp, and claims 17–19 are obvious over a combination of Jaffray 1999
`SPIE, Jaffray 1999 JRO, Adler, and Yan.
`D. Claims 14‒16 as Unpatentable over Cho, Antonuk, Jaffray
`1997, Adler, and Depp; Claims 16‒17 as Unpatentable over
`Cho, Antonuk, Jaffray 1997, Adler, Depp, and Yan
`Petitioner asserts that a combination of Cho, Antonuk, Jaffray 1997,
`Adler, and Depp renders obvious claims 14–16. Pet. 50–58. Petitioner
`asserts that a combination of Cho, Antonuk, Jaffray 1997, Adler, Depp, and
`Yan renders obvious claims 17–19. Pet. 59‒60. Patent Owner disagrees.
`PO Resp. 23–61. Petitioner replies. Pet. Reply 10–25. Claims 14 and 17
`are the independent claims for these grounds.
`In our Decision on Institution, we concluded that the arguments and
`evidence advanced by Petitioner demonstrated a reasonable likelihood that
`claims 14–16 were unpatentable as obvious based on Cho
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