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`Trials@uspto.gov
`Tel: 571-272-7822
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`Paper 60
`Entered: May 4, 2017
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`VARIAN MEDICAL SYSTEMS, INC.,
`Petitioner,
`
`v.
`
`WILLIAM BEAUMONT HOSPITAL AND ELEKTA, LTD.,
`Patent Owner.
`
`
`Case IPR2016-00187
`Patent 7,826,592 B2
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`
`Before MICHAEL W. KIM, KALYAN K. DESHPANDE, and
`MATTHEW R. CLEMENTS, Administrative Patent Judges.
`
`KIM, Administrative Patent Judge.
`
`

`

`IPR2016-00187
`Patent 7,826,592 B2
`
`
`I.
`
`INTRODUCTION
`
`Background
`A.
`Varian Medical Systems, Inc. (“Petitioner”) filed a Petition requesting
`inter partes review of claims 25–29 and 35–42 of U.S. Patent No. 7,826,592
`B2 (Ex. 1001, “the ’592 patent”). Paper 1 (“Pet.”). William Beaumont
`Hospital and Elekta, Ltd. (collectively “Patent Owner”) filed a Preliminary
`Response. Paper 11 (“Prelim. Resp.”). On May 6, 2016, based on the
`record before us at the time, we instituted an inter partes review of claims
`25–29 and 35–42. Paper 14 (“Decision to Institute” or “Dec.”). We
`instituted review on the following challenges to the claims:
`
`Reference(s)
`
`Basis
`
`Challenged Claim(s)
`
`Jaffray ’971 and Span2
`Jaffray ’97, Span, and Antonuk3
`Jaffray ’97
`Jaffray ’97 and Lim4
`
`§ 103(a) 25–28
`§ 103(a) 29
`§ 102(b) 35 and 40–42
`§ 103(a) 36–39
`
`Dec. 22–23.
`After institution, Patent Owner filed a Patent Owner Response (Paper
`25, “PO Resp.”), and Petitioner filed a Reply (Paper 41, “Reply”). Petitioner
`relies on the Declarations of Dr. James J. Balter (Exs. 1003, 1500). Patent
`
`
`1 D.A. Jaffray and J.W. Wong, Exploring “Target of the Day” Strategies
`for a Medical Linear Accelerator With Conebeam-CT Scanning
`Capability, PROCEEDINGS OF THE XIITH INTERNATIONAL CONFERENCE
`ON THE USE OF COMPUTERS IN RADIATION THERAPY, MEDICAL PHYSICS
`PUBLISHING, pp. 172–75 (May 27–30, 1997) (Ex. 1004, “Jaffray ’97”)
`2 U.S. Patent No. 4,459,485, issued July 10, 1984 (Ex. 1005).
`3 U.S. Patent No. 5,262,649, issued Nov. 16, 1993 (Ex. 1006).
`4 WO 91/06876, published May 16, 1991 (Ex. 1008).
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`Patent 7,826,592 B2
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`Owner relies on the Declaration of Ali Bani-Hashemi, Ph.D. (Ex. 2080). We
`heard oral argument on January 31, 2017. A transcript of the argument has
`been entered in the record (Paper 59, “Tr.”).
`We have jurisdiction under 35 U.S.C. § 6. The evidentiary standard is
`a preponderance of the evidence. See 35 U.S.C. § 316(e); 37 C.F.R.
`§ 42.1(d). This Final Written Decision is issued pursuant to 35 U.S.C.
`§ 318(a) and 37 C.F.R. § 42.73.
`For the reasons expressed below, we conclude that Petitioner has
`demonstrated by a preponderance of evidence that claims 25–29 and 35–42
`are not patentable.
`
`Related Proceedings
`B.
`Petitioner and Patent Owner identify the following district court
`proceeding concerning the ’592 Patent: Elekta Ltd. v. Varian Medical
`Systems, Inc., No. 2:15-cv-12169-AC-MKM (E.D. Mich.). Pet. 1; Paper 9,
`1. Patent Owner identifies further the following inter partes reviews
`directed to U.S. Patent No. 6,842,502 B2, to which the ’592 Patent claims
`priority: IPR2016-00160, IPR2016-00162, IPR2016-00163, and IPR2016-
`00166. Paper 9, 2. Patent Owner identifies additionally the following inter
`partes reviews directed to U.S. Patent No. 7,471,765 B2, to which the ’592
`Patent claims priority: IPR2016-00169, IPR2016-00170, and IPR2016-
`00171. Id.
`
`The ’592 Patent
`C.
`The ’592 Patent discloses that it is directed to a conebeam computed
`tomography system that employs an amorphous silicon flat-panel imager for
`use in radiotherapy applications where images of a patient are acquired with
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`the patient in a treatment position on a treatment table. Ex. 1001, 1:29–34.
`Figure 17(b) of the ’592 Patent is reproduced below.
`
`
`Figure 17(b) depicts a diagrammatic view of one orientation of an exemplary
`wall-mounted cone beam computerized tomography system employing a
`flat-panel imager. Ex. 1001, 6:60–63. Specifically, wall-mounted cone
`beam computerized tomography system 400 includes an x-ray source, such
`as x-ray tube 402, and flat-panel imager 404 mounted on gantry 406.
`Ex. 1001, 19:53–58. X-ray tube 402 generates beam of x-rays 407 in a form
`of a cone or pyramid. Ex. 1001, 19:58–61. Flat-panel imager 404 is
`mounted to a face of flat, circular rotatable drum 408 of gantry 406.
`Ex. 1001, 20:11–14. X-ray beam 407 produced by x-ray tube 402 is
`approximately orthogonal to treatment beam 411 produced by radiation
`therapy source 409. Ex. 1001, 20:14–16. Attachment of flat-panel imager
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`404 is accomplished by imager support system 413, which includes arms
`410, 412, 415 that are attached to plate 424. Ex. 1001, 20:17–19.
`Figures 20(a)–(b) of the ’592 patent are reproduced below.
`
`
`Figures 20(a)–(b) show a front view of a wall-mounted cone beam
`computerized tomography system of Figure 17, but employing another
`mechanism for attaching flat-panel imager 404. Ex. 1001, 7:6–9.
`Specifically, imager support system 507 includes pivoting arm 510 that has
`one end 511 pivotably attached to a lower corner of radiation therapy source
`409, and another end 512 pivotably attached to an end of flat-panel imager
`404. Ex. 1001, 21:33–38. Using this mechanism, flat-panel imager 404 is
`movable from a retracted position, as shown in Figure 20(a), to an extended
`position, as shown in Figure 20(b), and vice versa. Ex. 1001, 21:38–41.
`
`Illustrative Claims
`D.
`Petitioner challenges claims 25–29 and 35–42 of the ’592 Patent.
`Claims 25 and 35 are the only independent claims at issue, and are
`reproduced below:
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`25. An imaging system comprising:
`a rotating drum;
`an x-ray source that emits x-rays towards an object,
`wherein said x-ray source is attached to said rotating drum;
`an imager that receives x-rays from said object based on
`said emitted x-rays and forms an image of said object;
`an imager support system that attaches said imager to said
`rotating drum, wherein said imager support system comprises: a
`pivoting arm that has one end pivotably attached to said rotating
`drum and another end pivotably attached to said imager.
`Ex. 1001, 29:34–45.
`35. A method of adding an auxiliary imaging system to an
`existing radiation therapy system, said method comprising:
`providing an existing radiation therapy system that
`comprises a radiation source that is supported on a support
`structure; and
`attaching an imager that does not directly face said
`radiation source to said support structure.
`Ex. 1001, 30:26–32.
`
`II. ANALYSIS
`
`Claim Interpretation
`A.
`“A claim in an unexpired patent that will not expire before a final
`written decision is issued shall be given its broadest reasonable construction
`in light of the specification of the patent in which it appears.” 37 C.F.R.
`§ 42.100(b); see also Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131,
`2142 (2016) (affirming that USPTO has statutory authority to construe
`claims according to 37 C.F.R. § 42.100(b)). When applying that standard,
`we interpret the claim language as it would have been understood by one of
`ordinary skill in the art in light of the Specification. In re Suitco Surface,
`Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010). Thus, we generally give claim
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`terms their ordinary and customary meaning. See In re Translogic Tech.,
`Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007) (“The ordinary and customary
`meaning ‘is the meaning that the term would have to a person of ordinary
`skill in the art in question.’”).
`In the Decision to Institute, we construed the claim terms “pivotably
`attached” and “imager.” Dec. 7–9. After institution, neither party disputes
`the Board’s construction of those terms. PO Resp. 11–12; Reply 2.
`Accordingly, we adopt the constructions set forth in the Decision to Institute.
`See SAS Institute, Inc. v. ComplementSoft, LLC., 825 F.3d 1341, 1351 (Fed.
`Cir. 2016) (The Board may not change a claim interpretation from the
`institution decision where neither party anticipated that “already-interpreted
`terms were actually moving targets.”). No other claim terms require express
`constructions. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795,
`803 (Fed. Cir. 1999) (explaining that only those terms that are in controversy
`need to be construed, and then only to the extent necessary to resolve the
`controversy).
`
`The Parties’ Post-Institution Arguments
`B.
`In our Decision to Institute, we concluded that the argument and
`evidence adduced by Petitioner demonstrated a reasonable likelihood that
`claims 25–29 and 35–42 were not patentable based on the challenges
`identified in the table in Part I.A above. Dec. 10–22. We must now
`determine whether Petitioner has established by a preponderance of the
`evidence that the specified claims are unpatentable over the cited prior art.
`35 U.S.C. § 316(e). We previously instructed Patent Owner “any arguments
`for patentability not raised in the [Patent Owner Response] will be deemed
`waived.” Paper 15, 2–3; see also 37 C.F.R. § 42.23(a) (“Any material fact
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`not specifically denied may be considered admitted.”). Additionally, the
`Board’s Trial Practice Guide states that the Patent Owner Response “should
`identify all the involved claims that are believed to be patentable and state
`the basis for that belief.” Office Patent Trial Practice Guide, 77 Fed. Reg.
`48,756, 48,766 (Aug. 14, 2012).
`In connection with the arguments and evidence adduced by Petitioner
`in the Petition to support its positions that Patent Owner chose not to address
`in its Patent Owner Response, the record now contains persuasive,
`unrebutted arguments and evidence presented by Petitioner regarding the
`manner in which the asserted prior art teaches all corresponding elements of
`the claims against which that prior art is asserted. Based on the
`preponderance of the evidence before us, we conclude that the prior art
`identified by Petitioner describes all limitations of the reviewed claims, in
`view of our analysis of those that Patent Owner contested in the Patent
`Owner Response, which we address below.
`
`Person of Ordinary Skill in the Art
`C.
`Dr. Balter opines the following concerning the person of ordinary skill
`in the art:
`
`In my opinion, a person of ordinary skill in the art as of
`February 2000 would be 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 this art will also be familiar with diagnostic imaging,
`including x-ray and computed tomography topics. In addition,
`one of ordinary skill in this art would also be familiar with the
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`
`topics of image-guided or dynamic conformal radiation therapy.
`Finally, one of ordinary skill in this art would further have at least
`two years of practical experience working with medical linear
`accelerators in the context of image guided radiation therapy.
`Ex. 1003 ¶ 14.
`Dr. Bani-Hashemi opines the following concerning the same:
`It is my opinion that a person of ordinary skill in the art
`relevant to the ’592 Patent would be 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.
`Ex. 2080 ¶ 17.
`The Declarants are in agreement that the person of ordinary skill in
`the art has a relatively high level of skill, and also are in agreement as to the
`basic qualifications for that person. Accordingly, we adopt Patent Owner’s
`Declarant’s articulation of the level of ordinary skill as our own, if for no
`other reason than for conciseness, with the understanding that the differences
`between the proffered levels of ordinary skill are, at best, limited and
`inconsequential in our analysis.
`
`D. Claims 35 and 40–42: Anticipation by Jaffray ’97.
`Petitioner challenges the patentability of claims 35 and 40–42 on the
`ground that those claims are anticipated by Jaffray ’97. Pet. 41–45 (citing
`Exs. 1003, 1004). Patent Owner does not respond to this challenge. See
`generally PO Resp. 12–29; Tr. 17:23–18:13 (MR. McCRAW: “So you are
`referring to ground 5, which is petitioner’s anticipation ground. Patent
`owner has not provided any argument on those claims. Petitioner has the
`burden to show invalidity. But we haven’t provided any argument.”).
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`
`Jaffray ’97 (Ex. 1004)5
`1.
`Jaffray ’97 discloses a conebeam computed tomography (CBCT)
`scanner for integration with a medical linear accelerator. Ex. 1004, 172.
`Figure 1 of Jaffray ’97 is set forth below.
`
`
`Figure 1 is a schematic view of a dual-beam system used for CBCT.
`Ex. 1004, 173. Two fluoroscopic imaging systems, kV imager and MV
`imager, are attached to a gantry, and are configured to receive exposure from
`an opposing kV x-ray tube and MV source, respectively. Ex. 1004, 173–74.
`The gantry rotates continuously. Ex. 1004, 174.
`
`Analysis
`2.
`Petitioner asserts that Jaffray ’97 anticipates claims 35 and 40–42.
`Pet. 41–45 (citing Exs. 1003, 1004). For example, independent claim 35
`recites “providing an existing radiation therapy system that comprises a
`radiation source that is supported on a support structure.” Petitioner cites
`Jaffray ’97 for disclosing a rotating gantry including an MV source.
`Independent claim 35 recites further “attaching an imager that does not directly
`
`
`5 We refer to the original pagination of Jaffray ’97, and not Petitioner’s
`pagination.
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`face said radiation source to said support structure.” Petitioner cites Jaffray
`’97 for disclosing a kV imager that does not directly face the MV source.
`Petitioner provides similar analyses for claims 40–42. Patent Owner does
`not dispute any of the Petitioner’s assertions.
`
`Conclusion
`3.
`After considering all of the above-referenced evidence and arguments
`anew, in light of the appropriate standard, we are persuaded that Petitioner
`has shown, by a preponderance of the evidence, that claims 35 and 40–42
`are anticipated by Jaffray ’97.
`
`Claims 25–28: Obviousness in view of Jaffray ’97 and Span
`E.
`Petitioner challenges the patentability of claims 25–28 on the ground
`that the claims are obvious in light of Jaffray ’97 and Span. Pet. 19–29
`(citing Exs. 1003–1005). Patent Owner disagrees. PO Resp. 12–29 (citing
`Exs. 1004, 1005, 1008, 2080). Petitioner replies. Reply 3–10 (citing
`Exs. 1001, 1003, 1004, 1005, 1500).
`The Supreme Court in KSR International Co. v. Teleflex Inc., 550 U.S.
`398 (2007), reaffirmed the framework for determining obviousness as set
`forth in Graham v. John Deere Co., 383 U.S. 1 (1966). The KSR Court
`summarized the four factual inquiries set forth in Graham that we apply in
`determining whether a claim is reasonably likely to be unpatentable as
`obvious under 35 U.S.C. § 103(a) as follows:
`1. determining the scope and content of the prior art,
`2. ascertaining the differences between the prior art and the
`claims at issue,
`3. resolving the level of ordinary skill in the pertinent art, and
`4. considering objective evidence present in the application
`indicating obviousness or nonobviousness.
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`KSR, 550 U.S. at 406. With these standards in mind, we address the
`challenges based on obviousness below.
`
`Span (Ex. 1005)
`1.
`Span discloses a radiation apparatus where an element to be
`positioned is supported by a balance suspension system. Ex. 1005, 1:7–11.
`Figure 1a of Span is set forth below.
`
`
`Figure 1 of Span is a perspective view of a radiation apparatus where base 2
`supports housing 6 and accommodates a suspension system for gamma
`camera 8. Ex. 1005, 2:29–34. Specifically, gamma camera 8 is suspended
`from arm 14 of supporting device 12 via pivot 10. Ex. 1005, 2:35–37.
`
`Analysis
`2.
`Petitioner asserts that a combination of Jaffray ’97 and Span renders
`obvious claims 25–28. Pet. 19–29. For example, independent claim 25
`recites “a rotating drum.” Petitioner cites Jaffray ’97 for disclosing a gantry
`that is rotated. Independent claim 25 recites further “an x-ray source that
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`emits x-rays towards an object, wherein said x-ray source is attached to said
`rotating drum.” Petitioner cites Jaffray ’97 for disclosing a kV x-ray tube.
`Independent claim 25 recites additionally “an imager that receives x-rays
`from said object based on said emitted x-rays and forms an image of said
`object.” Petitioner cites Jaffray ’97 for disclosing a kV imager. Independent
`claim 25 recites also “an imager support system that attaches said imager to
`said rotating drum, wherein said imager support system comprises: a
`pivoting arm that has one end pivotably attached to said rotating drum and
`another end pivotably attached to said imager.” Petitioner cites Span for
`disclosing arm 14 that is (1) connected to gamma camera 8 via pivot 10, and
`(2) connected to rotating support ring 22 via pivot 24. For the rationale to
`modify Jaffray ’97 in view of the aforementioned portion of Span, Petitioner
`asserts the following:
`One of ordinary skill in the art would have been motivated
`to combine the imaging support structure of Span with the x-ray
`tomography system of Jaffray ’97. In both settings, heavy
`diagnostic equipment is commonly mounted on a gantry to
`facilitate movement of the equipment and therefore both settings
`present similar mounting difficulties. (Balter Decl. ¶ 73.)
`Although Jaffray ’97 teaches mounting one or more detectors to
`the drum, it does not teach an imager support system pivotably
`mounted to the drum or the imager. (Ex. 1004 at Fig. 1.)
`However, Jaffray ’97 does suggest that “important characteristics
`[of the imaging system] include . . . (iii) flexibility of use . . . and,
`(v) convenience.” (Id. at 5.) Span addresses this flexibility and
`convenience, explaining that, with the disclosed support
`structure, equipment “can be very easily moved by rotation of
`the arm 14 about the pivot 24 . . . .” (Ex. 1005 at 2:59–63.) Thus,
`it would have been obvious to the skilled artisan to apply the
`known mounting technique of Span to the known x-ray source
`and imaging techniques of Jaffray ’97 with no change in their
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`respective functions and with a reasonable expectation of
`success. (Balter Decl. ¶¶ 74–75.)
`Pet. 27–28. Petitioner provides similar analyses for claims 26–28.
`Patent Owner argues that a person of ordinary skill in the art would
`not have modified the CBCT imaging system of Jaffray ’97 to include the
`movable support of Span, because a movable support does not provide any
`benefit to a CBCT system. PO Resp. 14–20 (citing Exs. 1005, 1:12–21,
`1:30–35, 2:35–36, 2:38–44, 2:48–55, 2:59–63, 3:2–4, Fig. 1a; 2080 ¶¶ 78–
`85, 100–103, 117). In particular, Patent Owner asserts that the nuclear
`imaging system of Span is expressly designed to facilitate movement of a
`detector toward and away from a patient to minimize the distance between
`the patient and the detector, whereas movement of the detector to be close to
`a patient is unimportant for CBCT systems like Jaffray ’97. PO Resp. 14–20
`(citing Exs. 1005, 1:12–21, 1:30–35, 2:35–36, 2:38–44, 2:48–55, 2:59–63,
`3:2–4, Fig. 1a; 2080 ¶¶ 78–85, 100–103, 117).
`Patent Owner’s arguments are not persuasive. Initially, we note that
`Patent Owner does not dispute that Span discloses the movable imager
`support system recited in claim 25. Nor does Patent Owner dispute that
`Span’s movable support system is a known improvement. Ex. 1005, 2:59–
`63 (disclosing that due to the movable support structure, imaging equipment
`“can be very easily moved by rotation of the arm 14 about the pivot 24”).
`Instead, Patent Owner alleges that one of ordinary skill would not have
`modified the CBCT system of Jaffray ’97 to include the Span’s movable
`support system, for the known improvement of facilitating movement of a
`detector toward and away from a patient, because there is no need for such
`an improvement for a CBCT system. PO Resp. 14–20 (citing Exs. 1005,
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`1:12–21, 1:30–35, 2:35–36, 2:38–44, 2:48–55, 2:59–63, 3:2–4, Fig. 1a; 2080
`¶¶ 78–85, 100–103, 117).
`Patent Owner’s argument is misplaced, because Petitioner’s proffered
`modification is for the known improvement of movement generally, and not
`limited to the movement of a detector toward and away from a patient
`disclosed in Span. Specifically, Petitioner asserts:
`Jaffray ’97 does suggest that “important characteristics [of the
`imaging system] include . . . (iii) flexibility of use . . . and, (v)
`convenience.” (Id. at 5.) Span addresses this flexibility and
`convenience, explaining that, with the disclosed support
`structure, equipment “can be very easily moved by rotation of
`the arm 14 about the pivot 24 . . . .’’ (Ex. 1005 at 2:59–63.)
`
`Pet. 27–28. KSR Int’l Co., 550 U.S. at 419 (“The second error of the Court
`of Appeals lay in its assumption that a person of ordinary skill attempting to
`solve a problem will be led only to those elements of prior art designed to
`solve the same problem.”). The Petition does not rely on the movement in
`Span being limited to “toward and away from a patient.” See generally Pet.
`27–28.
`Even assuming that we agree with Patent Owner’s assertion that
`Span’s support system is specifically designed to permit movement of the
`detector toward and away from a patient, we are unpersuaded by the
`following implication, required for Patent Owner to prevail on this assertion,
`that one of ordinary skill would have realized only this one specific type of
`movement as being the only benefit associated with a moveable system. As
`indicated above, the level of ordinary skill is “a graduate degree (M.S. or
`Ph.D.) in medical physics or a related field (e.g. Physics, Engineering).” We
`find that such a person, having a graduate degree in fields such as physics or
`engineering, would have had no trouble appreciating something as basic as
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`the concept of “making something movable has advantages,” which would
`include, at a minimum, the self-evident ability to move should a need arise,
`such as for readjustment. KSR Int’l Co., 550 U.S. at 421 (“A person of
`ordinary skill is also a person of ordinary creativity, not an automaton”); see
`also Reply 6–7 (citing Exs. 1001, 21:55–60; 1004, 173–174; Ex. 1500
`¶¶ 14–15) (movement preferable for purposes of flexibility and convenience,
`for example, to avoid collisions).
`Furthermore, Span explicitly teaches that the movable support
`structure provides benefits to not only imaging systems involving gamma
`cameras, but also to X-ray imaging systems. Ex. 1005, 1:67–2:5; see also
`Ex. 1500 ¶ 17 (confirming relevance of citation); Dec. 12–13 (“Span itself
`discloses that it is a ‘radiation apparatus’ generally (Ex. 1005, 1:7), and that
`its source and detector may be x-rays. Ex. 1005, 4:3–7.”). Jaffray ’97
`discloses a CBCT system, which is a type of X-ray imaging system.
`Ex. 1004, 173 (“The conebeam imaging sequence consists of ~100
`exposures over 194° of rotation. . . . At a fixed angular increment, the x-ray
`generator delivers a short 30 ms exposure (100 mA).”).6 Consequently, we
`are persuaded, for the reasons stated in the Petition at pages 27 to 28, that
`Petitioner’s proposed modification to the CBCT system, i.e., an X-ray
`imaging system, of Jaffray ’97 to include the movable support system of
`Span, which Span expressly discloses can be used in X-ray imaging systems,
`would have been obvious to a person of ordinary skill in the art as the
`
`6 Indeed, the ’592 Patent itself discloses that “[c]one-beam computed
`tomography has been a topic of active research and development for over a
`decade in areas such as nuclear medicine . . . .” Ex. 1003 ¶¶ 73, 126 (citing
`Ex. 1001, 19:33–37). Patent Owner admits that Span and Lim are each
`directed to nuclear imaging. PO Resp. 14.
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`application of a known technique to improve a similar device in the same
`way. KSR Int’l Co., 550 U.S. at 417 (“[I]f a technique has been used to
`improve one device, and a person of ordinary skill in the art would recognize
`that it would improve similar devices in the same way, using the technique is
`obvious unless its actual application is beyond that person’s skill.”).
`Patent Owner also argues that Petitioner ignores both the express
`teachings of Jaffray ’97 and the level of ordinary skill in the art by
`suggesting that the movable support systems of Span would provide
`flexibility and convenience to the CBCT imaging system of Jaffray ’97.
`PO Resp. 25–26 (citing Exs. 1004, 173; 2080 ¶¶ 93–99, 112–116, 119–123).
`Relatedly, Patent Owner asserts that the only evidence that the movable
`support system of Span would provide flexibility and convenience to the
`CBCT system of Jaffray ’97 is unsubstantiated ipse dixit. PO Resp. 25.
`Patent Owner also contends that the imaging systems of Jaffray ’97 and
`Span do not present similar mounting difficulties because of the differences
`between the requirements of CBCT imaging and nuclear medicine.
`PO Resp. 26–27 (citing Ex. 2080 ¶¶ 79–99, 124, 125). These arguments are
`unpersuasive for the reasons set forth in the previous paragraphs.
`Patent Owner also argues accurate imaging is a primary function of
`the CBCT system of Jaffray ’97, and that modifying the CBCT system of
`Jaffray ’97 to have a movable support system would degrade the image
`quality. PO Resp. 20–26, 28 (citing Exs. 1004, 172–173; 2080 ¶¶ 42–46,
`47–49, 86–99, 112–115, 120–123, 127). According to Patent Owner, a
`movable support system would undermine calibration, which is needed for
`accurate imaging. PO Resp. 20–25 (citing Exs. 1004, 172–173; 2080 ¶¶ 42–
`46, 47–49, 86–99, 112–114, 120).
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`Patent 7,826,592 B2
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`
`Patent Owner’s arguments are not persuasive. As an initial matter, we
`note that claim 25 is directed to an imaging system having an imager support
`system made up of “a pivoting arm that has one end pivotably attached to
`said rotating drum and another end pivotably attached to said imager.”
`Ex. 1001, 29:43–45. Although the aforementioned components of the
`imager support system must unambiguously be capable of pivoting, claim 25
`does not require any particular movement of the support system at any
`specific point in time. Rather, the claim merely requires the ability to move.
`Dec. 8 (construing “pivotably attached” as “connected to allow hinged
`movement toward and away from each other”; emphasis added.).
`Accordingly, insofar as Patent Owner is asserting that movement of the
`imager during image acquisition is disfavored, we agree. See also Ex. 1500
`¶¶ 14, 16, 18 (agreeing with that assessment). The assertion is misplaced,
`however, because nothing indicates that Petitioner’s proposed combination is
`for movement during image acquisition.
`Secondly, we note that Patent Owner argues that movement renders a
`particular calibration useless and undermines accurate imaging. We agree
`that assessment is accurate. Patent Owner’s arguments and evidence also
`indicate, however, that calibrating a CBCT imaging system is well-known in
`the art. PO Resp. 21 (citing Ex. 2080 ¶ 95 (“By the filing date of the ’592
`patent, it was already well-known that a CBCT imaging system needed to be
`calibrated . . . .”)); see also Ex. 1500 ¶ 18 (“One of ordinary skill in the art
`would understand that after moving the imager out of the way, one would
`simply need to put the imager back into appropriate position prior to the next
`use.”). We agree, and find the same. Accordingly, we find that one of
`ordinary skill in the art would have known that movement would require
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`IPR2016-00187
`Patent 7,826,592 B2
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`recalibration. Thus, Petitioner’s proposed combination of the CBCT
`imaging system of Jaffray ’97 with Span’s moveable support system would
`still provide accurate imaging, even with movement, with the understanding
`that recalibration would be required after such movement.
`Patent Owner’s assertions, then, are really about tradeoffs: that a
`person of ordinary skill in the art would not have sacrificed the image
`quality of the CBCT system of Jaffray ’97 for the movability of Span’s
`support system. PO Resp. 24–25 (citing Ex. 1004, 173; Ex. 2080 ¶¶ 86–108,
`114, 117–118, 120). Although Patent Owner’s assertions may have some
`merit, after weighing all the evidence, we are persuaded by Petitioner’s
`assertion that one of ordinary skill, again, having a relatively high level of
`skill in physics or engineering, would have made the proffered modification.
`We are further unpersuaded that Patent Owner’s purported tradeoff is so
`disadvantageous one of ordinary skill would not make what, at the end of the
`day, is a straightforward mechanical modification for a well-known
`mechanical purpose. At oral hearing, Petitioner stated:
`Span is exclusively about a mechanical way in which to connect
`an imager to a rotating drum using a pivot arm. And one of
`ordinary skill in the art, especially here where the level of
`ordinary skill is very high, would understand how to combine
`Jaffray ’97 and the Span reference to achieve a predictable result.
`
`Tr. 7:7–12. The fact that the combination of a movable support system in a
`CBCT imaging system may have some disadvantages is not persuasive, as
`many if not all technical choices have some advantages and disadvantages.
`One of ordinary skill is not an automaton, and is presumed to be able to
`make certain choices over others based on various technical requirements
`with those advantages and disadvantages in mind. See Winner Int’l Royalty
`
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`Corp. v. Wang, 202 F.3d 1340, 1349 n.8 (Fed. Cir. 2000) (“The fact that the
`motivating benefit comes at the expense of another benefit, however, should
`not nullify its use as a basis to modify the disclosure of one reference with
`the teachings of another. Instead, the benefits, both lost and gained, should
`be weighed against one another.”). So long as the combination would have
`been known to one of ordinary skill, however, and we do not take Patent
`Owner to be asserting that the aforementioned combination, both the
`advantages and disadvantages, would not have been known, especially to
`one having such a high level of skill, we are persuaded that Petitioner’s
`proffered known modification for known improvements is more than
`adequate. KSR Int’l Co., 550 U.S. at 419.
`Patent Owner further argues that “[a] person of ordinary skill in the art
`following the teachings of Jaffray ’97 would, therefore, choose a support
`system that keeps the detector and other components of the imaging system
`in fixed positions within the shared, rotating frame of reference to improve
`image quality.” PO Resp. 23–24 (citing Ex. 2080 ¶ 115). These arguments
`are unpersuasive for the same reasons as set forth above in the previous
`paragraphs.
`After reviewing all relevant evidence and arguments presented by
`Petitioner and Patent Owner, we are persuaded that claims 25–28 are
`unpatentable as obvious in view of Jaffray ’97 and Span for the reasons
`proffered by Petitioner in the Petition, taking into account any findings set
`forth supra.
`
`Conclusion
`3.
`After considering all evidence and arguments anew, in light of the
`appropriate standards, we are persuaded that Petitioner has shown, by a
`
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