`
`
`
`
`IPR2016-00357, Paper No. 56
`IPR2016-00358, Paper No. 55
`IPR2016-00359, Paper No. 57
`March 30, 2017
`
`trials@uspto.gov
`
`
`571-272-7822
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`GENERAL ELECTRIC CO.,
`Petitioner,
`
`v.
`
`UNIVERSITY OF VIRGINIA PATENT FOUNDATION,
`Patent Owner.
`____________
`
`Case IPR2016-00357
`Case IPR2016-00358
`Case IPR2016-00359
`Patent RE44,644
`____________
`
`Held: March 2, 2017
`____________
`
`
`
`BEFORE: KARL D. EASTHOM, J. JOHN LEE, and
`TREVOR M. JEFFERSON, Administrative Patent Judges.
`
`
`
`
`
`The above-entitled matter came on for hearing on Thursday,
`March 2, 2017, commencing at 9:34 a.m., at the U.S. Patent
`and Trademark Office, 600 Dulany Street, Alexandria,
`Virginia.
`
`
`
`Case IPR2016-00357, Case IPR2016-00358
`Case IPR2016-00359, Patent RE44,644
`
`
`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
`
`
`
`
`
`
`
`
`
`
`ON BEHALF OF PATENT OWNER:
`
`
`
`
`
`
`
`
`DAVID POLLOCK, ESQUIRE
`BRIAN D. ROCHE, ESQUIRE
`JONATHAN I. DETRIXHE, ESQUIRE
`Reed Smith, LLP
`101 Second Street, Suite 1800
`San Francisco, California 94105
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`JOSEPH F. DePUMPO, ESQUIRE
`ARI B. RAFILSON, ESQUIRE
`Shore, Chan, DePumpo, LLP
`901 Main Street, Suite 3300
`Dallas, Texas 75202
`
`and
`
`RODNEY L. SPARKS, J.D., Ph.D.
`University of Virginia Innovation
`
`
`
`
`
` 2
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Case IPR2016-00357, Case IPR2016-00358
`Case IPR2016-00359, Patent RE44,644
`
`
`P R O C E E D I N G S
`- - - - -
`JUDGE LEE: Good morning everyone. Welcome to
`the Board. This is the oral hearing in case number
`IPR2016-00357, 2016-00358, and 2016-00359 concerning U.S.
`Patent Number RE44,644. We'll start this morning with
`appearances by counsel. Counsel for petitioner, if you could step
`to the podium and make your appearance.
`MR. POLLOCK: Good morning, Your Honor. I'm
`David Pollock with Reed Smith for petitioner, General Electric.
`With me are my colleagues, Brian Roche and John Detrixhe.
`JUDGE LEE: Good morning. Counsel for patent
`
`owner?
`
`MR. SPARKS: Good morning, Your Honors. I'm
`Rodney Sparks, counsel for the University of Virginia Patent
`Foundation. My colleagues, my backup counsel, who will be
`speaking are Joe DePumpo and Ari Rafilson.
`JUDGE LEE: Good morning. Each side will have
`60 minutes to make their presentations. Petitioner, you have the
`option of reserving time for rebuttal. Would you like to do that?
`MR. POLLOCK: Yes, Your Honor, we would like to
`reserve 15 minutes for rebuttal, please.
`JUDGE LEE: Fifteen minutes for rebuttal. That gives
`you 45 minutes for your main presentation. Are you ready to
`begin?
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
` 3
`
`
`
`
`
`
`
`Case IPR2016-00357, Case IPR2016-00358
`Case IPR2016-00359, Patent RE44,644
`
`
`MR. POLLOCK: Yes, we are, Your Honor.
`JUDGE LEE: Before you start, let me first say that we
`have reviewed both sides' objections to demonstrative exhibits.
`We have elected to reserve judgment on them. We do advise
`both parties that to the extent that demonstratives you present
`include new arguments not previously presented, those arguments
`will be disregarded. And with that, you may proceed.
`MR. POLLOCK: Thank you, Your Honor. Good
`morning, Judges Lee, Easthom and Jefferson. I, David Pollock,
`will be presenting the 102(b) and 103 portions of General
`Electric's argument and my colleague, Mr. Roche, will be
`presenting the 102(a) portion of the argument.
`Now, in its institution decisions for purposes of
`instituting trial, the Board determined that Mugler 2000 is prior
`art under both 102(b) and 102(a) and instituted reviews on
`multiple grounds for all of the challenged claims. And here is a
`summary of the various invalidity grounds for each challenged
`claim prepared for the Board's convenience. Most of these
`grounds include Mugler 2000, but the last two include reliance on
`Mugler '99.
`Now, although patent owner disputes whether Mugler
`2000 is available as prior art, patent owner does not dispute that if
`available, all the challenged claims are invalid. Patent owner
`disputed invalidity over certain 103 combinations, including
`Mugler '99, in its responses but does not do so in its
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
` 4
`
`
`
`
`
`
`
`Case IPR2016-00357, Case IPR2016-00358
`Case IPR2016-00359, Patent RE44,644
`
`demonstratives. So it's unclear whether any dispute over the 103
`obviousness grounds are in dispute.
`This IPR is unusual. It turns primarily on written
`description and authorship issues. Not on the typical prior art
`disclosure issues. Regarding the 102(b) issue, the dispute is
`whether the provisional '182 application provides adequate
`written description support for each of the challenged claims. In
`its institution decisions the Board found for many reasons that it
`did not. GE believes the Board got it right and patent owner
`believes the Board got it wrong. Although there are a few factual
`disputes here, the disputes before the Board are primarily disputes
`of law. What is adequate written description support and what
`can be considered as part of the written description, those are
`both legal issues.
`Now, a disclosure must disclose the invention with all
`of its claim limitations. No limitation can be entirely missing. A
`disclosure that renders the invention merely obvious is not
`sufficient. This is an important point. Although the collection of
`limitations need not be present in haec verba, as it says in the
`Lockwood case, each limitation must be present. Not merely
`obvious or just well known.
`Now, what does the invention with all its limitations
`actually mean? The Novozymes case tells us each claim must be
`disclosed as an integrated whole rather than a collection of
`independent limitations. These limitations cannot be spread
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
` 5
`
`
`
`
`
`
`
`Case IPR2016-00357, Case IPR2016-00358
`Case IPR2016-00359, Patent RE44,644
`
`around the disclosure. They must be regarding one species of the
`invention. As GE pointed out in its replies, patent owner
`analyzed individual limitations but failed to make any arguments
`that each claim is disclosed in its entirety. Patent owner has thus
`failed to argue a key part of the written description test, and this
`shortcoming alone is fatal to their case.
`Now, for disclosing claimed ratios, there's specific
`guidance in the Purdue Pharma case. It is not enough that the
`feature could be pieced together based on examples in the
`specification. It's there on the left. There must be text or data or
`something that emphasizes the ratio. The Purdue Court called
`these blaze marks, and so the written description for a ratio or
`range of ratios, the blaze marks directing the skilled artisan to that
`trait must be in the original disclosure. As I'll explain, the '182
`application fails to include the required text, data or anything else
`emphasizing the ratios.
`Now, the written description test is often expressed as
`whether a person of ordinary skill would understand that the
`patentee had possession of the claimed invention at the time of
`the claimed invention. The Federal Circuit, in its en banc Arida
`case, observed that the term "possession" has never been very
`enlightening and stated that the test is better presented as
`possession as shown in the disclosure which requires an inquiry
`into the four corners of the specification.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
` 6
`
`
`
`
`
`
`
`Case IPR2016-00357, Case IPR2016-00358
`Case IPR2016-00359, Patent RE44,644
`
`
`Now, throughout this proceeding patent owner has
`shown that it misunderstands the written description requirement.
`In its preliminary responses patent owner argued that if the claims
`are anticipated by Mugler 2000, they must be adequately
`supported by the more detailed '182 application. This was legal
`error. And the Board explained that in its institution decisions
`that a disclosure can anticipate a broad claim by disclosing one
`embodiment within the scope, but that same disclosure would not
`provide 112 support unless the disclosure shows possession of the
`full scope of the broad claim. This is an important distinction
`between 102 and 112. 102 requires one example; 112 requires
`possession of the full scope of the claim. As the Board observed,
`102 and 112 are fundamentally different tests. Patent owner
`confuses those tests.
`In its responses, patent owner still fundamentally
`misunderstands the written description case law. Patent owner
`now asserts that the written disclosure requirement turns upon the
`knowledge of a person of ordinary skill in the art. That's not true.
`It turns upon the disclosure in the priority document. Not the
`knowledge of one of skill in the art. And in support, PO cites
`only to an unreported order on a motion in limine regarding
`admissibility of prior art. This is not a 112 case. This is a motion
`in limine. And that order in the motion in limine states
`Section 112 takes into account the prior art through the
`knowledge of one skilled in the art at the time the invention was
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
` 7
`
`
`
`
`
`
`
`Case IPR2016-00357, Case IPR2016-00358
`Case IPR2016-00359, Patent RE44,644
`
`made. Patent owner's reliance on this case is misplaced. This is a
`motion in limine and not a 112 case.
`JUDGE LEE: Mr. Pollock, you don't dispute that
`although a disclosure must actually appear in the written
`description, that that disclosure is read and interpreted from the
`perspective of a person of ordinary skill in the art, including their
`knowledge in the art? You don't dispute that, right?
`MR. POLLOCK: Judge Lee, I'm glad you asked that
`question. Here in slide 14 the Lockwood case tells us the
`knowledge of one of skill in the art does have a role, but that role
`is very limited. It's only for interpreting the meaning of the
`disclosure. So you can look at a word in the disclosure and
`decide what it means, a small word, say, for example, an MR
`scanner, that discloses a great deal of information, from the
`power cord through the magnets, everything else. So if it just
`says an MR scanner, that word can be interpreted to mean very
`many things. But if that word is not there, if there's no mention,
`then that word -- then there is no disclosure.
`So interpreting from the vantage point of one of skill in
`the art is not the same as bringing the knowledge of one of skill in
`the art into a disclosure and inserting it there. Now, Dr. Hennig
`admitted exactly this. He admits that his written description
`analysis added all the knowledge of one of skill in the art to the
`specification. Dr. Hennig admitted that during deposition. And
`that is fundamentally incorrect.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
` 8
`
`
`
`
`
`
`
`Case IPR2016-00357, Case IPR2016-00358
`Case IPR2016-00359, Patent RE44,644
`
`
`Even on redirect, after an hour of preparation,
`Dr. Hennig testified that a person of ordinary skill in the art is
`able to fill in the gap between a specification and the claim
`language. The only restriction he applied is the gap cannot be
`arbitrarily large. The knowledge of one of skill in the art cannot
`be used to put into a disclosure information that is not there.
`Only to interpret, Judge Lee, as you observed.
`Now, another fundamental error in patent owner's and
`its expert analysis is consideration of material not properly within
`the specification. Now, of course outside material can be
`incorporated into a patent by reference, but there are two strict
`requirements for that incorporation, both of which patent owner's
`art fails. First the material must be identified with detailed
`particularity. And second, the incorporation must be for a
`particular stated purpose. Unless the incorporation statement
`includes this detailed particularity and a particular stated purpose,
`the incorporation fails as a matter of law. This issue is a matter of
`law for the Court to decide.
`Now, patent owners --
`JUDGE LEE: Mr. Pollock, I know that this wasn't in
`the briefing, but are you familiar with the case Harari v. Lee, 656
`F.3d 1331?
`MR. POLLOCK: I'm not familiar with it, Your Honor.
`JUDGE LEE: As I understand that case, the Federal
`Circuit, in that case, held that two patent applications were
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
` 9
`
`
`
`
`
`
`
`Case IPR2016-00357, Case IPR2016-00358
`Case IPR2016-00359, Patent RE44,644
`
`incorporated by reference in their entirety using language pretty
`similar to what is in the provisional application in this case. So
`what about that? And there are other cases as well, Advanced
`Display Systems v. Kent State University. There does seem to be
`some ambiguity about exactly how you incorporate references in
`a disclosure, whether doing it in its entirety is okay or not.
`MR. POLLOCK: And if the reference is short enough,
`Your Honor, and then perhaps incorporating something in its
`entirety would be permitted. But there are also two prongs to this
`test, and there are some cases that have been sloppy and courts
`have not considered both prongs of the test. I have legion case
`law that shows that there is a test and it has two prongs. So
`certainly there may be an example of cases that did consider a
`reference incorporated in its entirety because it's short, and there
`are also cases that didn't perform the required analysis because
`the litigants didn't put the issue before the Court. But the cases of
`which GE is aware, there is a two-prong test, and you must pass
`both prongs in order to be considered incorporated by reference.
`Now, these requirements are of course part of the public
`notice function of a patent. And they prevent exactly the sort of
`mischief that patent owner is seeking to make here. Post-talk
`reliance on unspecified snippets of thousands of pages
`incorporated by reference in general for no stated purpose is
`unfair. It's unfair to the public because it doesn't put the public on
`notice of what the invention is. That's the purpose of the
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
` 10
`
`
`
`
`
`
`
`Case IPR2016-00357, Case IPR2016-00358
`Case IPR2016-00359, Patent RE44,644
`
`specification. And here patent owner cites, I believe, 21 separate
`references for no purpose and no particular part, and it shouldn't
`be permitted. It should not be the law that a patent owner can
`provide a dearth of disclosure, incorporate a great number of
`references for no purpose and then later on rely upon them for
`112 disclosure -- sorry, to meet the 112 written description test.
`Does that answer your question, Judge?
`JUDGE LEE: For the time being. Please proceed.
`MR. POLLOCK: Now, in its institution decisions, the
`Board determined that Mugler 2000 is prior art under 102(b)
`because four particular limitations were missing. Now, on
`described limitation number 1, the magnetic field gradient pulses,
`that applies to all the challenged claims. And then collectively
`what I'll refer to as the range limitations, missing limitations 2, 3
`and 4, those collectively also apply to all the challenged claims.
`So if the Board finds for GE on either 1 or 2, 3 and 4, all of the
`claims are invalid. There is no dispute.
`Now, the Board agreed in its institution decision --
`JUDGE LEE: You don't mean that the claims are --
`they are not invalid for written description purposes, right?
`MR. POLLOCK: Correct, Your Honor. That issue is a
`subsidiary issue here. Those claims are invalid over Mugler 2000
`because the '182 application doesn't provide the priority necessary
`to antedate Mugler 2000. Sorry. I should have been more clear.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
` 11
`
`
`
`
`
`
`
`Case IPR2016-00357, Case IPR2016-00358
`Case IPR2016-00359, Patent RE44,644
`
`
`Now, in its institution decisions, the Board determined
`that at least one includes only one. And of course it does. The
`Board agreed that there was no written description of encoding
`spatial information into only one of the signals for only one of the
`refocusing pulses. And on that ground it found that the '182
`application did not find priority.
`Now, patent owner does not dispute this lack of
`disclosure under the plain meaning of the claim. In its response,
`patent owner tries to save its patent by inserting the word
`"individually" into this claim limitation and then arguing that the
`only-one-only-one scope is disclosed under its narrower
`construction inserting the word "individually" into the claim.
`There is no argument and there is no dispute that without
`individually, the only-one-only-one portion of the disclosure is
`not there. It's missing. The Board found it in its institution
`decisions and there's no argument to the contrary.
`JUDGE LEE: I'm not sure I understood patent owner's
`argument necessarily to say that. In fact, I'm not exactly sure
`what the word "individually" adds or subtracts from the claim.
`But I did understand patent owner and its expert, Dr. Hennig, to
`argue that the mention in the provisional application of RARE
`imaging does indicate a one signal encoding situation. Is that not
`true?
`
`MR. POLLOCK: That's not true, Your Honor. If you
`look in their response, the argument about RARE is a subportion
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
` 12
`
`
`
`
`
`
`
`Case IPR2016-00357, Case IPR2016-00358
`Case IPR2016-00359, Patent RE44,644
`
`under the argument about individually. And this ambiguity in the
`petitioner's briefing creates this confusion. There still is no
`dispute that without the word "individually" that RARE does not
`disclose the only-one-only-one.
`JUDGE LEE: Isn't it true, though, that RARE imaging
`does encode spatial information into only one signal following
`each refocusing pulse?
`MR. POLLOCK: Well, it depends on your insertion of
`the word "each" there. So what patent owner would have the
`Board do is rewrite the claim to say providing magnetic field
`gradient pulses that individually perform encoding spatial
`information into at least one of the radio frequency magnetic
`resonance signals to follow at least one of the radio frequency
`pulses. That is a narrowing of the claim. That is examining the
`claim for each magnetic field gradient pulse rather than magnetic
`field gradient pulses collectively, as the claim states. That is a
`very important issue here, Your Honor. The patent owner is
`trying to narrow the claim in order to create a disclosure of the
`only-one-only-one embodiment.
`JUDGE LEE: I'm not sure that it is clear that referring
`to magnetic field gradient pulses, plural, that perform particular
`functions requires a reading that all of them collectively perform
`that function. As I understand what you are saying, the claim
`must be read to say that all of the magnetic field gradient pulses
`encode into only one signal. Do I understand you properly?
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
` 13
`
`
`
`
`
`
`
`Case IPR2016-00357, Case IPR2016-00358
`Case IPR2016-00359, Patent RE44,644
`
`
`MR. POLLOCK: Yes, Your Honor. That's what the
`unrefuted expert testimony says. There is no analysis by
`Dr. Hennig that if you put -- without the word "individually" that
`all of the magnetic field gradient pulses encoded to
`only-one-only-one.
`There's also a backlash to the insertion of
`"individually." And patent owner is trying to have it both ways.
`Patent owner argues for purposes of the only-one-only-one
`portion that "individually" is there. And then patent owner argues
`out the other side of its mouth that with individually, that the
`more-than-one-more-than-one portion is there. And patent owner
`can't have it both ways. Either the claim requires examination of
`the gradient -- magnetic field gradient pulses individually in
`which case more-than-one-more-than-one portion of the
`disclosure is simply not there or collectively in which case the
`only-one-only-one portion of the claim is not there. And these
`inconsistent positions have created this confusion.
`We invite the Board to examine this closely. There's no
`dispute that if "individually" is added, the
`more-than-one-more-than-one portion is not disclosed. There's
`no expert evidence to the contrary, and the only expert evidence
`is that it's not disclosed.
`JUDGE LEE: In the scenario that you are referring to
`where all of the pulses, every single one together must encode
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
` 14
`
`
`
`
`
`
`
`Case IPR2016-00357, Case IPR2016-00358
`Case IPR2016-00359, Patent RE44,644
`
`into only one signal, that would not be considered spin echo train
`imaging, that’s something that Dr. Pelc agreed to, right?
`MR. POLLOCK: You are right, Your Honor. That's a
`function of a miswritten claim. It's a poorly drafted claim, and
`the patent owner needs to live with that, at least live with the
`ramifications of the claim as written.
`JUDGE LEE: If, just assuming for the moment, that we
`read the claim to not require that all of the pulses together must
`encode into only one and that it can be read so that a pulse, a
`gradient pulse encodes into one or more than one, what is wrong
`with that? You referred to a more-than-one-more-than-one
`scenario. Can you be more clear about what you are referring to?
`MR. POLLOCK: Sure, Your Honor. I appreciate the
`question. We have slides addressing that.
`So here on slide 20 patent owner's argument assumes
`there's a one-to-one correspondence between a line of k-space and
`an MR signal. And both Dr. Hennig and Dr. Pelc agree that this
`assumption is not correct.
`Actually, I'll go back to slide 19. I apologize. So
`although GE maintains that adding "individually" is improper,
`even if individually is added, PO fails to attempt to show that the
`full scope of the claim is disclosed. In particular, PO fails to
`argue that if "individually" is added, the more than one following
`more than one part of the claim scope is disclosed. As I said,
`there is no argument in its response, no Hennig testimony that
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
` 15
`
`
`
`
`
`
`
`Case IPR2016-00357, Case IPR2016-00358
`Case IPR2016-00359, Patent RE44,644
`
`more-than-one-more-than-one is disclosed with "individually"
`added.
`
`And in fact, the only expert testimony is by Dr. Hennig.
`And it says in paragraph 9 if "individually" is added, the claim
`would now include within its scope gradient pulses that
`individually encode resonance signals that follow more than one
`radio frequency pulse. And there's no teaching of that. There's
`no contrary Hennig testimony. There's no even argument,
`unsupported attorney argument that that's the case. That's
`uncontroverted.
`And here patent owner does dispute part of this. Patent
`owner disputes more-than-one-only-one but patent owner's
`argument about more-than-one-only-one also fails. Patent
`owner's argument that there's a one-to-one correspondence
`between a line of k-space and an MR signal is simply incorrect.
`It relies on -- and both Dr. Hennig and Pelc agree about this. You
`can see Dr. Hennig's testimony on the left. Dr. Hennig says that a
`line of k-space and an MR signal is apples and pears. Likewise,
`Dr. Pelc says there is not a one-to-one correspondence between a
`line of k-space and an MR signal. So contrary to patent owner's
`argument regarding GRASE, disclosure of GRASE does not
`provide support for a gradient pulse that individually encodes
`spatial information into more than one RF MR signal following
`only one refocusing pulse. And there's simply no dispute about
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`
` 16
`
`
`
`
`
`
`
`Case IPR2016-00357, Case IPR2016-00358
`Case IPR2016-00359, Patent RE44,644
`
`the more-than-one-more-than-one part of the language under this
`individually claimed construction.
`JUDGE LEE: Are you aware of any MRI techniques in
`the art where there are multiple refocusing pulses before any
`signal is sent?
`MR. POLLOCK: I am not, Your Honor. I'm aware
`only of what's in the disclosure of the '182 application. I'm not a
`Ph.D. in the MR science, but in the '182 application, as
`Dr. Hennig says, there is no explicit teaching in the '182
`application or the '644 patent of individually encoding magnetic
`resonance signals that follow more than one radio frequency
`pulse. It's simply not there. More important, patent owner has
`not pointed to anything and there's no expert testimony that
`contradicts it. As we said, Your Honor, the patent owner can't
`have it both ways. If you insert individually to address one
`problem, it creates this other problem of
`more-than-one-more-than-one-more-than-one.
`Any further questions on that, Your Honor, before I
`proceed?
`JUDGE EASTHOM: Can you go back to the previous
`slide, please, 21, I think. This one, what about the sentence on
`the right, the second sentence, however, in GRASE imaging
`measurement of one MR signal following one
`radiofrequency refocusing pulse acquires data for three or more
`lines of k-space, isn't that the individually more than one?
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
` 17
`
`
`
`
`
`
`
`Case IPR2016-00357, Case IPR2016-00358
`Case IPR2016-00359, Patent RE44,644
`
`
`MR. POLLOCK: Your Honor, that would be more than
`one if a line of k-space corresponded to an MR signal. But it
`simply does not. As Dr. Hennig admitted during deposition,
`those are apples and pears. Patent owner makes this argument.
`They say, well, there's more than one line of k-space encoded, but
`that's different than an MR signal.
`JUDGE LEE: I don't see that testimony as saying that a
`line of k-space and one signal is apples and pears. It seems to me
`he's saying, and I'm quoting here, a signal is something that you
`measure on your oscilloscope and the spatial encoding is what
`you use to make an image so that there are two different things --
`those are two different things. Not necessarily that the one-to-one
`relationship is not valid. In fact, isn't it something he testified to
`in the immediate preceding page where he said that it is typically
`a one-to-one relationship?
`MR. POLLOCK: Often it is. Often a signal encodes
`into one line of k-space, but they are not the same thing. And
`patent owner's argument is about a signal -- sorry, is not about a
`signal. It's about a line of k-space. So there's this bait and switch
`on the Board, Your Honor, where the only argument for the
`more-than-one-only-one is that a line of k-space is the same as a
`signal.
`
`The claim language, the claim language says only one
`MR signal. It doesn't say only one line of k-space. And GRASE
`certainly encodes three lines of k-space, but it's only one signal.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
` 18
`
`
`
`
`
`
`
`Case IPR2016-00357, Case IPR2016-00358
`Case IPR2016-00359, Patent RE44,644
`
`And I can show that to you right here. The signal has one spin
`echo in the center and then a gradient echo signal on either side.
`More important, the claims exclude that gradient echo signal.
`The claims say the radiofrequency magnetic resonance signal is a
`signal evolution for the associated train of spin echos. Not the
`associated train of spin echos with a gradient echo signal on
`either side.
`So the claim makes crystal clear that the spin echo pulse
`sequence is regarding the spin echos. Not the spin echos plus
`gradient echos that occur in GRASE. So if you look at just the
`spin echos, there's only one spin echo in the center. There are not
`multiple spin echos. There's only one.
`JUDGE EASTHOM: Which one is the spin echo on
`
`there?
`
`MR. POLLOCK: The spin echo is the echo in the
`center of Figure 3, the top line. So gradient-recalled echo signal
`on the left in the red box.
`JUDGE JEFFERSON: For clarity of the transcript, you
`might want to indicate what slide you are looking at.
`MR. POLLOCK: On slide 22, in Figure 3, there are
`three amplitude gradient-recalled echo signals, one spin echo in
`the center of each. The echos on either side, those are
`gradient-recalled echos and they are not included within the scope
`of the claim. So because the claim points to only a train of spin
`echos and not gradient echos, there is only one signal. And that
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
` 19
`
`
`
`
`
`
`
`Case IPR2016-00357, Case IPR2016-00358
`Case IPR2016-00359, Patent RE44,644
`
`falls outside of the scope of the claim, and therefore, the entire
`scope of the claim is not disclosed by the '182 application. This
`is very important.
`I would like to go on to the effective echo time, Your
`Honors, if I may. So the effective echo time, this is the second
`limitation the Board found undescribed, and it says an effective
`echo time is at least twice an effective echo time for a turbo spin
`echo or fast spin echo train pulse sequence or an echo time for
`said conventional spin echo pulse sequence.
`So one includes a comparison of the effective echo time
`to a turbo spin echo sequence, and the other is a comparison of
`the echo time to a conventional spin echo sequence. Now, this
`limitation has two parts. It's ratio of the new effective echo time
`to either the turbo spin echo or spin echo time and the ratio must
`be at least twice. Neither part of this ratio is disclosed.
`The '182 application discloses only one example of an
`effective echo time and that's 328 milliseconds. PO does not and
`cannot dispute this fact. And the '182 application does not
`compare the effective echo time to any other value. Again, PO
`does not dispute and cannot dispute this fact. There's also no
`disclosure or expression of the effective echo time value as a ratio
`compared to any value or any range of values. And that's beyond
`dispute.
`Now, on slide 28, the '182 application does provide a
`single example of an echo time for a conventional spin echo
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`
` 20
`
`
`
`
`
`
`
`Case IPR2016-00357, Case IPR2016-00358
`Case IPR2016-00359, Patent RE44,644
`
`sequence of 80 milliseconds. But it does not compare this echo
`time to the effective echo time of the disclosed sequence. Again,
`this is beyond dispute. Now, if such a comparison is made, and
`there is no reason to do so, the ratio is 4.1. It's not twice.
`Now, PO's expert, Dr. Hennig, admitted that there's not
`a comparison of 328-millisecond effective echo time value to the
`80-millisecond conventional time value. He says that they are
`specified but there's no comparison there. Again, this is beyond
`dispute.
`Now, this lack of disclosure is dispositive under Purdue
`Pharma. In fact, by now claiming these undisclosed ratios, PO is
`doing exactly what's forbidden by the Federal Circuit in Purdue
`Pharma. Picking a characteristic not discussed even in passing in
`the disclosure and then making it the basis of the claims, that's
`exactly the type of overreaching the written description
`requirement was designed to guard against. The result in Purdue
`Pharma of invalidity is the same as the result should be here.
`Now, patent owner also does not dispute that there's no
`disclosure of the lower bound, the lower bound of twice. Instead,
`patent owner argues merely that the skilled artisan could
`indirectly reduce the echo time ratio by reducing the echo train
`length and could even reduce it down to twice if desired. Well, of
`course a skilled artisan could do a lot of things, but there is no
`teaching in the patent for the skilled artisan to do this. There's no
`teaching of a ratio. There is no teachi
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
