Trials@uspto.gov
`571.272.7822
`
`
`
` Paper No. 58
` Entered: June 21, 2017
`
`
`
`
`
`
`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 IPR2016-00359
`Patent RE44,644 E
`____________
`
`
`
`Before KARL D. EASTHOM, TREVOR M. JEFFERSON, and
`J. JOHN LEE, Administrative Patent Judges.
`
`LEE, Administrative Patent Judge.
`
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`
`

`

`
`
`
`
`
`
`
`
`IPR2016-00359
`Patent RE44,644 E
`
`
`
`
`
`
`INTRODUCTION
`On December 16, 2015, General Electric Co. (“GE”) filed a Petition
`
`(Paper 1, “Pet.”) requesting inter partes review of claims 153–156, 161, 162,
`252, and 253 (“the challenged claims”) of U.S. Patent No. RE44,644 E
`(Ex. 1001, “the ’644 Patent”). Patent Owner University of Virginia Patent
`Foundation (“UVAPF”) timely filed a Preliminary Response. Paper 8.
`An inter partes review of all challenged claims was instituted on
`
`June 24, 2016. Paper 13 (“Inst. Dec.”). After institution, UVAPF filed a
`Patent Owner Response (Paper 22, “PO Resp.”), and GE filed a Petitioner
`Reply (Paper 28, “Pet. Reply” (redacted public version); Paper 26 (filed
`under seal)).1 UVAPF further filed a Motion for Observations on Cross-
`Examination (Paper 35), and GE filed a Response to UVAPF’s Observations
`(Paper 42). The parties also filed additional motions that remain pending,
`which are addressed below. An oral hearing was held on March 2, 2016.
`Paper 57 (“Tr.”).2
`
`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. As
`explained below, GE has shown by a preponderance of the evidence that the
`challenged claims of the ’644 Patent are unpatentable.
`
`
`1 This Decision cites to the public versions of all cited documents unless
`otherwise specified.
`2 A combined hearing was held for this case as well as related inter partes
`reviews IPR2016-00357 and IPR2016-00358. Although the parties at times
`referred to specific claims at issue in only one of these cases, many of the
`substantive issues also are present in all three cases and, as such, the parties’
`statements at the hearing are applied to each of the cases as appropriate.
`Additionally, the parties raised objections to demonstrative exhibits
`presented at the oral hearing. Upon review, all such objections are denied.
`
`2
`
`

`

`IPR2016-00359
`Patent RE44,644 E
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Related Proceedings
`A.
`GE identifies the following matters as related to its Petition: (1)
`
`University of Virginia Patent Foundation v. General Electric Co., No. 3:14-
`cv-00051-nkm (W.D. Va.); (2) two other petitions requesting inter partes
`review of other claims of the ’644 Patent (IPR2016-00357 and IPR2016-
`00358); and (3) a petition requesting inter partes review of certain claims of
`U.S. Patent No. RE45,725 E, a related patent (IPR2017-00109). Pet. 1–2;
`Paper 47, 1. In addition to the above, UVAPF further identifies U.S. Patent
`Application No. 14/708,875 as related to the ’644 Patent. Paper 9, 1.
`
`The ’644 Patent
`B.
`The ’644 Patent is a reissue of U.S. Patent No. 7,164,268 (“the ’268
`
`Patent”). Ex. 1001, at [64]. The ’268 Patent was issued on January 16,
`2007, from a PCT application filed on December 21, 2001. Id. The ’268
`Patent—and, thus, the ’644 Patent—claims priority to U.S. Provisional
`Application No. 60/257,182 (“the ’182 Application”), which was filed on
`December 21, 2000. Id. at [60]. Dr. John P. Mugler III and Dr. James R.
`Brookeman are the named inventors of the ’644 Patent. Id. at [75].
`
`According to the specification, the ’644 Patent relates to nuclear
`magnetic resonance imaging (“MRI”) technology. Ex. 1001, 1:34–38. In
`particular, the ’644 Patent relates to spin-echo MRI, which provides “a wide
`range of useful image contrast properties that highlight pathological changes
`and are resistant to image artifacts from a variety of sources such as radio-
`frequency or static-field inhomogeneities.” Id. at 1:44–49.
`
`In spin-echo MRI, one or more spin-echo magnetic resonance (“MR”)
`signals are generated after an initial “excitation radio-frequency (RF) pulse.”
`See id. at 1:50–2:36. Data about the imaged subject in k-space may be
`
`3
`
`

`

`
`
`
`
`
`
`
`
`IPR2016-00359
`Patent RE44,644 E
`
`
`
`
`
`
`collected periodically in conjunction with a series of spin echoes (i.e., a spin-
`echo train), and gradient magnetic fields are used for spatial encoding, to
`produce an image of the subject. See id. The spin echoes are generated
`using RF “refocusing” pulses, which are characterized by, among other
`things, a “flip angle.” See id. at 2:46–48. Conventional spin-echo
`techniques at the time of the invention—including, for example, “fast spin-
`echo” or “turbo spin-echo” techniques—used high flip angle refocusing RF
`pulses, which limited the usable duration of the echo trains and, thus, the
`amount and/or quality of data obtained. See id. at 2:46–3:6.
`
`Unlike most conventional spin-echo techniques, which used constant
`flip angles, the ’644 Patent describes the use of variable flip angles for the
`refocusing RF pulses. Id. at 3:48–55. According to the ’644 Patent, variable
`flip angle pulse sequences according to the claimed invention can extend the
`duration of usable spin-echo trains, which in turn can improve spatial
`resolution and/or reduce the time needed to acquire images. Id. at 3:55–60.
`Further, the variable flip angle sequences of the ’644 Patent use flip angles
`that, typically, are less than the 180° flip angles common in conventional
`spin-echo techniques, permitting less power to be applied to human subjects
`and, thus, enhancing patient safety. Id. at 5:35–47.
`
`Challenged Claims
`C.
`GE challenges claims 153–156, 161, 162, 252, and 253 of the ’644
`
`Patent. Pet. 3, 21–58. Claims 153, 156, 161, and 162 are independent
`claims, and all other challenged claims depend, directly or indirectly, from
`those independent claims. Independent claim 153 is illustrative:
`153. A method for generating a spin-echo pulse sequence for
`operating a magnetic resonance imaging apparatus for imaging
`an object, said method comprising:
`
`4
`
`

`

`IPR2016-00359
`Patent RE44,644 E
`
`
`
`
`
`
`
`
`
`
`
`
`providing a data-acquisition step based on a spin-echo-train
`pulse sequence, said data-acquisition step comprises:
`providing an excitation radio-frequency pulse having a flip
`angle and phase angle;
`providing at least two refocusing radio-frequency pulses,
`each having a flip angle and phase angle,
`wherein, to permit during said data-acquisition step
`at least one of lengthening usable echo-train
`duration,
`reducing
`power
`deposition
`and
`incorporating desired image contrast into the signal
`evolutions, at least one of said angles is selected to
`vary among pulses to yield a signal evolution for the
`associated train of spin echoes for at least one
`substance of
`interest
`in said object, with
`corresponding T1 and T2 relaxation times and spin
`density of interest, and
`wherein, for said signal evolution for said
`substance, the signal amplitude decreases, within
`the first approximately 20% of the total number of
`echoes,
`to a value
`that
`is no more
`than
`approximately two-thirds of the initial value for said
`signal evolution, and the signal amplitude is then
`substantially constant up to at least approximately
`50% of the total number of echoes;
`providing magnetic-field gradient pulses that perform at
`least one of encoding spatial information into at least one
`of the radio-frequency magnetic resonance signals that
`follow at least one of said refocusing radio-frequency
`pulses and dephasing transverse magnetization associated
`with undesired signal pathways to reduce or eliminate
`contribution of said transverse magnetization to sampled
`signals; and
`providing data sampling, associated with magnetic-field
`gradient pulses that perform spatial encoding;
`providing a magnetization-recovery step, said magnetization-
`recovery step comprises at least one of a time delay and at least
`one magnetic-field gradient pulse; and
`
`
`
`5
`
`

`

`IPR2016-00359
`Patent RE44,644 E
`
`
`
`
`
`
`repeating at least one of said data-acquisition step and said
`magnetization-recovery step until a predetermined extent of
`spatial frequency space has been sampled.
`
`
`
`
`
`
`
`
`
`Instituted Grounds of Unpatentability
`D.
`This inter partes review was instituted on the following alleged
`
`grounds of unpatentability:
`
`Claims
`
`153–156, 161, 162, 252, 253
`
`153–156, 161, 162, 252, 253
`
`153–156, 161, 162, 252, 253
`
`153–156, 161, 162, 252, 253
`
`
`
`Basis
`
`Prior Art
`
`§ 102(a)
`§ 102(b)
`
`Mugler 20003
`
`§ 103(a) Mugler 2000 and
`Mugler Overview4
`
`§ 103(a) Mugler 19995 and
`Alsop6
`
`§ 103(a) Mugler 1999, Alsop,
`and Mugler Overview
`
`
`3 J. P. Mugler III et al., Three-Dimensional T2-Weighted Imaging of the
`Brain Using Very Long Spin-Echo Trains, Proceedings of the Int’l Soc. for
`Magnetic Resonance in Med., 8th Meeting (Apr. 2000) (Ex. 1002, “Mugler
`2000”).
`4 John P. Mugler III, Overview of MR Imaging Pulse Sequences, in
`MAGNETIC RESONANCE IMAGING CLINICS OF NORTH AMERICA: PHYSICS OF
`MR IMAGING 661–697 (Scott A. Mirowitz and J. Paul Finn eds., 1999)
`(Ex. 1005, “Mugler Overview”).
`5 J. P. Mugler III et al., Three-Dimensional Spin-Echo-Train Proton-
`Density-Weighted Imaging Using Shaped Signal Evolutions, Proceedings of
`the Int’l Soc. for Magnetic Resonance in Med., 7th Meeting (May 1999)
`(Ex. 1003, “Mugler 1999”).
`6 David C. Alsop, The Sensitivity of Low Flip Angle RARE Imaging,
`37 MAGNETIC RESONANCE IN MED. 176-84 (1997) (Ex. 1004, “Alsop”).
`
`6
`
`

`

`IPR2016-00359
`Patent RE44,644 E
`
`
`
`
`
`
`ANALYSIS
`
`
`
`
`
`
`
`
`
`Claim Construction
`A.
`In an inter partes review, claim terms in an unexpired patent are given
`
`their broadest reasonable construction in light of the specification of the
`patent in which they appear. 37 C.F.R. § 42.100(b); see Cuozzo Speed
`Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016). No claim terms
`require express construction for purposes of this Final Written Decision.7
`See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir.
`1999) (holding that those terms in controversy need to be construed, and
`only to the extent necessary to resolve the controversy).
`
`Level of Ordinary Skill
`B.
`According to GE’s expert8 witness, Dr. Norbert J. Pelc, a person of
`
`ordinary skill in the art would have had “significant working knowledge of
`MR spin-echo imaging, especially fast-spin-echo imaging,” as well as “a
`Ph.D. in a physical science (e.g., electrical or biomedical engineering or
`medical physics) with experience in the development of MR imaging
`techniques, or an M.D. degree or an M.S. degree in a physical science with
`significant (3–5 years) of work experience in the development of MR
`imaging techniques.” Ex. 1009 ¶ 105. The expert9 witness proffered by
`
`
`7 We note that in IPR2016-00357, we construed the claim term “effective
`echo time” in the ’644 Patent as “the time period from the excitation RF
`pulse to the collection of data corresponding to substantially zero-spatial
`frequency (the center of k space).” Gen. Elec. Co. v. Univ. of Va. Patent
`Found., Case IPR2016-00357, slip op. at 8 (PTAB June 21, 2017).
`8 UVAPF did not move to exclude Dr. Pelc’s testimony or otherwise
`challenge his testimony as insufficient under Federal Rule of Evidence 702.
`9 GE did not move to exclude Dr. Hennig’s testimony or otherwise challenge
`his testimony as insufficient under Federal Rule of Evidence 702.
`
`7
`
`

`

`
`
`
`
`
`
`
`
`IPR2016-00359
`Patent RE44,644 E
`
`
`
`
`
`
`UVAPF, Dr. Klaus Jürgen Hennig, concurs generally with Dr. Pelc’s
`description, but adds that a person of ordinary skill would have been
`knowledgeable about particular aspects of spin-echo imaging techniques.
`Ex. 2019 ¶ 20.
`
`Based on Dr. Pelc’s credible testimony, we find that a person of
`ordinary skill in the art would have met Dr. Pelc’s description. We further
`find that Dr. Hennig’s testimony on this issue does not differ materially from
`that of Dr. Pelc, and, in any event, our analysis in this Decision would be
`unchanged were we to apply Dr. Hennig’s description.
`
`C.
`
`Asserted Prior Art
`1. Mugler 2000
`Mugler 2000 is an abstract published in the Proceedings of the
`
`International Society for Magnetic Resonance in Medicine (“ISMRM”),
`Eighth Meeting, which was held in April 2000. See Ex. 1009 ¶ 139 (citing
`Ex. 1018, 72). Mugler 2000 describes research in which the authors applied
`variable flip angle pulse sequences to obtain T2-weighted images of human
`brain tissue. Ex. 1002, 1. The authors “achieved T2-weighted single-slab
`3D imaging of the brain with effective-TEs [(effective echo times)] and
`echo-train durations of greater than 300 and 600ms, respectively.” Id.
`Figure 1 of Mugler 2000 is reproduced below:
`
`
`
`8
`
`

`

`
`
`
`
`
`
`
`
`IPR2016-00359
`Patent RE44,644 E
`
`
`
`
`
`
`Figure 1 is a graph showing the flip angles of the refocusing pulses of a
`pulse sequence that yielded a 160-echo spin-echo train. Ex. 1002, 1. The
`“very long” spin-echo train produced by the pulse sequence of Figure 1 had
`an effective echo time of 328 ms. Id. According to Mugler 2000, the
`disclosed technique could “permit brain imaging with both adequate [signal-
`to-noise ratio] and useful contrast properties, and thus provide a vehicle for
`substantially reducing the imaging time.” Id.
`
`GE contends that Mugler 2000 is prior art under 35 U.S.C. § 102(a)10
`and § 102(b). Pet. 14. UVAPF disputes both contentions. PO Resp. 17–52.
`Based on the full record after trial, we conclude Mugler 2000 is not prior art
`under § 102(a), but that it qualifies as prior art under § 102(b), as explained
`in more detail below.
`
`§ 102(a)
`a.
`It is undisputed that Mugler 2000 was publicly presented at the April
`
`2000 meeting of the ISMRM and published as part of the proceedings of that
`conference. See Ex. 1009 ¶ 139 (citing Ex. 1018, 72). The published
`proceedings were distributed to the attendees of the conference. Id. Based
`on these undisputed facts, GE contends that Mugler 2000 is prior art under
`§ 102(a). Pet. 14.
`
`
`10 UVAPF argues that the Petition did not properly identify § 102(a) as a
`basis to consider Mugler 2000 because the listing of asserted grounds on
`pages 3 of the Petition does not identify any ground as based on § 102(a).
`PO Resp. 17–18. We conclude, however, that the Petition provided enough
`notice to UVAPF of GE’s contention that Mugler 2000 is prior art under
`§ 102(a), and that GE did not violate 37 C.F.R. § 42.104(b). See Pet. 14
`(asserting “Mugler 2000 is also prior art to the ’644 patent under 35 U.S.C.
`§ 102(a)”). Moreover, UVAPF had sufficient opportunity to respond to that
`contention in its Patent Owner Response, and did so. See PO Resp. 18–21.
`
`9
`
`

`

`IPR2016-00359
`Patent RE44,644 E
`
`
`
`
`
`
`
`
`
`
`
`
`UVAPF argues, however, that Mugler 2000 cannot be prior art to the
`
`’644 Patent because it is the work of the named inventors of the ’644 Patent,
`Dr. Mugler and Dr. Brookeman. PO Resp. 18–20 (citing In re Katz, 687
`F.2d 450, 454 (CCPA 1982)). Mugler 2000 lists three authors: Dr. Mugler,
`Dr. Brookeman, and Dr. Berthold Kiefer. Ex. 1002, 1; Ex. 2020 ¶ 4.
`Dr. Kiefer is not a named inventor of the ’644 Patent, but UVAPF argues
`that his contribution to the subject matter of Mugler 2000 was minimal, and
`that he was listed as an author “merely to acknowledge the support he
`provided” to Dr. Mugler and Dr. Brookeman. PO Resp. 20.
`An inventor’s own work is not prior art under § 102(a). See Allergan,
`
`Inc. v. Apotex Inc., 754 F.3d 952, 968 (Fed. Cir. 2014); Katz, 687 F.2d at
`454. In determining whether a reference is the work of the named
`inventor(s), the relevant inquiry is whether the relevant content of the
`reference—such as “the methods, detailed results, statistical analysis and
`discussion,” or “the design, trial, and analysis of results”—was solely the
`work of the inventor(s). See Allergan, 754 F.3d at 969. For example, an
`article may be solely the work of an inventor if the remaining co-authors
`were merely students performing tasks under the inventor’s direction and
`supervision. See Katz, 687 F.2d at 455–56.
`
`Before turning to the evidence to apply these precepts, we first
`address the applicable burdens of proof on the parties. As an initial matter,
`the overall burden of persuasion of proving unpatentability on the asserted
`grounds based on Mugler 2000 lies with GE, and that burden never shifts.
`See In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1375 (Fed. Cir.
`2016); Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375,
`1378 (Fed. Cir. 2015). Therefore, GE bears the burden to establish that
`Mugler 2000 qualifies as prior art. The burden of production, however, may
`
`
`
`10
`
`

`

`
`
`
`
`
`
`
`
`IPR2016-00359
`Patent RE44,644 E
`
`
`
`
`
`
`shift between the parties. See Magnum Oil Tools, 829 F.3d at 1375–76;
`Dynamic Drinkware, 800 F.3d at 1379–80.
`
`Here, GE satisfied the initial burden of production by asserting that
`Mugler 2000 is § 102(a) prior art, and presenting evidence that it was
`published and publicly available before the priority date of the ’644 Patent.11
`See Pet. 14. The burden of production then shifted to UVAPF, and UVAPF
`met that burden by producing evidence to demonstrate that the relevant
`content of Mugler 2000 was solely the work of the inventors of the ’644
`Patent, i.e., the declarations of Dr. Mugler and Dr. Kiefer.12 See PO Resp.
`18–20; Magnum Oil Tools, 829 F.3d at 1376 (“[T]he shifting of the burden
`of production is warranted [when] the patentee affirmatively seeks to
`establish a proposition not relied on by the patent challenger and not a
`necessary predicate for the unpatentability claim asserted.”). Consequently,
`the burden returned to GE to prove that the evidence of record does not
`establish that Mugler 2000 was solely the work of the named inventors. See
`Dynamic Drinkware, 800 F.3d at 1380. GE did not carry this burden.
`
`Mugler 2000, on its face, lists Dr. Kiefer as an author. Ex. 1002, 1.
`Dr. Mugler testifies in his Declaration, however, that Dr. Kiefer’s
`contribution to Mugler 2000 was limited only to providing certain resources
`to Dr. Mugler for his research, such as “access to the latest released pulse-
`sequence programming environment, access to Siemens MR scanners, and
`
`
`11 As discussed further herein, the parties dispute the applicable priority date
`of the ’644 Patent for purposes of determining whether Mugler 2000 is prior
`art under § 102(b). The parties do not dispute, however, that Mugler 2000
`was published before either of the dates advanced by the parties.
`12 UVAPF initially submitted a defective version of Dr. Kiefer’s Declaration
`(Exhibit 2021), but was authorized to file an amended version of the
`Declaration (Exhibit 2035) to correct the defect. See Paper 52.
`
`11
`
`

`

`
`
`
`
`
`
`
`
`IPR2016-00359
`Patent RE44,644 E
`
`
`
`
`
`
`access to experts on Siemens hardware and software.” Ex. 2020 ¶ 4.
`Dr. Kiefer provides essentially the same testimony in his Declaration.
`See Ex. 2035 ¶ 3. We find the testimony of both witnesses to be credible.
`
`The record also includes four e-mails that GE asserts are relevant to
`Mugler 2000. See Pet. Reply 21–22 (citing Exs. 2025–2028).13 Exhibit
`2028 is an e-mail exchange involving Dr. Mugler and Dr. Kiefer in January
`1999, which refers to multiple trips that Dr. Mugler took to Erlangen,
`Germany, for MRI-related research. Ex. 2028, 1–2. It addresses an
`upcoming trip for work “on the implementation and optimization of 3d-
`techniques (3d-tse, 3d-grase, 3d-GRE) for Neuro and especially for neck
`imaging.” Id. at 1. Dr. Kiefer remarks that this upcoming trip “should be a
`good opportunity for transfer of knowledge in both directions.” Id.
`
`Exhibit 2025 is a November 1999 e-mail in which Dr. Kiefer writes to
`Dr. Mugler that he is “very pleased that you remembered on me [sic] and put
`me on your paper.” Ex. 2025, 1. The subject of the e-mail is “ISMRM
`Abstract.” Id. He states, “I read your paper very carefully and like the
`content and the results of the variable flip angle approach.” Id. Thus, to the
`extent Dr. Kiefer was referring to Mugler 2000, the paper appears to have
`been already written. Dr. Kiefer further indicates that others in his company
`(Siemens) are “very excited” about Dr. Mugler’s results and that many have
`expressed “wishes . . . for a WIP sequence.” Id.
`
`
`13 Exhibits 2025–2028 were filed originally under seal. As discussed below,
`these exhibits will be unsealed in conjunction with this Decision. We note
`that the public version of the Petitioner Reply (Paper 28) cited herein
`includes redactions relating to these exhibits. As set forth below, GE shall
`file an amended Petitioner Reply removing redactions consistent with this
`Decision. Our citations herein to redacted portions of Paper 28, thus, should
`be understood to refer to this amended Petitioner Reply, once filed.
`
`12
`
`

`

`
`
`
`
`
`
`
`
`IPR2016-00359
`Patent RE44,644 E
`
`
`
`
`
`
`Exhibit 2026 is a November 1999 e-mail exchange between
`
`Dr. Kiefer and Dr. Mugler in which Dr. Mugler consults Dr. Kiefer about a
`technical problem he has run into on a Siemens Symphony MR scanner, and
`Dr. Kiefer responds with a suggested solution. Ex. 2026, 1–2. This e-mail
`exchange occurred after the e-mail of Exhibit 2025. See id.
`
`Finally, Exhibit 2027 is a February 2000 e-mail exchange involving
`Dr. Kiefer and Dr. Mugler regarding a “3D TSE WIP package” that they
`have been collaborating on. Ex. 2027, 1–2. The scientists discuss technical
`details regarding the documentation for the package, and an image artifact
`observed during tests of the package’s sequences. Id.
`
`GE’s contention that Dr. Kiefer contributed sufficiently to Mugler
`2000 such that it qualifies as prior art is principally based on (1) Mugler
`2000 itself, which lists Dr. Kiefer as a co-author; and (2) the four e-mails
`discussed above. See Pet. Reply 20–23. Whether a reference lists non-
`inventor co-authors, however, is not dispositive in itself. Allergan, 754 F.3d
`at 969. Further, none of the four e-mails relied on by GE sufficiently rebut
`the credible testimony of Dr. Mugler and Dr. Kiefer, both of whom testify
`that Dr. Kiefer’s contribution was limited to providing access to equipment
`and related resources. See Ex. 2020 ¶ 4; Ex. 2035 ¶ 3.
`
`The e-mails indicate that Dr. Mugler and Dr. Kiefer collaborated on
`multiple projects, at least some of which were not included in Mugler 2000.
`Thus, the probative value of those e-mails is questionable at best because it
`is unclear whether, or how, they pertain to Mugler 2000.14 For example,
`Dr. Kiefer’s January 1999 e-mail referred to potential work on “3d-grase”
`
`
`14 GE deposed Dr. Mugler but does not identify in its briefing any deposition
`testimony bearing on these e-mails. GE did not depose Dr. Kiefer. See
`Paper 52, 4–5 (discussing GE’s decision not to depose Dr. Kiefer).
`
`13
`
`

`

`IPR2016-00359
`Patent RE44,644 E
`
`
`
`
`
`
`
`
`
`
`
`
`and “neck imaging.” Ex. 2028, 1. Mugler 2000 makes no mention of
`GRASE imaging or neck imaging. In addition, Dr. Kiefer indicated in
`November 1999, after Mugler 2000 was already written, that his colleagues
`were requesting a turbo spin-echo “WIP sequence.” See Ex. 2025, 1. That
`appears to have led to the work described in the February 2000 e-mail
`exchange, which suggests that the work occurred after Mugler 2000 was
`written. See Ex. 2027, 1–2. The technical issues discussed in Exhibit 2026
`also appear to relate to work done after Mugler 2000 was written because an
`earlier e-mail (Exhibit 2025) indicates Mugler 2000 had already been
`written. See Ex. 2026, 1–2; Ex. 2025, 1.
`
`The arguments that GE advances are unpersuasive. As discussed
`above, GE’s reliance on the above e-mails is unconvincing because they
`have limited probative value, at best. GE’s reliance on authorship guidelines
`that allegedly applied to Dr. Mugler (Pet. Reply 22) also is unavailing
`because the guidelines in question date from 2009, nearly a decade after
`Mugler 2000 was published, and GE does not identify any evidence that
`similar guidelines applied to Dr. Mugler (or Dr. Brookeman) in 2000.
`See Ex. 1048, 1.
`
`GE also attempts to undermine Dr. Mugler’s testimony by noting that
`Dr. Mugler may not have reviewed the e-mails between himself and
`Dr. Kiefer prior to providing the testimony in his Declaration, relying
`primarily on his memory instead. Pet. Reply 21. GE does not, however,
`identify evidence indicating that Dr. Mugler’s memory may have been
`flawed or unreliable. To the contrary, the recollections he provides in his
`Declaration were corroborated by Dr. Kiefer’s testimony. For similar
`reasons, GE’s argument that Dr. Mugler’s testimony should be discounted
`because of an alleged personal financial interest in the outcome of this
`
`
`
`14
`
`

`

`
`
`
`
`
`
`
`
`IPR2016-00359
`Patent RE44,644 E
`
`
`
`
`
`
`proceeding is unpersuasive. See id. at 22. Even assuming GE’s allegations
`as to Dr. Mugler’s potential bias are correct, GE does not allege any similar
`bias in Dr. Kiefer’s testimony, which is the same as Dr. Mugler’s testimony
`in substance.15
`
`Additionally, GE notes that Mugler 2000 itself refers to “we” when
`describing the work it discusses. Id. at 21. We are not persuaded, however,
`that this phrasing should be understood to indicate any particular
`contributions by particular co-authors. Nor is GE’s argument persuasive that
`Dr. Mugler’s testimony should be disbelieved because of an alleged
`violation of a duty of candor to the Patent Office. Id. at 22. Again, his
`testimony was corroborated by Dr. Kiefer.
`Although GE is correct that, under Allergan, the correct inquiry is
`
`whether the methods, detailed results, statistical analysis, and discussion of
`Mugler 2000 were solely the work of the named inventors (Pet. Reply 22–
`23), the evidence of record fails to support GE’s contention that they were
`not. Merely providing access to equipment and related resources does not
`indicate sufficient contribution to the design, trial, or analysis of the results
`of the research for purposes of § 102(a). See Allergan, 754 F.3d at 969.
`Thus, GE has failed to carry its burden of proving that Mugler 2000 is prior
`art under § 102(a).
`
`§ 102(b)
`b.
`Although GE failed to demonstrate that Mugler 2000 is § 102(a) prior
`
`art, GE established sufficiently that Mugler 2000 is prior art under § 102(b).
`
`
`15 GE also argues in its Petitioner Reply that Dr. Kiefer’s Declaration should
`be given no weight because it is not properly sworn. Pet. Reply 20.
`UVAPF, however, subsequently submitted an amended version of the
`Declaration correcting that defect. See Paper 52; Ex. 2035.
`
`15
`
`

`

`IPR2016-00359
`Patent RE44,644 E
`
`
`
`
`
`
`
`
`
`
`
`
`GE contends that the ’644 Patent should not receive the benefit of the filing
`date of the ’182 Application and, thus, its effective priority date should be its
`filing date, i.e., December 21, 2001. Pet. 7–8. As a result, according to GE,
`the Mugler 2000 reference is prior art under 35 U.S.C. § 102(b) because it
`was published in April 2000, more than one year earlier. Id. at 14.
`
`UVAPF contends that Mugler 2000 is not § 102(b) prior art. PO
`Resp. 21–52. More specifically, UVAPF argues the ’182 Application
`provides sufficient written description support for the challenged claims
`such that they are entitled to the priority date of the ’182 Application, i.e.,
`December 21, 2000. Id. Based on the full record after trial, however, the
`challenged claims have not been shown to have sufficient support in the
`written description of the ’182 Application and, thus, priority has not been
`established earlier than December 21, 2001.
`
`As with § 102(a), GE bears the burden to prove that Mugler is prior
`art under § 102(b) as part of its overall burden of persuasion to prove
`unpatentability. See Dynamic Drinkware, 800 F.3d at 1378. GE also bears
`the initial burden of production, but satisfied that burden by asserting that
`Mugler 2000 is prior art under § 102(b). See id. at 1379. The burden then
`shifted to UVAPF to produce evidence that the challenged claims of the
`’644 Patent are entitled to an earlier priority date. See id. at 1380. UVAPF
`met that burden by producing arguments and evidence to attempt to prove
`that the disclosure of the ’182 Application provides sufficient written
`description support for the challenged claims. See PO Resp. 21–52. Thus,
`the burden shifted back to GE to prove that the ’182 Application does not
`support the claims. See Dynamic Drinkware, 800 F.3d at 1380. GE met that
`burden successfully, as explained below.
`
`
`
`16
`
`

`

`
`
`
`
`
`
`
`
`IPR2016-00359
`Patent RE44,644 E
`
`
`
`
`
`
`For a patent to claim priority to the filing date of its provisional
`
`application, the written description of the provisional application must be
`sufficient to support the relevant claims of the patent under 35 U.S.C. § 112.
`Dynamic Drinkware, 800 F.3d at 1378 (citing New Railhead Mfg., L.L.C. v.
`Vermeer Mfg. Co., 298 F.3d 1290, 1294 (Fed. Cir. 2002)). Sufficient written
`description support requires providing enough information in the application
`to indicate to a person of ordinary skill that the inventor had possession of
`the full scope of the claims. In re Wertheim, 541 F.2d 257, 262–64
`(C.C.P.A. 1976). The disclosure need not recite the claimed invention in
`haec verba, but a disclosure that “merely renders the invention obvious” is
`insufficient. Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1352
`(Fed. Cir. 2010) (en banc).
`
`Each of the challenged independent claims recites that the signal
`amplitude for the signal evolution “decreases . . . to a value that is no more
`than approximately two-thirds of the initial value for said signal evolution”
`(the “signal amplitude ratio limitation”). According to UVAPF, the ’182
`Application provides sufficient written description support for the signal
`amplitude ratio limitation because a person of ordinary skill in the art would
`have been able to derive the full scope of the recited range, i.e., up to “no
`more than approximately two-thirds.” See PO Resp. 48–52 (citing Vas-Cath
`Inc. v. Mahurkar, 935 F.2d 1555, 1566 (Fed. Cir. 1991)). UVAPF relies on
`Figure 2 of the ’182 Application, which appears to depict an embodiment in
`which the signal decreases from about 0.3 to about 0.1516 (i.e., a ratio of
`about one-half). See Ex. 1014, Fig. 2. Figure 2 is reproduced below:
`
`
`16 The ’182 Application does not specify the units for the “normalized
`signal” of Figure 2.
`
`17
`
`

`

`IPR2016-00359
`Patent RE44,644 E
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Figure 2 is a graph showing the changes in the “normalized signal” for a
`signal evolution for brain tissue. Ex. 1014, Fig. 2.
`
`Relying on the testimony of its expert, Dr. Hennig, UVAPF asserts
`that a person of ordinary skill would have understood that other signal
`amplitude ratios could be obtained by adjusting the signal decay constant for
`the signal evolution. PO Resp. 48–52 (citing Ex. 2019 ¶¶ 102–105). As
`UVAPF notes (id.), the ’182 Application states that “[t]he signal evolution
`may assume any physically-realizable shape.” Ex. 1014, 8. Dr. Hennig
`testifies that the necessary modifications of the decay constant would have
`been within the level of ordinary skill, and that an ordinary artisan, thus,
`could have derived a signa