trials@uspto.gov
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`571-272-7822
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`IPR2016-00317 Paper No. 39
`IPR2016-00476 Paper No. 39
`IPR2016-00547 Paper No. 32
`March 15, 2017
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`
`
`RECORD OF ORAL HEARING
`UNITED STATES PATENT AND TRADEMARK OFFICE
`- - - - - -
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`- - - - - -
`ELEKTA, INC.,
`Petitioner,
`v.
`VARIAN MEDICAL SYSTEMS, INC.,
`Patent Owner.
`- - - - - - -
`Case IPR2016-00317 (Patent No. 7,945,021 B2)
`Case IPR2016-00476 (Patent No. 8,116,430 B1)
`Case IPR2016-00547 (Patent No. 7,945,021 B2)
`Technology Center 2800
`Oral Hearing Held: Tuesday, February 28, 2017
`
`Before: BRIAN J. McNAMARA; PATRICK M. BOUCHER
`(via video link); and GARTH D. BAER, Administrative Patent Judges.
`
`The above-entitled matter came on for hearing on Tuesday,
`February 28, 2017, at 2:00 p.m., in Hearing Room B, taken at the U.S.
`Patent and Trademark Office, 600 Dulany Street, Alexandria, Virginia.
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`571-272-7822
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`IPR2016-00317 Paper No. 39
`IPR2016-00476 Paper No. 39
`IPR2016-00547 Paper No. 32
`March 15, 2017
`
`
`
`RECORD OF ORAL HEARING
`UNITED STATES PATENT AND TRADEMARK OFFICE
`- - - - - -
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`- - - - - -
`ELEKTA, INC.,
`Petitioner,
`v.
`VARIAN MEDICAL SYSTEMS, INC.,
`Patent Owner.
`- - - - - - -
`Case IPR2016-00317 (Patent No. 7,945,021 B2)
`Case IPR2016-00476 (Patent No. 8,116,430 B1)
`Case IPR2016-00547 (Patent No. 7,945,021 B2)
`Technology Center 2800
`Oral Hearing Held: Tuesday, February 28, 2017
`
`Before: BRIAN J. McNAMARA; PATRICK M. BOUCHER
`(via video link); and GARTH D. BAER, Administrative Patent Judges.
`
`The above-entitled matter came on for hearing on Tuesday,
`February 28, 2017, at 2:00 p.m., in Hearing Room B, taken at the U.S.
`Patent and Trademark Office, 600 Dulany Street, Alexandria, Virginia.
`
`
`
`APPEARANCES:
`ON BEHALF OF THE PETITIONER:
`
`
`
`ERICK J. PALMER, ESQ.
`AMANDA STREFF, ESQ.
`Mayer Brown LLP
`71 South Wacker Drive
`Chicago, Illinois 60606
`312-782-0600
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`THERESA M. GILLIS, ESQ.
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`Mayer Brown LLP
`
`
`1221 Avenue of the Americas
`
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`New York, New York 10020-1001
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`212-506-2500
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`ON BEHALF OF THE PATENT OWNER:
`
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`DANIEL J. KNAUSS, ESQ.
`REUBEN CHEN, ESQ.
`Cooley LLP
`3175 Hanover Street
`Palo Alto, California 94304-1130
`650-843-5480
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`Case IPR2016-00317 (Patent No. 7,945,021 B2)
`Case IPR2016-00476 (Patent No. 8,116,430 B1)
`Case IPR2016-00547 (Patent No. 7,945,021 B2)
`
`
`P R O C E E D I N G S
`
`(2:00 p.m.)
`JUDGE BAER: Please be seated. Good afternoon,
`everyone. We are here this afternoon for our final hearing in
`IPR2016- 00317, 2016- 00476 and 2016- 0547. The Petitioner in
`these cases is Elekta and the Patent Owner is Varian Medical
`Systems.
`
`I'm Judge Baer. With me is Judge McNamara.
`And Judge Boucher is appearing remotely from Denver.
`Let's start off and we will get the parties'
`appearances, please. So who do we have for Petitioner?
`MR. PALMER: For Petitioner, Erick Palmer from
`Mayer Brown LLP. And with me are my colleagues Theresa
`Gillis and Amanda Streff.
`JUDGE BAER: Thank you, Mr. Palmer. And for
`the Patent Owner who do we have?
`MR. KNAUSS: Good afternoon, Your Honor. Dan
`Knauss from Cooley for Patent Owner, Varian Medical
`Systems. With me is Ruben Chen.
`JUDGE BAER: Good afternoon, Mr. Knauss.
`Thank you. Welcome. It's good to have you all here. We
`appreciate you making the effort to be here and we are looking
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`Case IPR2016-00317 (Patent No. 7,945,021 B2)
`Case IPR2016-00476 (Patent No. 8,116,430 B1)
`Case IPR2016-00547 (Patent No. 7,945,021 B2)
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`forward to hearing from you about these cases.
`We set forth the procedure for today's hearing in
`our oral argument order. But just to remind everybody how
`this is going to work, each party will have 45 minutes of total
`time to present their arguments.
`Please keep in mind that whatever is projected on
`the screens will not be viewable by Judge Boucher, but he has
`a copy of the materials.
`So when you refer to an exhibit on the screen,
`please state for the record the exhibit and page number or, for
`demonstratives, the slide number to which you are referring.
`This is also important so that the transcript is clear.
`Please also remember that if you step away from
`the microphone, Judge Boucher might not be able to hear you,
`so you should stay near the microphone, please.
`I will give each counsel a warning when you are
`reaching the end of your argument time. I believe also you
`will see a yellow light when you have a minute to go.
`Do counsel have any questions or concerns? For
`Petitioner?
`MR. PALMER: No, Your Honor.
`JUDGE BAER: For the Patent Owner?
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`Case IPR2016-00317 (Patent No. 7,945,021 B2)
`Case IPR2016-00476 (Patent No. 8,116,430 B1)
`Case IPR2016-00547 (Patent No. 7,945,021 B2)
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`MR. KNAUSS: No, Your Honor.
`MR. PALMER: Great. We would like to remind
`each party that under no circumstances are you to interrupt the
`other party while that party is presenting its arguments and
`demonstratives. If you believe that a demonstrative or an oral
`argument presented by the other party is objectionable for any
`reason, that objection should be raised only during your
`argument time. Okay?
`So with that I think we are ready to begin.
`Petitioner has the burden of proof and so will go first. Good
`morning, or good afternoon, I should say, Mr. Palmer.
`MR. PALMER: Thank you, Your Honors.
`JUDGE BAER: And I should ask, do you want to
`reserve some time?
`MR. PALMER: Yes. I would like to reserve 20
`minutes for rebuttal.
`JUDGE BAER: Okay. With that we are ready to
`
`begin.
`
`MR. PALMER: May it please the Board. As
`shown on slides 2 and 3 of the demonstratives, there are three
`proceedings today. Two involve the '021 patent and the other
`involves the '430 patent.
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`Case IPR2016-00317 (Patent No. 7,945,021 B2)
`Case IPR2016-00476 (Patent No. 8,116,430 B1)
`Case IPR2016-00547 (Patent No. 7,945,021 B2)
`
`
`Across these three proceedings the remaining
`disputed issues are actually limited to only two claim terms.
`The first is the "capable of implementing a treatment plan"
`limitation, which is only applicable to the 317 proceeding.
`The second limitation is the "communications network"
`limitation, which applies to all of the proceedings.
`The Board previously construed both of these
`terms in a final written decision in case IPR2015- 1401 that
`issued in December of this past year. And because the parties
`previously litigated these constructions, the Board's
`constructions in the 1401 proceeding should be adopted in
`today's proceedings under the principles of collateral estoppel.
`And so on slides 5 and 6, we have outlined the
`principles, legal principles for collateral estoppel, and on
`slides 8 and 9 we have identified this Panel's previous
`constructions of those disputed terms.
`JUDGE BAER: So let's address that collateral
`estoppel issue a little bit. The case that you cite, in fact cases
`that you cite, none of them hold that a panel or an
`administrative agency applying collateral estoppel to an
`administrative agency's decision. Is that correct?
`MR. PALMER: That is correct.
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`Case IPR2016-00476 (Patent No. 8,116,430 B1)
`Case IPR2016-00547 (Patent No. 7,945,021 B2)
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`
`JUDGE BAER: Do you know of any cases that
`have held, in which a panel or an administrative agency has
`held collateral estoppel for an issue based on an agency
`decision or even a court decision, for that matter?
`MR. PALMER: So there are cases where the issue
`of collateral estoppel in the IPR proceedings have come up.
`There is no per se rule precluding the use of collateral
`estoppel.
`
`But practically what other Boards have done is
`they have decided the same way as they did in their previous
`proceeding based on the same evidence for the very same
`reasons.
`
`So you can get there one of two ways: You could
`either use collateral estoppel, which would be more efficient,
`you wouldn't have to go through all of the issues, particularly
`with respect to the 317 proceeding, or if you did want to go
`through the issues, I will point out today where the issues have
`already been decided, fully litigated, and so the conclusion
`that you reach in these proceedings today should at least be
`the same conclusion that you reached previously.
`JUDGE BAER: But you are articulating it as we
`can go either way as sort of our choice, and I just want to be
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`Case IPR2016-00317 (Patent No. 7,945,021 B2)
`Case IPR2016-00476 (Patent No. 8,116,430 B1)
`Case IPR2016-00547 (Patent No. 7,945,021 B2)
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`clear about this. If collateral estoppel applies, and if you are
`right that an agency is collaterally estopped from deciding an
`issue it has already decided, wouldn't it be true that we don't
`have discretion to address the issues substantively, that we are
`bound by collateral estoppel?
`MR. PALMER: Yes, so pardon me for
`misspeaking. I think that is absolutely correct. So the
`Supreme Court does say that collateral estoppel can apply
`under the four requirements of collateral estoppel to a prior
`agency proceeding.
`And that case was with respect to a later District
`Court decision, but there is nothing in any of the case law
`where it is an IPR proceeding, a prior IPR proceeding that
`collaterally estops a later IPR proceeding.
`JUDGE McNAMARA: So the Supreme Court case
`you are talking about is B&B Hardware, is that right?
`MR. PALMER: Yes.
`JUDGE McNAMARA: Can you tell me what
`happened there?
`MR. PALMER: Yeah, so that was a decision that
`came from the TTAB, so not the PTAB but the TTAB. And in
`a later District Court decision the party was estopped from
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`Case IPR2016-00476 (Patent No. 8,116,430 B1)
`Case IPR2016-00547 (Patent No. 7,945,021 B2)
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`making certain arguments that had already been determined,
`the same factual issues that had already been determined in the
`preceding TTAB decision.
`JUDGE McNAMARA: So the TTAB decision then
`collaterally estopped the party from making different
`arguments at the District Court?
`MR. PALMER: Correct. And the reverse can be
`true as well. The only thing that you need is you need the four
`requirements.
`So sometimes if you are in one proceeding and
`then you have a later proceeding, there might be some kind of
`procedural issue that is not offered in the first proceeding that
`is offered in the second, and that comes up a lot in
`reexaminations.
`So in reexaminations, for example, you have -- you
`are allowed to offer in declaration evidence but you are not
`allowed to depose the expert witness about that declaration.
`In an IPR context it is a little different. So the
`depositions, or the declarations from the experts come in and
`then there is the opportunity to depose those experts.
`So in a situation like that, the IPR Board did not
`use collateral estoppel based on the previous proceeding
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`Case IPR2016-00476 (Patent No. 8,116,430 B1)
`Case IPR2016-00547 (Patent No. 7,945,021 B2)
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`because of those procedural differences.
`But that's not what we have here. What we have
`here is, particularly in the 317 case, we have all of the same
`issues, all of the same claim construction terms, all of the
`same prior art references, and all of the same evidence that is
`in the record.
`JUDGE BAER: My concern is a little bit more
`basic, though. It seems to me that collateral estoppel matters
`very much to what and for what, if you will.
`The fact that it applied at the District Court seems
`to me pretty significant because, as I understand the doctrine,
`it is based in equity largely, and we are not a court of equity.
`And, in fact, we do have estoppel provisions but those are laid
`out very clearly in the statute, in the relevant regulations.
`So even looking at the B&B Hardware sort of
`reasoning, first of all, it is different than what we have here
`because that was whether it applies to a District Court, and,
`second of all, we have regulations on point. We have statutes
`on point that address estoppel and we're not a court of equity.
`So where is our authority to apply a fundamentally
`equitable doctrine?
`MR. PALMER: Well, sir, I believe that the
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`Case IPR2016-00317 (Patent No. 7,945,021 B2)
`Case IPR2016-00476 (Patent No. 8,116,430 B1)
`Case IPR2016-00547 (Patent No. 7,945,021 B2)
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`regulation you are talking about is 42.73(d), and that's Patent
`Owner estoppel.
`The panels who have interpreted that regulation
`have interpreted it in the context of later prosecution in
`obtaining a patent claim that is patentably indistinct from a
`claim that was finally cancelled in some proceeding that went
`forth before the Board.
`And so that's a little different from the issues here,
`which is we don't have a finally cancelled claim in that
`proceeding, but what we have and what we're talking about
`here is, are the issues the same?
`The claim construction terms are the same. The
`parties have fully litigated that previously. And the Board has
`reached a decision on those claims, the proper constructions of
`those claim terms.
`And so we think that you can apply collateral
`estoppel to adopt those same claim constructions.
`JUDGE BAER: To be clear, you are not asserting
`that we would apply collateral estoppel under the regulation,
`under 37 CFR 42.73(d). You are asserting we would apply the
`equitable sort of judicial collateral estoppel that was addressed
`in the B&B Hardware case. Is that correct?
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`Case IPR2016-00317 (Patent No. 7,945,021 B2)
`Case IPR2016-00476 (Patent No. 8,116,430 B1)
`Case IPR2016-00547 (Patent No. 7,945,021 B2)
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`
`MR. PALMER: Correct, yes, yes. So the PTAB is
`one of the busiest patent courts in the country right now due to
`these proceedings. It is also on a one-year statutory deadline.
`So I don't think there is anything that could
`preclude, that necessarily precludes the Board from applying
`principles of collateral estoppel to both control its case load as
`well as to meet its statutory deadlines.
`JUDGE BAER: Well, while I agree with you it
`might be -- there might be reasons to do that. My concern is
`that we have statutes that instruct us that we need to make
`determinations in an IPR, and my concern is you are proposing
`that we forego what it says to do in favor of an estoppel
`provision, and I'm not sure that we have the authority to do
`that.
`
`So while I agree it might be convenient, that
`doesn't mean that we can apply a doctrine that fundamentally
`has its roots in equity when we are not a court of equity in
`light of our statutes and regulations that do tell us what we can
`and cannot do, and in particular tell us what we can and can't
`do in the context of estoppel.
`You know, I guess we don't need to spend a whole
`lot more time on it. Obviously you all couldn't brief the issue
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`Case IPR2016-00317 (Patent No. 7,945,021 B2)
`Case IPR2016-00476 (Patent No. 8,116,430 B1)
`Case IPR2016-00547 (Patent No. 7,945,021 B2)
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`because -- given the timing of everything. And it may be that
`we will request a little bit more briefing on the issue. So we
`can move on. So why don't we jump into your substantive
`case.
`
`MR. PALMER: Okay. So, sure. So, yes, I
`appreciate the questions, but as you will see all of the issues
`in the 317 proceeding are exactly the same.
`And so for those very same reasons, even if you
`don't apply collateral estoppel, we think that you should
`certainly reach the same conclusion as you did in the final
`written decision in the 1401 case.
`So going to the 317 proceeding, the 317 proceeding
`involves the '021 patent. I don't want to spend much time on
`the 317 proceeding but here is all you need to know: The
`issues raised in the 317 proceeding are the exact same issues
`that was finally decided in the 1401 proceeding, based on the
`exact same claim terms and the exact same disclosures in the
`exact same prior art references.
`So that's what I'm talking about where the issues
`are identical. So the identical issues in the 1401 are the same
`issues that are in this proceeding. And so we have
`summarized in slides 11 through 17 the evidence on which the
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`Case IPR2016-00317 (Patent No. 7,945,021 B2)
`Case IPR2016-00476 (Patent No. 8,116,430 B1)
`Case IPR2016-00547 (Patent No. 7,945,021 B2)
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`Board relied in the previous 1401 proceeding in finding that
`the claims were anticipated.
`And in slides 18 to 26, we have provided a
`summary of the same information with respect to the
`obviousness ground in the 1401 proceeding.
`So if there are no further questions with respect to
`any of that evidence which the parties have already argued for
`an hour and a half previously, I will move on to the next
`proceeding.
`JUDGE BAER: Sure.
`MR. PALMER: The next proceeding is the 547
`proceeding. It involves claims 57 to 59 of the '021 patent.
`And as you will see on slide 28, again, there is only one issue
`here, and that is whether the prior art discloses a computing
`unit coupled to the rotatable gantry via a communications
`network to store the image projection data.
`That's the same limitation that was raised in the
`1401 proceeding as well. And in this proceeding the answer to
`that question is yes. And I will explain where that disclosure
`is in all of the prior art references.
`So if you flip to page 30, in Exhibit 1020 at 1076
`under Image Acquisition, it says that the cornerstone of the
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`Case IPR2016-00317 (Patent No. 7,945,021 B2)
`Case IPR2016-00476 (Patent No. 8,116,430 B1)
`Case IPR2016-00547 (Patent No. 7,945,021 B2)
`
`kilovoltage cone-beam CT system is integrated onto the gantry
`of an Elekta SL- 20 linear accelerator.
`So, again, as you might remember from the
`previous proceeding, you have an Elekta SL- 20 linear
`accelerator. You have a cone- beam CT system that is
`integrated onto it. And there is also a flat panel imager that is
`integrated into the CBCT system. So we're talking the same
`thing that was in the previous proceeding.
`In the Jaffray MICCAI 2001 reference, it
`specifically cites to Jaffray JRO 1999 which is reference 4 in
`the yellow highlight there on the slide.
`And if you look at the computing unit in Jaffray
`JRO 1999, you'll see that you have a computer, a computing
`unit, that's the PC there, that is running a software application,
`and the top red oval you will see there is a connection between
`the ADC/DIO board and the SL- 20 gantry to monitor the
`gantry angle.
`JUDGE BAER: Could I get a clarification from
`you, counsel? Is it your position that Jaffray MICCAI
`incorporates explicitly by reference the Jaffray JRO 1999 or
`are you articulating an obviousness position? What are we
`addressing specifically?
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`Case IPR2016-00476 (Patent No. 8,116,430 B1)
`Case IPR2016-00547 (Patent No. 7,945,021 B2)
`
`
`MR. PALMER: So we go at it both ways. So the
`first is that this computer system is inherently disclosed in the
`Jaffray MICCAI reference because Jaffray MICCAI references
`to the Jaffray JRO.
`JUDGE BAER: And just to be clear, and I think
`we need to be precise with what we're talking about, are you
`saying that it incorporates the material by reference, or are
`you saying that it inherently discloses the material by
`referencing it, and is there any difference between those two
`things?
`
`MR. PALMER: So I'm saying the latter. You can
`resort to extrinsic information to prove inherent features that
`would be disclosed in an article.
`JUDGE BAER: And are the standards for inherent
`disclosures any different than the standards for incorporation
`by reference?
`MR. PALMER: Yes. So inherent disclosure -- so
`in order to resort to extrinsic evidence to show inherent
`disclosure, you don't have to show that there is an
`incorporation by reference like you do under the incorporation
`by reference law.
`JUDGE BAER: So even if you don't meet the
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`Case IPR2016-00317 (Patent No. 7,945,021 B2)
`Case IPR2016-00476 (Patent No. 8,116,430 B1)
`Case IPR2016-00547 (Patent No. 7,945,021 B2)
`
`standards for incorporation by reference, the clear as to where
`and the clear as to what, even if you don't meet that your
`position is by the reference there is an inherent disclosure. Is
`that correct?
`MR. PALMER: Correct.
`JUDGE BAER: Okay.
`MR. PALMER: That's correct. And if there is not,
`if you don't agree with us and you don't find that, clearly the
`combination of the Jaffray MICCAI publication specifically
`referencing the JRO CBCT system would be, in combination, a
`teaching of a computing unit that is coupled to the rotatable
`gantry, as you can see in the top red oval, and is also coupled
`to a file server through a net card for data storage, so to store
`the image projection data.
`So you get the claimed computing unit certainly
`from the combination of Jaffray MICCAI and Jaffray JRO to
`the extent that you don't find that there is an inherent
`disclosure. Does that make sense?
`JUDGE BAER: It does.
`MR. PALMER: So that's inherency. That has also
`tied us into obviousness. We didn't stop at the JRO because
`there are other Jaffray articles that disclose the same
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`Case IPR2016-00317 (Patent No. 7,945,021 B2)
`Case IPR2016-00476 (Patent No. 8,116,430 B1)
`Case IPR2016-00547 (Patent No. 7,945,021 B2)
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`computing unit.
`So, for example, on slide 32, Jaffray 2001
`discloses a computing unit. And in the highlighted text there,
`Exhibit 1003 at 804, it says that the software application, one,
`monitors the gantry angle through a precision potentiometer
`and, two, collects the host, the resulting host projections in
`host memory.
`So, again, that computing unit in the Jaffray 2001
`article is a computing unit coupled to the rotatable gantry via
`communications network to store image projection data, which
`is exactly what it is like in the Jaffray JRO '99 reference.
`And the motivation to combine, as Dr. Hamilton
`has noted, if you have computer control of various components
`of a medical linear accelerator, it would have been obvious to
`use a communications network so that those could efficiently
`communicate with one another and improve efficiencies in
`delivering radiation therapy.
`And so we think based on that, if you don't find
`that Jaffray MICCAI anticipates claims 57 through 59, we
`think that you should find that they are obvious in view of
`Jaffray MICCAI 2001, Jaffray 2001, and Jaffray JRO 1999.
`Now I would like to move on to the Jaffray
`
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`Case IPR2016-00317 (Patent No. 7,945,021 B2)
`Case IPR2016-00476 (Patent No. 8,116,430 B1)
`Case IPR2016-00547 (Patent No. 7,945,021 B2)
`
`Publication. So as you see on slide 34 --
`JUDGE BAER: Pardon me, counsel. A point of
`clarity that I have been curious about: Why the two
`references? Why both the application and the publication? I
`can't figure that one out. Why submit both of them? Why not
`just one of them?
`They seem to be the same thing. One seems to be
`pretty clear as to date. They are identical. Why submit both
`of them? That was baffling to me.
`MR. PALMER: Yeah, so what we have to deal
`with on our end is this is in litigation and so we have to deal
`with 315 estoppel. And there is some question as to whether
`grounds that could have been raised in the IPR proceeding can
`later be raised in the District Court case.
`And so what we did here was we covered our
`
`bases.
`
`JUDGE BAER: I'm not sure I understand, but I
`guess we will let it go. I mean, but they are the same. I mean,
`they are exactly the same. How could one be better than the
`other, one be better than the other?
`MR. PALMER: Well, I agree, they are very
`similar in terms of their disclosure.
`
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`Case IPR2016-00317 (Patent No. 7,945,021 B2)
`Case IPR2016-00476 (Patent No. 8,116,430 B1)
`Case IPR2016-00547 (Patent No. 7,945,021 B2)
`
`
`JUDGE BAER: Okay. All right.
`MR. PALMER: But the Jaffray Publication, as you
`noted, is very similar. Again, here we have a computing unit,
`the computing unit for the CBCT system that transfers image
`projection data via an RS-422 bus to a hardware buffer in the
`host computer. And so, again, this computer is collecting the
`image projection data in memory.
`As you can see on slide 35, slide 35 is two cutouts
`further describing the computing unit. So the computing unit
`here monitors and controls the gantry rotation and it
`synchronizes the flat panel imager readout along with that
`gantry rotation.
`And so what that means is that computing unit is
`monitoring the gantry angle. When it hits a certain gantry
`angle it exposes, it creates an x- ray exposure. That exposure
`creates an image projection on the flat panel imager.
`And then that computer reads out that image
`projection from the flat panel imager to store it into the
`computer so that it can later be reconstructed into the
`volumetric image that is ultimately produced.
`So based on all of that, again, the Jaffray
`Publication discloses a computing unit coupled to the rotatable
`
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`Case IPR2016-00317 (Patent No. 7,945,021 B2)
`Case IPR2016-00476 (Patent No. 8,116,430 B1)
`Case IPR2016-00547 (Patent No. 7,945,021 B2)
`
`gantry via communications network to store the image
`projection data. And this is going to be the case for all of the
`CBCT computers because that's how they work.
`As you will see on slide 36, so collateral estoppel
`would not necessarily apply here because the issues aren't
`identical. But the rationale that the Board used in its previous
`final written decision is very similar to what we just talked
`about.
`
`So you have a computing unit that is synchronizing
`signals being sent to and from three multiple -- three different
`components, all to control their operation into a single CBCT
`system to produce a volumetric image.
`JUDGE BAER: Where exactly in the Jaffray
`Publication is that synchronizing that you mentioned? I
`understand the computer control, but can you focus on the
`synchronizing piece?
`MR. PALMER: Yes. So on slide -- my apologies
`for not doing that previously -- so on slide 35 in Exhibit 1021
`at lines 4018, 40- 18 through -- well, okay, I butchered that. It
`is page 40, line 18, through page 41, line 20.
`And so if you look on the right-hand side of the --
`or in the middle of the right- hand box you will see that the
`
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`Case IPR2016-00317 (Patent No. 7,945,021 B2)
`Case IPR2016-00476 (Patent No. 8,116,430 B1)
`Case IPR2016-00547 (Patent No. 7,945,021 B2)
`
`timing of x- ray exposures, gantry rotation, and flat panel
`imager readout is preferably synchronized by control
`acquisition computer.
`So that's the same kind of synchronization that was
`described in the Jaffray references in the 1401 proceeding as
`well as all of the Jaffray references that are relevant to today's
`proceedings.
`Does that make sense?
`JUDGE BAER: It does. And I see we are running
`a little low on time.
`Could I get you to turn to the third case, the 476
`
`case.
`
`MR. PALMER: Yep.
`JUDGE BAER: And could you address, one thing I
`would like to address in particular, I know the arguments are
`pretty similar, but one thing I would like to address in
`particular is your obviousness challenge based on the -- your
`second obviousness challenge, which would be based on the
`Jaffray application/publication.
`When I go back to the petition, I see that in the
`petition you asserted obviousness to cover, I think it was three
`features, but it didn't seem to me that one of those features
`
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`Case IPR2016-00317 (Patent No. 7,945,021 B2)
`Case IPR2016-00476 (Patent No. 8,116,430 B1)
`Case IPR2016-00547 (Patent No. 7,945,021 B2)
`
`was the feature that you are now talking about, the
`communications network.
`So can you show me where in the petition that we
`could point to to say that you barely raised that issue in the
`petition and not for the first time in response to Patent
`Owner's argument?
`MR. PALMER: Yeah, we will pull that up. And I
`believe it is with respect to disclosure of the SL-20 and the
`fact that these types of translatable treatment couches have for
`decades had the type of connection that is in the SL-20.
`So you have a treatment couch and a gantry that is
`in a treatment room, and then you have the control module that
`is behind a bunch of lead where the operator can actually
`operate the system.
`And so for decades that translatable treatment
`couch has always been coupled to the rotatable gantry, which
`is also coupled to the control computer.
`So that's I believe what our argument was, but I
`think we can -- I think we can look that up, and it looks like I
`might be running out of time, so if you want me to take a look
`over the break I can have you the information on rebuttal.
`JUDGE BAER: Great. Thank you, counsel.
`
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`Case IPR2016-00317 (Patent No. 7,945,021 B2)
`Case IPR2016-00476 (Patent No. 8,116,430 B1)
`Case IPR2016-00547 (Patent No. 7,945,021 B2)
`
`
`MR. PALMER: Okay. Thank you.
`JUDGE BOUCHER: Can I just ask if the features
`of the SL-20 have changed over time, over those decades that
`you just mentioned?
`MR. PALMER: So the question depends on what
`features you talk about. So at one point they went from a
`monitor, a control monitor that was very old. It had the green
`cursor block, and they upgraded those.
`JUDGE BOUCHER: I don't want to use up your
`time talking about specific details. But if the features have, in
`fact, changed, how does that affect your inherency argument?
`MR. PALMER: Well, so if they have changed it
`would affect the inherency arguments, but these linear
`accelerators have not changed in any meaningful manner other
`than to change the model number, change the outside casing,
`the way it looks, that sort of thing, but the inner workings of
`the architecture and the functionality have always been the
`same in the SL-75 series, which predated the SL series, the
`SL-20, as well as the most recent version which is the SLI.
`And so the functionality -- sorry.
`JUDGE BOUCHER: And how do we know that? Is
`there an expert that testifies to that?
`
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`Case IPR2016-00317 (Patent No. 7,945,021 B2)
`Case IPR2016-00476 (Patent No. 8,116,430 B1)
`Case IPR2016-00547 (Patent No. 7,945,021 B2)
`
`
`MR. PALMER: So I certainly know that Dr. Mutic
`testified to that point when he provided opinions relating to
`the SL- 75 that is in the Karzmark reference.
`He did testify during his deposition that that linear
`accelerator would have had the same functionality as an
`SL-20, for example, and during the break I can see if we can
`round that testimony up for you.
`JUDGE BOUCHER: Okay. Thank you.
`JUDGE BAER: Thank you, counsel.
`MR. PALMER: Thank you.
`JUDGE BAER: Okay. Mr. Knauss, did I
`pronounce it correctly?
`MR. KNAUSS: You did. Thank you, Your Honor.
`JUDGE BAER: Sure.
`MR. KNAUSS: If you could just bear with me one
`moment while we change computers.
`JUDGE BAER: Sure. And I know we went a few
`minutes over, so we will adjust your time accordingly as well.
`MR. KNAUSS: That's fine. I certainly hope I
`won't need all of that.
`JUDGE BAER: And whenever you're ready.
`MR. KNAUSS: Ready, Your Honor. Good
`
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`Case IPR2016-00317 (Patent No. 7,945,021 B2)
`Case IPR2016-00476 (Patent No. 8,116,430
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