Trials@uspto.gov
`571.272.7822
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` Paper No. 13
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` Entered: June 22, 2016
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`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
`Patent RE44,644 E
`____________
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`
`
`Before KARL D. EASTHOM, TREVOR M. JEFFERSON, and
`J. JOHN LEE, Administrative Patent Judges.
`
`LEE, Administrative Patent Judge.
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`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
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`INTRODUCTION
`On December 16, 2015, General Electric Co. (“GE”) filed a Petition
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`(Paper 1, “Pet.”) requesting inter partes review of claims 75, 76, 78-82, 84-
`92, 94-102, 107-109, 111, 113-115, 118, 128-130, 132-136, 138-140, 157,
`158, 169-178, 180-184, 186-194, 196-204, 209-211, 213, 215-17, 220, 230-
`232, 234-238, 240, 241, and 254-260 (“the challenged claims”) of U.S.
`Patent No. RE44,644 E (Ex. 1001, “the ’644 Patent”). Patent Owner
`University of Virginia Patent Foundation (“UVA”) timely filed a
`Preliminary Response (Paper 7, “Prelim. Resp.”) on March 25, 2016.
`
`We have jurisdiction under 35 U.S.C. § 314, which provides that an
`inter partes review may not be instituted unless the information presented in
`the Petition shows “there is a reasonable likelihood that the petitioner would
`prevail with respect to at least 1 of the claims challenged in the petition.”
`Upon consideration of GE’s Petition and UVA’s Preliminary Response, we
`determine that the information presented shows there is a reasonable
`likelihood that GE would prevail in establishing the unpatentability of each
`of the challenged claims. Accordingly, pursuant to § 314, we institute an
`inter partes review of the challenged claims of the ’644 Patent.
`
`Related Proceedings
`A.
`GE identifies the following matters as related to its Petition: (1) a
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`district court case filed by UVA in the Western District of Virginia (No.
`3:14-cv-00051-nkm), in which claims of the ’644 Patent were asserted
`against GE; and (2) two other concurrently-filed petitions requesting inter
`partes review of other claims of the ’644 Patent (IPR2016-00358; IPR2016-
`00359). Pet. 1-2. In addition to the above, UVA further identifies U.S.
`Patent Application No. 14/708,875 as related to the ’644 Patent. Paper 8, 1.
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`The ’644 Patent
`B.
`The ’644 Patent relates to nuclear magnetic resonance imaging
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`(“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
`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
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`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.
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`Prosecution History of the ’644 Patent
`C.
`The ’644 Patent is a reissue of U.S. Patent No. 7,164,268 (“the ’268
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`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 a U.S. Provisional
`Application No. 60/257,182 (“the ’182 Application”), which was filed on
`December 21, 2000. Id. at [60].
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`Challenged Claims
`D.
`GE challenges claims 75, 76, 78-82, 84-92, 94-102, 107-109, 111,
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`113-115, 118, 128-130, 132-136, 138-140, 157, 158, 169-178, 180-184, 186-
`194, 196-204, 209-211, 213, 215-217, 220, 230-232, 234-238, 240, 241, and
`254-260 of the ’644 Patent. Pet. 3-4, 23-59.1 Claims 75, 140, 157, 158, 176,
`and 177 are independent claims, and all other challenged claims depend,
`directly or indirectly, from those independent claims. Independent claim 75
`is illustrative:
`
`
`1 Although claims 152 and 160 are listed in portions of the Petition as
`challenged claims, the Petition does not include any argument or evidence as
`to the patentability of those claims. To the extent Petitioner intended to
`request inter partes review of those claims in the Petition, Petitioner failed to
`provide the information required by 37 C.F.R. § 42.104(b) with respect to
`those claims. As such, we do not consider claims 152 and 160 to be
`challenged properly in the Petition.
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`75. A method for generating a spin-echo pulse sequence for
`operating a magnetic resonance imaging apparatus for imaging
`an object, said method comprising:
`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
`first substance of interest in said object, with
`corresponding T1 and T2 relaxation times and spin
`density of interest, and to yield a signal evolution
`for the associated train of spin echoes for at least
`one second substance of interest in said object,
`with corresponding T1 and T2 relaxation times and
`spin density of interest,
`wherein said signal evolutions result in T2-
`weighted contrast in the corresponding image(s)
`that is substantially the same as T2-weighted
`contrast that would be provided by imaging said
`object by using a turbo-spin-echo or fast-spin-echo
`spin-echo-train pulse sequence that has constant
`flip angles, with values of 180 degrees, for the
`refocusing radio-frequency pulses, and
`wherein at least one of the duration of the spin-
`echo trains for said signal evolutions for said
`substances is at least twice the duration of the spin-
`echo train for said turbo-spin-echo or fast-spin-
`echo spin-echo-train pulse sequence and an
`effective echo time corresponding to said spin-
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`echo trains for said signal evolutions for said
`substances is at least twice an effective echo time
`for said turbo-spin-echo or fast-spin-echo spin-
`echo-train pulse sequence;
`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; and
`repeating said data-acquisition step until a predetermined extent
`of spatial frequency space has been sampled.
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`Asserted Prior Art
`E.
`The grounds of unpatentability asserted by GE in the Petition are
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`based on the following alleged prior art references:
`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”).
`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”).
`David C. Alsop, The Sensitivity of Low Flip Angle RARE Imaging,
`37 MAGNETIC RESONANCE IN MED. 176-84 (1997) (Ex. 1004,
`“Alsop”).
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`John P. Mugler III, Overview of MR Imaging Pulse Sequences, in MAGNETIC
`RESONANCE IMAGING CLINICS OF NORTH AMERICA: PHYSICS OF MR
`IMAGING (Scott A. Mirowitz and J. Paul Finn eds.), Nov. 1999, at 661
`(Ex. 1005, “Mugler Overview”).
`Matthias Stuber et al., Submillimeter Three-dimensional Coronary MR
`Angiography with Real-time Navigator Correction: Comparison of
`Navigator Locations, 212 RADIOLOGY 579-87 (1999) (Ex. 1007,
`“Stuber”).
`J. Hennig et al., RARE Imaging: A Fast Imaging Method for Clinical MR,
`3 MAGNETIC RESONANCE IN MED. 823-33 (1986) (Ex. 1034, “Hennig
`1986”).
`John N. Rydberg et al., Comparison of dual-echo breathhold fast spin echo
`and dual-echo conventional T2-weighted spin echo imaging of liver
`lesions, Proceedings of the Int’l Soc. for Magnetic Resonance in
`Med., 5th Meeting (Apr. 1997) (Ex. 1036, “Rydberg”).
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`Alleged Grounds of Unpatentability2
`GE asserts the following grounds of unpatentability in its Petition:
`
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`F.
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`2 We note that the “Overview of Challenge and Relief Requested” on pages
`3 and 4 of the Petition provides a list of alleged grounds of unpatentability
`that appears to have errors as it does not correspond exactly to the detailed
`explanation of the grounds later in the Petition. We took into account the
`Petition as a whole, and we considered all grounds for which sufficient
`information was presented to comply our Rules, including 37 C.F.R.
`§ 42.104(b), and provide adequate notice of GE’s arguments to UVA.
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`Claims
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`Basis
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`Prior Art
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`75, 76, 78-82, 84-92, 94-96, 107, 111,
`139, 140, 157, 158, 169-178, 180-184,
`186-194, 196-198, 209, 213, 241, 254-260
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`§ 102(a)
`§ 102(b)
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`Mugler 2000
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`75, 76, 78-82, 84-92, 94-102, 107-109,
`111, 113, 114, 118, 128-130, 132-134,
`139, 140, 157, 158, 169-178, 180-184,
`186-194, 196-204, 209-211, 213, 215,
`216, 220, 230-232, 234-236, 241, 254-260
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`§ 103(a) Mugler 2000 and
`Mugler Overview
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`115, 217
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`135, 136, 237, 238
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`138, 240
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`75, 76, 78-82, 84-92, 94-96, 107, 111,
`139, 140, 157, 158, 169-178, 180-184,
`186-194, 196-198, 209, 213, 241, 254-260
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`75, 76, 78-82, 84-92, 94-102, 107-109,
`111, 113, 114, 118, 128-130, 132-134,
`139, 140, 157, 158, 169-178, 180-184,
`186-194, 196-204, 209-211, 213, 215,
`216, 220, 230-232, 234-236, 241, 254-260
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`115, 217
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`135, 136, 237, 238
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`8
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`§ 103(a) Mugler 2000,
`Mugler Overview,
`and Hennig 1986
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`§ 103(a) Mugler 2000,
`Mugler Overview,
`and Rydberg
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`§ 103(a) Mugler 2000,
`Mugler Overview,
`and Stuber
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`§ 103(a) Mugler 1999 and
`Alsop
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`§ 103(a) Mugler 1999, Alsop,
`and
`Mugler Overview
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`§ 103(a) Mugler 1999, Alsop,
`Mugler Overview,
`and Hennig 1986
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`§ 103(a) Mugler 1999, Alsop,
`Mugler Overview,
`and Rydberg
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`Claims
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`138, 240
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`Basis
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`Prior Art
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`§ 103(a) Mugler 1999, Alsop,
`Mugler Overview,
`and Stuber
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`ANALYSIS
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`Claim Construction
`A.
`In an inter partes review, claim terms in an unexpired patent are given
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`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, No. 15-446, 2016 WL 3369425, at *10-14 (U.S. June
`20, 2016). GE and UVA propose constructions for a number of terms in the
`challenged claims. Pet. 17-23; Prelim. Resp. 4-13. The claim term
`“effective echo time” is construed below. No other claim terms require
`construction for purposes of this Decision. See Vivid Techs., Inc. v. Am. Sci.
`& Eng'g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999).
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`The term “effective echo time” is recited in each of the challenged
`independent claims. GE proposes this term be construed as “the echo time
`at which the center of k space is sampled, which can be approximated as ½
`of the echo-train duration.” Pet. 19-20. In support, GE primarily relies on a
`definition provided in the specification: “effective echo time is the time
`period from the excitation RF pulse to the collection of data corresponding
`to substantially zero-spatial frequency (the center of k space).” Ex. 1001,
`2:50-53. UVA purports to dispute GE’s proposed construction, but agrees
`that the specification defines the term. See Prelim. Resp. 7-8.
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`An inventor may act as his own lexicographer and provide in the
`specification a special definition for a claim term, in which case that
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`definition governs. Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. Cir.
`2005); see also In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (holding
`that “an inventor is indeed free to define the specific terms used to describe
`his or her invention, [but] this must be done with reasonable clarity,
`deliberateness, and precision”). On this record, the definition in the
`specification identified by both parties constitutes such a definition. Thus,
`for purposes of this Decision, “effective echo time” is construed 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).”
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`Priority Date
`B.
`GE contends that the ’644 Patent should not receive the benefit of the
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`filing date of the ’182 Application and, thus, its effective priority date should
`be December 21, 2001. Pet. 6-7. 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 12-13.
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`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.
`See Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378
`(Fed. Cir. 2015) (citing New Railhead Mfg., L.L.C. v. Vermeer Mfg. Co., 298
`F.3d 1290, 1294 (Fed. Cir. 2002)). GE asserts that the written description of
`the ’182 Application does not support sufficiently the challenged claims of
`the ’644 Patent in several respects. Pet. 8-12.
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`First, GE argues the ’182 Application fails to describe any invention
`lacking a step of selecting T1 and T2 relaxation times. Id. at 8-9. Thus,
`according to GE, the challenged claims—which do not recite such a step—
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`are not supported sufficiently by the ’182 Application. Id. (citing Gentry
`Gallery, Inc. v. Berkline Corp., 134 F.3d 1473 (Fed. Cir. 1998); LizardTech,
`Inc. v. Earth Res. Mapping, Inc., 424 F.3d 1336 (Fed. Cir. 2005)). On this
`record, however, GE’s argument is unpersuasive. GE relies on two
`disclosures in the ’182 Application: (1) the statement in the “Background”
`that “[o]ur method explicitly considers the T1 and T2 relaxation times for
`the tissues of interest,” and (2) the statement in the “Brief Summary of
`Invention” that “[t]his invention consists of the methodology for using a
`series of refocusing RF pulses with variable flip angles . . . wherein the flip-
`angle series is specifically designed to achieve a prescribed signal evolution
`during the echo train for selected T1 and T2 relaxation times.” Ex. 1014, 3-
`4. These disclosures, however, appear to support claim 75, which recites
`selecting a flip angle sequence “to yield a signal evolution for the associated
`train of spin echoes for at least one first substance of interest in said object,
`with corresponding T1 and T2 relaxation times,” as well as similar
`limitations in the other challenged claims. The ’182 Application further
`describes selecting a series of flip angles based on “the T1 and T2 relaxation
`parameters for the ‘target’ tissue” (Ex. 1014, 6-7), i.e., a “first substance of
`interest . . . with corresponding T1 and T2 relaxation times.” Neither GE
`nor its declarant, Dr. Norbert J. Pelc, explains sufficiently why the
`disclosures of the ’182 Application should instead be understood to require
`an additional step of “selecting T1 and T2 relaxation times” that is so
`essential or fundamental that its absence from the claims renders them
`outside the scope of the invention. See Gentry Gallery, 134 F.3d at 1479.
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`Next, GE argues the ’182 Application fails to provide sufficient
`written description support for the “magnetic-field gradient pulses”
`limitations of the challenged claims. Pet. 9-11. For example, claim 75
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`recites, “providing magnetic-field gradient pulses that perform at least one of
`[1] 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 [2] dephasing transverse magnetization associated with
`undesired signal pathways . . . .” Each of the challenged claims recites
`similar limitations.
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`With respect to the latter limitation—magnetic-field gradient pulses
`that perform dephasing transverse magnetization associated with undesired
`signal pathways—GE’s arguments are unpersuasive based on the present
`record. The ’182 Application incorporates by reference U.S. Patent No.
`5,541,511 (Ex. 2006, “the ’511 Patent”) in its entirety. See Ex. 1014, 12, 14.
`As UVA explains, the ’511 Patent describes a spin echo MRI technique
`applying magnetic-field gradient pulses where “the signal portions which are
`not to be measured are dephased.” Prelim. Resp. 17-19 (citing Ex. 2006,
`5:57-6:3) (emphasis omitted). Neither the Petition nor Dr. Pelc’s
`Declaration addresses the disclosures provided in the ’511 Patent and
`incorporated by reference into the ’182 Application.
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`With respect to magnetic-field gradient pulses encoding spatial
`information into “at least one of” the MR signals following “at least one of”
`the refocusing RF pulses, GE argues the ’182 Application does not describe
`encoding spatial information into only one MR signal following one
`refocusing RF pulse, which is within the scope of the claim. Id. at 9-10.
`Dr. Pelc testifies that a person of ordinary skill in the art3 would understand
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`3 For purposes of this Decision, the prior art references asserted in the
`Petition reflect sufficiently the appropriate level of skill at the time of the
`claimed invention. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed.
`Cir. 2001).
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`spin echo train imaging necessarily involves encoding spatial information
`into multiple MR signals in the spin echo train, i.e., the MR signals that
`follow the refocusing RF pulses. Ex. 1009 ¶¶ 74-75. According to Dr. Pelc,
`the ’182 Application consequently does not describe a spin echo train MRI
`process wherein spatial information is encoded into only one MR signal in a
`spin echo train. Id.
`
`UVA responds that the ’182 Application includes all of the
`information that GE asserts is disclosed in Mugler 2000 for its anticipation
`arguments. Prelim. Resp. 16-17. According to UVA, the ’182 Application
`must, therefore, also provide sufficient written description support if, as GE
`contends, those disclosures anticipate the challenged claims. Id. UVA’s
`reasoning, however, is flawed because anticipation under 35 U.S.C. § 102
`and written description under 35 U.S.C. § 112 are fundamentally different
`tests. A prior art disclosure of one embodiment alone may anticipate a
`broader claim. See, e.g., Titanium Metals Corp. of Am. v. Banner, 778 F.2d
`775, 781 (Fed. Cir. 1985). The written description, however, must provide
`sufficient information to indicate to a person of ordinary skill that the
`inventor had possession of the full scope of the claims. See, e.g., In re
`Wertheim, 541 F.2d 257, 262-64 (C.C.P.A. 1976). UVA does not explain
`adequately how the relevant disclosures of the ’182 Application—even if the
`same as those of Mugler 2000—support the challenged claims with respect
`to the recited limitation of magnetic-field gradient pulses encoding spatial
`information into “at least one of” the MR signals. Based on the present
`record and for purposes of this Decision, GE has shown sufficiently that the
`’182 Application does not provide enough written description support for the
`“magnetic-field gradient pulses . . . encoding spatial information” limitations
`of the challenged claims.
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`GE also contends the ’182 Application does not provide sufficient
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`written description support for the limitation, “an effective echo time
`corresponding to said spin-echo trains . . . is at least twice an effective echo
`time for said turbo-spin-echo or fast-spin-echo spin-echo-train pulse
`sequence,” in claim 75 and corresponding limitations in the remaining
`challenged claims. Pet. 11-12. Dr. Pelc testifies that the ’182 Application
`describes only one example of an effective echo time (328 ms) of a pulse
`sequence according to the claimed invention. Ex. 1009 ¶ 85. He further
`testifies the ’182 Application does not describe any effective echo time for
`the turbo spin echo or fast spin echo pulse sequences recited in the claims,
`and only describes one example of an echo time (80 ms) of the
`“conventional spin-echo pulse sequence” recited in claims 176 and 177.
`Id. ¶ 87-88. According to Dr. Pelc, these limited disclosures at most
`describe only an effective echo time that is about four times the echo time of
`a conventional spin echo sequence, and explains that a person of ordinary
`skill would not understand from the ’182 Application that the inventor had
`possession of the entire claimed range of “at least twice” the echo time of a
`conventional spin echo sequence (or “at least twice” the recited effective
`echo time of a turbo spin echo or fast spin echo sequence). Id. ¶¶ 89-90.
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`Again, UVA responds by arguing only that the disclosures of the ’182
`Application are the same as the relevant disclosures in Mugler 2000 that GE
`relies on for its anticipation contentions. Prelim. Resp. 20. For the same
`reasons discussed above, this argument is unpersuasive. On this record, GE
`has shown sufficiently that the ’182 Application does not provide enough
`written description support for the “effective echo time . . . is at least twice”
`limitations of the challenged claims.
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`Therefore, on the basis of the present record, GE has shown
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`sufficiently that the ’644 Patent should not receive the benefit of the filing
`date of the ’182 Application, for purposes of this Decision.
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`Alleged Unpatentability Under § 102(a) and § 102(b)
`C.
`GE contends claims 75, 76, 78-82, 84-92, 94-96, 107, 111, 139, 140,
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`157, 158, 169-178, 180-184, 186-194, 196-198, 209, 213, 241, and 254-260
`are anticipated by Mugler 2000. Pet. 24-38. As explained below, based on
`the present record, GE has shown a reasonable likelihood of prevailing on
`this asserted ground of unpatentability.
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`1. Whether Mugler 2000 Is Prior Art
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`GE contends Mugler 2000 is prior art under § 102(b) because Mugler
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`2000 was published more than one year before the filing date of the ’644
`Patent. Pet. 12-13. As discussed above, for purposes of this Decision, GE
`has shown sufficiently that the ’644 Patent is not entitled to the filing date of
`the ’182 Application. On this record, Mugler 2000 is prior art under
`§ 102(b) because it was published in April 2000, more than one year before
`the December 2001 filing date of the ’644 Patent.
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`In addition, GE contends Mugler 2000 also is prior art under § 102(a).
`Id. Dr. Pelc testifies that he attended the Eighth Meeting of the International
`Society for Magnetic Resonance in Medicine in April 2000, and that Mugler
`2000 was distributed to all conference attendees both at the meeting and via
`CD-ROM. Ex. 1009 ¶ 139 (citing Ex. 1018 at 72, 219). On this record, GE
`has shown sufficiently that Mugler 2000 was publicly accessible as of April
`2000 such that it qualifies as prior art under § 102(a).
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`Independent Claim 75
`2.
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`To anticipate a claim, a single prior art reference must disclose each
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`and every limitation of the claim, either expressly or inherently. Verdegaal
`Bros. v. Union Oil Co. of Cal., 814 F.2d 628, 631 (Fed. Cir. 1987). A
`feature is disclosed inherently if it is necessarily present in the single
`anticipating reference. Continental Can Co. v. Monsanto Co., 948 F.2d
`1264, 1268 (Fed. Cir. 1991). The Petition sets forth detailed contentions and
`supporting evidence demonstrating that Mugler 2000 discloses each
`limitation of claim 75 either expressly or inherently.4 Pet. 24-32.
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`For example, the Petition cites Figure 1 of Mugler 2000, and its
`accompanying explanation, as disclosing flip angles for a sequence of 160
`refocusing RF pulses. Id. at 27 (citing Ex. 1002, 1, Fig. 1). Dr. Pelc testifies
`that all refocusing RF pulses necessarily have both a flip angle and phase
`angle. Ex. 1009 ¶¶ 166, 168. Thus, according to GE, Mugler 2000 discloses
`the recited step of “providing at least two refocusing radio-frequency pulses,
`each having a flip angle and phase angle.” Pet. 27.
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`The Petition also explains how Mugler 2000 discloses the recited
`limitation that at least one of the flip and phase angles of the refocusing RF
`pulses are “selected to vary among pulses to yield a signal evolution for the
`associated train of spin echoes” for a first and second substance of interest,
`each with “corresponding T1 and T2 relaxation times and spin density of
`interest.” Id. at 28-29. As the Petition notes, Mugler 2000 discloses that
`“variable-flip-angle refocusing RF-pulse series were calculated for several
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`4 In its Preliminary Response, UVA states that it “does not refute the
`extensive and detailed analysis provided by Dr. Pelc that Mugler 2000
`inherently discloses each of the elements not explicitly described in Mugler
`2000.” Prelim. Resp. 40.
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`prescribed signal evolutions” for brain tissues. Ex. 1002, 1. Further,
`according to Dr. Pelc, Mugler 2000 discloses that the calculations for these
`signal evolutions “explicitly consider the T1s and T2s of interest,” i.e., the
`T1 and T2 relaxation times of the imaged tissues. Ex. 1009 ¶ 173 (quoting
`Ex. 1002, 1). Dr. Pelc further testifies that the contrast between light and
`dark areas shown in the MR images in Mugler 2000 discloses signal
`evolutions for multiple different brain tissues, and that each of these tissues
`necessarily have an inherent T1 relaxation time, T2 relaxation time, and
`spin/proton density. Id. ¶¶ 174-75 (citing Ex. 1002, Fig. 2).
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`With respect to the limitation that the contrast in a resultant T2-
`weighted image be “substantially the same” as the contrast that would be
`provided by imaging the same object using a turbo spin echo or fast spin
`echo sequence with constant 180° flip angles, the Petition notes the
`disclosure in Mugler 2000 that the variable flip angle sequence may
`“provide clinically useful contrast characteristics that appear very similar to
`those for conventional T2-weighted [spin echo] images.” Pet. 29 (citing Ex.
`1002, 1, Fig. 2) (emphasis omitted). Dr. Pelc testifies that a person of
`ordinary skill would understand the conventional spin echo sequence (echo
`time of 80 ms) disclosed in Mugler 2000 to correspond to a fast spin echo
`sequence with a comparable effective echo time (i.e., 80 ms), providing
`substantially the same contrast. Ex. 1009 ¶ 176.
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`As the Petition notes, Mugler 2000 further discloses that the variable
`flip angle sequence yielded an effective echo time of over 300 ms with an
`echo train duration of over 600 ms. Pet. 29-30 (citing Ex. 1002, 1, Fig. 2);
`see Ex. 1009 ¶ 177. According to Dr. Pelc, a person of ordinary skill would
`understand the conventional spin echo sequence with an 80 ms echo time in
`Mugler 2000 to disclose a corresponding fast spin echo sequence using
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`constant 180° flip angles with an 80 ms effective echo time and 160 ms echo
`train duration.5 Ex. 1009 ¶ 177. Based on this evidence, GE argues Mugler
`2000 discloses the limitations of claim 75 that require an effective echo time
`and echo train duration that are each “at least twice” those of the recited fast
`spin echo sequence with constant 180° flip angles. Pet. 29-30.
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`With respect to the “magnetic-field gradient pulses” limitations, the
`Petition relies on Dr. Pelc’s testimony and the disclosure in Mugler 2000 of
`a “phase-encoding direction” corresponding to the variable flip angle pulse
`sequence’s echo train. Pet. 30-31 (citing Ex. 1002, Fig. 2). According to
`Dr. Pelc, a person of ordinary skill would understand Mugler 2000 to be
`referring to magnetic field gradient pulses encoding spatial information into
`the MR signals following the refocusing RF pulses in the echo train.
`Ex. 1009 ¶ 178. Dr. Pelc also testifies that all MRI pulse sequences
`necessarily involve encoding spatial information into the MR signals using
`magnetic field gradient pulses. Id. ¶ 179 (citing Ex. 1005, 661).
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`At this stage of the proceeding, UVA’s sole argument in response to
`GE’s contentions and evidence regarding anticipation of claim 75 is that
`Mugler 2000 is not prior art because the ’182 Application includes all of the
`same disclosures as Mugler 2000 and, thus, the ’644 Patent is entitled to
`claim priority to the filing date of the ’182 Application. Prelim. Resp. 21-
`39. On this record, UVA’s argument is unavailing. As discussed above, GE
`has shown sufficiently, for purposes of determinin