`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ABS GLOBAL, INC.,
`Petitioner,
`
`v.
`
`CYTONOME/ST, LLC,
`Patent Owner.
`____________
`
`Case IPR2017-02097 (Patent 8,529,161 B2)
`Case IPR2017-02162 (Patent 9,446,912 B2)
`____________
`
`Record of Oral Hearing
`Held: January 9, 2019
`___________
`
`
`
`
`Before SCOTT A. DANIELS, BEVERLY M. BUNTING, and
`TIMOTHY J. GOODSON, Administrative Patent Judges.
`
`
`
`
`
`
`
`
`
`
`
`
`Case IPR2017-02097 (Patent 8,529,161 B2)
`Case IPR2017-02162 (Patent 9,446,912 B2)
`
`
`
`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
`
`JEFFREY P. KUSHAN, ESQUIRE
`FITZ B. COLLINGS, ESQUIRE
`Sidley Austin, LLP
`1501 K STREET, N.W.
`Washington, D.C. 20005
`
`
`
`ON BEHALF OF THE PATENT OWNER:
`
`
`THOMAS W. LANDERS, IV, ESQUIRE
`Akin Gump Strauss Hauer & Feld, LLP
`1111 Louisiana Street, 44th Floor
`Houston, Texas 77002-5200
`
`and
`
`DANIEL L. MOFFETT, ESQUIRE
`Akin Gump Strauss Hauer & Feld, LLP
`112 East Pecan Street, Suite 1010
`San Antonio, Texas 78205-1512
`
`
`
`
`The above-entitled matter came on for hearing on Wednesday, January
`
`9, 2019, commencing at 9:59 a.m., at the Silicon Valley U.S. Patent &
`Trademark Office, 26 S 4th Street, San Jose, California, 95112.
`
`
`
`
`
`
`
`
`2
`
`
`
`Case IPR2017-02097 (Patent 8,529,161 B2)
`Case IPR2017-02162 (Patent 9,446,912 B2)
`
`
`P R O C E E D I N G S
`- - - - -
` JUDGE GOODSON: Good morning, and welcome to the
`Patent Trial and Appeal Board.
` This is the hearing for two proceedings between
`petitioner ABS Global, Inc. and patent owner Cytonome/ST,
`LLC.
` Case IPR2017-02097, involving patent
`number 8,529,161, and case IPR2017-02162, involving patent
`number 9,446,912.
` I'm Judge Goodson, and Judges Daniels and Bunting
` are appearing remotely by video link. You can see them on the
` screen up here.
` Judge Daniels, are you able to see and hear us?
` JUDGE DANIELS: I can hear you just fine. How about
`me?
` JUDGE GOODSON: Great.
` Judge Bunting?
` JUDGE BUNTING: Yes, I can see and hear you both.
` JUDGE GOODSON: Great. Okay.
` Let's have counsel introduce themselves, starting
`with counsel for petitioner, please.
` MR. KUSHAN: Good morning, Your Honor. Jeff Kushan
`from Sidley Austin on behalf of petitioner. And with me is
`Fitz Collings, also with Sidley Austin.
` JUDGE GOODSON: Thank you. And Mr. Kushan, are you
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`3
`
`
`
`Case IPR2017-02097 (Patent 8,529,161 B2)
`Case IPR2017-02162 (Patent 9,446,912 B2)
`
`going to be doing the presentation today?
` MR. KUSHAN: So today I'll be doing the presentation
`on the '161 patent, and Mr. Collings will be handling the
`argument on the '912 patent.
` JUDGE GOODSON: Okay. And who do we have for patent
`owner?
` MR. MOFFETT: Good morning, Your Honors. Daniel
`Moffett with the law firm Akin Gump, here on behalf of patent
`owner. With me is Thomas Landers with the same firm.
` We're going to do a similar split; I'll be arguing
`with respect to the '161, and Mr. Landers will be arguing
`with respect to the '912.
` JUDGE GOODSON: Great.
` Okay. By way of reminder, because Judges Daniels
` and Bunting are participating remotely, please indicate the
` slide number or page number from the record that you're
` referring to during your presentations so that they can
` follow along easily.
` The Trial Hearing Order of November 14th sets out
` the procedures that we'll follow today. Each party has 60
` minutes total for its arguments addressing both the 2097 and
` the 2162 IPRs. The parties can allocate their time between
` the cases as they choose.
` Would the petitioner like to reserve any of its time
` for rebuttal?
` MR. KUSHAN: Yes, Your Honor. We'd like to reserve
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`4
`
`
`
`Case IPR2017-02097 (Patent 8,529,161 B2)
`Case IPR2017-02162 (Patent 9,446,912 B2)
`
`15 minutes for rebuttal.
` JUDGE GOODSON: Okay. And patent owner?
` MR. MOFFETT: Your Honor, if we do get into our
`motion to exclude, we would want to reserve one minute. I
`think that would depend on -- on the arguments presented.
` JUDGE GOODSON: Okay. All right. With that, we'll
`turn it over to -- to you, Mr. Kushan. You can just begin
`whenever you're ready.
` JUDGE DANIELS: Judge Goodson -- oh, thank you. I
`was just going to say, I needed a -- as much as it's nice to
`see you, I couldn’t see the attorneys, which I now can.
`Thank you.
` MR. KUSHAN: Thank you, Your Honors.
` As I mentioned, I'll be covering the proceeding
`involving the '161 patent. In that, the '097 proceeding, you
`found that we met our burden to establish anticipation of
`Claims 1, 4, 8, 9, 12, 16 to 20 over Wada, but that we did
`not meet our burden to do so for anticipation for Claims 2 to
`3, 5 to 7, 10 to 11, and 13 to 15. You also -- you found
`that we did not meet our burden on obviousness for all the
`claims.
` At a high level, the disputes in this proceeding
` focus on whether the claims require or don't require certain
` things, and really focus on what is going on with the Wada
` system. So that's my -- I'm going to start with the claims
` and then deal with Wada.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`5
`
`
`
`Case IPR2017-02097 (Patent 8,529,161 B2)
`Case IPR2017-02162 (Patent 9,446,912 B2)
`
` Claims 1 and 9 -- if you could put up Slide 3.
` Claims 1 and 9 are the independent claims. They're
` parallel. One is an apparatus, one is a method.
` You can see that they use open language
` "comprising". So microfluidic device comprising.
` Then there is a primary flow channel. That's the
` first element.
` There are then two adjustments regions within the
` primary flow channel; an upstream and a downstream.
` The adjustments, as the claim specifier made, by
` adding more suspension medium via an inlet that intersects
` the primary flow channel. And it's important to note that
` no other structural features of the flow channel is really
` focused on the added sheath fluid.
` The second region has to adjust the sample in a
` direction that's opposite of the direction that the sample's
` adjusted in the first region.
` It's also important to recognize, when they speak of
` sample, the claims actually tell you what that is. It's a
` sample that comprises of at least one particle. That's what
` the language of the claim states.
` And there's also no other attribute defined in the
` claims for the identity of the sample. So it could be
` 100 percent of one kind of particle, they could be mixed
` particles, it doesn't matter. That's the claim breadth.
` Now, the first dispute centers on the term
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`6
`
`
`
`Case IPR2017-02097 (Patent 8,529,161 B2)
`Case IPR2017-02162 (Patent 9,446,912 B2)
`
` "adjusting", and we believe, in your Institution decision,
` you've correctly found that adjusting means "to move".
` That's the --
` JUDGE DANIELS: Counsel, let me --
` MR. KUSHAN: Yes.
` JUDGE DANIELS: -- let me interrupt you for just a
`second before we leave -- before we totally leave your
`Slide 3.
` MR. KUSHAN: Mm-hmm.
` JUDGE DANIELS: I know the claims are fairly similar
`here across -- across the patents to an extent.
` And they're interesting because we currently have a
`method claim here that's Claim 9. And -- in the '161 patent
`I'm talking about -- and we also have Claim 1, which is a
`system.
` The system claim here, though, seems to sort of be a
`combination of method and apparatus claims as opposed to a
`straight-up apparatus claim.
` Is there something that we should be considering
`here as far as the functional language being more limiting
`here than perhaps it might be in the '912 patent?
` I just wanted to make sure that -- but that we
`were -- when we look at these claims, we sort of know what
`we're looking at and why they're different.
` MR. KUSHAN: So that's a good question, Your Honor.
` What you see in the device or the system claim here
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`7
`
`
`
`Case IPR2017-02097 (Patent 8,529,161 B2)
`Case IPR2017-02162 (Patent 9,446,912 B2)
`
` is essentially a functional attribute of each element. So
` the element has to presumably do or deliver that functional
` capability.
` There's nothing beyond the introduction of the
` additional suspension fluid that they identify in the claim
` language to achieve that function. And that's important
` because there are a lot of parameters about these devices
` that influence how they behave, such as their geometry, the
` parameters of flow, things like that. None of those
` parameters are set forth in the claim, they just go to
` the -- kind of the bottom line of what all of those
` parameters might deliver as a functional result.
` And that's important because it means those
` claims -- that system claim is very broad in its
` characteristics about what it covers between its comprising
` language and because of that functionally defined character
` of the elements. It's a very broad claim.
` And I don't think -- when you selected Claim 1 as a
` representative claim, we agree with that because there's no
` real consequence, there's no -- I don't know if the parties
` have identified any practical consequence between Claim 9
` and Claim 1 relative to its comparison to the prior art or
` meaning.
` JUDGE DANIELS: So Claim 1 here then -- it sounds
`like what you're saying is Claim 1 is more along the lines of
`apparatus claim and that these -- although I --
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`8
`
`
`
`Case IPR2017-02097 (Patent 8,529,161 B2)
`Case IPR2017-02162 (Patent 9,446,912 B2)
`
` Let me back up and ask this question.
` MR. KUSHAN: Sure.
` JUDGE DANIELS: We agree that functional language
`can be a limitation in certain cases -- whether or not it is
`here or not we can decide later, but --
` MR. KUSHAN: I mean, at least conceptually, if
`function compels a configuration, then that, I think you
`could argue, would -- within the context of the meaning and
`interpretation of the claims, particularly in a court setting
`could give meaning to the attribute that you're speaking of.
` This is still under the broadest reasonable
`interpretation standard, and for a number of these elements,
`there is no real dispute about whether there is something
`adding in from either preamble or context and intended use,
`prosecution history has only relevance to one question about
`focusing, and we have a dispute about that, but I think this
`is kind of a classical instance of a very broadly
`characterized apparatus that has defined its elements in
`functional terms, meaning they cover essentially anything
`that would deliver that functional outcome.
` Does that answer your question?
` JUDGE DANIELS: So you would argue -- so you would
`argue that in the system claim, that the functional language
`here does not dictate or compel, I think was the word you
`used, the structural arrangement of the system.
` MR. KUSHAN: Correct. And there are a couple
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`9
`
`
`
`Case IPR2017-02097 (Patent 8,529,161 B2)
`Case IPR2017-02162 (Patent 9,446,912 B2)
`
`specific elements that I'll focus on to get into that in a
`minute. And maybe I can -- I can dive into that, and if you
`have questions, I'm happy to tease that out further.
` JUDGE DANIELS: No. Just keep going with what
`you're doing. I just wanted to -- just to thank you. That
`was helpful to understanding your position on the -- in this
`Claim 1. Thanks.
` MR. KUSHAN: Okay. So the first dispute is focusing
`on this adjusting language in the independent claims. And
`you found that meant to move the sample in a particular
`direction, and we feel like that is the most logical reading
`of the claim.
` First, there's no preamble as I mentioned, there's
`no kind of context that is infused by some preambular
`language for this device claim.
` Second, there isn't any prosecution history that's
`been alleged to influence what it means relating to these
`claims.
` So -- and if -- the third thing is just, when you
` look at this in the context with the dependent claims, this
` language "adjust" has to accomplish a variety of actions
` which, in -- at their heart, involve moving the particle or
` the sample. So we think your construction here was correct.
` And patent owner doesn't really raise any prior art
` issues. All of their arguments are around claim
` construction. So we think your finding of anticipation of
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`10
`
`
`
`Case IPR2017-02097 (Patent 8,529,161 B2)
`Case IPR2017-02162 (Patent 9,446,912 B2)
`
` these claims was correct based on your interpretation of
` "adjusting".
` Just a couple of points on what our -- what patent
` owner has said about these claims.
` Patent owner argues that one aspect of adjusting
` means that you have to use essentially a sample which has a
` particular character, such as it either has a multiplicity
` of particles, and that you're acting on all of the particles
` in the sample, or that its position has a characteristic
` within the sample layer of the device that it's flowing.
` Those all kind of fall away when you appreciate that
` a sample can consist of a single particle.
` The language of the claims controls what the claims
` cover here, and without any other limiting attribute, it's
` really improper to read these kind of requirements into the
` claim.
` JUDGE GOODSON: So the sample can be one particle,
`but in the instance when the sample is more than one
`particle, how do we know that simply moving one of the
`particles is sufficient to have moved the sample?
` MR. KUSHAN: Well, the way to think about it is that
`the particles in these kind of microfluidic systems are not
`moving kind of independently of the two streams that are --
`that constitute the laminar flow. You have a sample stream,
`and then the particle is going to move with the sample stream
`based on what kind of flow you're creating.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`11
`
`
`
`Case IPR2017-02097 (Patent 8,529,161 B2)
`Case IPR2017-02162 (Patent 9,446,912 B2)
`
` So when we're speaking of a sample, it's really
` focusing on the movement of that sample layer which contains
` the particles in it, and then that, of course, the particles
` can change their position within that sample layer as it's
` moving through the device.
` Now, I also noted that the claims are comprising
` claims. So that means you can have elements that are not
` recited, such as if you look at our primary case with Wada,
` we used an illustration of a device in Figure 3 that has two
` regions that are focusing regions, and then has also a thing
` called a collection unit which is where the cells or
` particles end up. That is captured by the claim language,
` even though that's not part of the focusing -- you know,
` those collecting units are not part of the focusing regions.
` It's also important to recognize that there's no
` reason for doing these steps recited in the claim. So
` particularly for the system claim, these are just a -- this
` is a device that can be used for any kind of focusing or
` preparation of a sample.
` And there's no basis for reading things such as
` patent owner proposes, that you have to kind of end up after
` this to adjustment device with a sample that's ready for
` focusing, or particularly aligned or prepared for focusing.
` There's no focusing requirement -- I'm sorry -- there's no
` sorting requirement in the claims.
` And, in fact, at page 16 of their patent owner
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`12
`
`
`
`Case IPR2017-02097 (Patent 8,529,161 B2)
`Case IPR2017-02162 (Patent 9,446,912 B2)
`
` response, the patent owners emphasize that, "The invention
` does not claim any sorting or detecting mechanisms or
` methods." So to read a requirement that this all has to be
` done to prepare a sample for sorting seems to be at odds
` with both the language and also how they represent their
` claims.
` JUDGE DANIELS: Counsel, can I -- can we jump -- can
`you just jump real quickly, because we're starting to talk
`about sorting --
` MR. KUSHAN: Yes.
` JUDGE DANIELS: -- to your -- your Slide 20 -- let's
`just go to 23. I think you talk about this -- I wanted to
`just make sure that the panel -- we were discussing this
`during or conference -- that there appears to be -- and you
`may be getting to this at some point, but I wanted to ask
`about -- there seems to be a dispute between testimony from
`Dr. Kapur -- if I'm saying that right -- and Dr. DiCarlo with
`respect to this sorting aspect, which is, I think, what
`you -- what you're talking about now.
` And I want to make sure I understand both parties
` and both of the experts, the declarants here. And if I'm
` understanding it correctly, your position is that the
` sorting that's going on here does -- that these particles,
` whether it's one or many, would remain in a -- they remain
` in their -- I guess their core flow, they are not pushed out
` into a sheath fluid, and that they remain that way until
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`13
`
`
`
`Case IPR2017-02097 (Patent 8,529,161 B2)
`Case IPR2017-02162 (Patent 9,446,912 B2)
`
` they are finally sorted, I guess.
` Is that a -- if you can explain it better, please
` do.
` MR. KUSHAN: Sure. I'd be happy to.
` That is -- you had it generally correct. The thing
` you were -- the words I think you were looking for were the
` "laminar flow". And laminar flow is a particular type of
` flow that occurs in a microfluidic device where you have
` such as in Figure 23, you have a primary flow channel, which
` is 2300, that's where the sample starts, it comes in that
` sample layer, and then you're introducing sheath fluid in
` these two inlets, 2302 and 20 -- that are both set one after
` the other.
` When you introduced sheath fluid into a microfluidic
` structure in this manner, what you do is you envelope the
` sample fluid with the sheath fluid. That phenomenon creates
` something called laminar flow where you keep the two layers
` segregated. The particles are in the sample layer, and they
` won't leave the sample until the two layers ultimately mix
` together in the collection unit 2312.
` We know that that is true because, until you get
` into a configuration where you're no longer -- the
` structure, the geometry of the channel plus the movement of
` the fluids maintains laminar flow, they're going to stay in
` their own layers.
` You have the laminar flow means sheath fluid on the
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`14
`
`
`
`Case IPR2017-02097 (Patent 8,529,161 B2)
`Case IPR2017-02162 (Patent 9,446,912 B2)
`
` outside, it's moving faster than the layer that's the sample
` layer. And that phenomenon of faster outside, slower
` inside, exerting force on the sample layer, that a force is
` what causes the sample layer to constrict, narrow, and
` focus. And that ultimately is going to stay intact, it's
` not going to change until you change the geometry, which
` occurs not until 2310, which is the -- or 2312 where you see
` the collection unit.
` Now, we know that Dr. DiCarlo and Dr. Kapur disagree
` about what's happening. I think part of it stems -- kind of
` two reasons that I can see. One is, what is it that we are
` representing are the two adjustment regions? And we've been
` very clear that the two adjustment regions are the two that
` we've highlighted in the two colors; blue and green. You
` see we don't label the 2312 or 2310 region as part of the
` adjustment region.
` The claims, as you know, comprise of claims, they
` only require the two adjustment regions, and that maps to
` those two colors.
` Within the two colored regions, you have a fixed
` structure. The 2300 is the primary flow channel. You have
` the same design, 2302, those two inlets are -- that's the
` same structure and process of introducing sheath fluid at
` each place.
` You found that 2302, in the first instance in blue,
` does cause focusing, and that's consistent with the physics
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`15
`
`
`
`Case IPR2017-02097 (Patent 8,529,161 B2)
`Case IPR2017-02162 (Patent 9,446,912 B2)
`
` of how this works. And it also is happening in the second
` region because the same thing is happening; you're
` introducing the sheath flow at a higher rate, and it's
` further refining, further focusing the sheath fluid
` JUDGE DANIELS: Dr. Kapur's testimony in his
`declaration had some -- and I'm sure patent owner will
`address this when it's his turn -- but there is some -- you
`know, I found it to be interesting, and credible to some
`extent, that it seemed like, if you pulse in the second
`region, if you're pulsing in a sheath fluid to sort these,
`that it would knock them to one side or the other and out of
`the sheath fluid, or out of its core, the core flow. So --
`but you're --
` But DiCarlo's testimony is the opposite saying that
`it does not do that, it just forces the core to one side or
`the other.
` MR. KUSHAN: Yeah. So -- and we actually provided
`additional evidence during the proceeding to help demonstrate
`that laminar flow is being maintained -- and you should
`really think about this -- is laminar flow being maintained,
`are the two layers being maintained as separate layers, or
`are they mixing?
` You're going -- the phenomenon that Dr. Kapur is
`referring to would happen if there were not maintenance of
`the laminar flow. You need something that's going to disrupt
`or get the particles out of that interior layer.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`16
`
`
`
`Case IPR2017-02097 (Patent 8,529,161 B2)
`Case IPR2017-02162 (Patent 9,446,912 B2)
`
` I like to think of this as like a garden hose, if
`you can imagine it, in the green area, it's the garden hose
`is tilting one way or the other where the exterior of the
`hose is the sheath layer and the interior is the sample
`layer. It's not going to punch a hole through the walls of
`the garden hose particularly because of the geometry and the
`physics of a microfluidic structure.
` Now, there's a way --
` JUDGE GOODSON: You're saying that laminar flow is
`maintained throughout both the blue and the green regions as
`we look at it in Slide 23?
` MR. KUSHAN: That is correct, Your Honor.
` And we -- in our reply, Dr. DiCarlo -- there's
`actually ways of knowing whether laminar flow is being
`preserved. When we saw Dr. Kapur allege that laminar flow is
`not being maintained and that these things were mixing in
`this region, Dr. DiCarlo did the math. He basically went and
`analyzed the flow structure, he analyzed the parameters of
`the flow that's being described in Wada, and he found that
`it's maintaining laminar flow.
` He cites in particular in paragraph 73 of his reply
`declaration, he gives an explanation of why laminar flow is
`being maintained. That's also reflected in paragraph 65 of
`his declaration. He explains that this is -- the laminar
`flow is causing that -- a sample layer to get compressed and
`narrowed.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`17
`
`
`
`Case IPR2017-02097 (Patent 8,529,161 B2)
`Case IPR2017-02162 (Patent 9,446,912 B2)
`
` He also gave his scientific basis for that
`conclusion at paragraphs 82 to 84 of his report as applied to
`Wada where he walks through what's happening in each of these
`two regions.
` He points out in the first region, you have a
`certain amount of compression caused by the focusing that
`occurs there of the sample layer, and then you have
`additional focusing of that sample layer where the additional
`added sheath fluid is flowing in.
` There's a principle of conservation of mass which is
`why this happens. You have a fixed amount of space, you have
`a certain amount of space occupied by the fluid, you add
`fluid, it's going to compress the interior fluid. You can't
`lose mass.
` What that does is two things. One, it makes it
`smaller, makes the sample layer smaller, but it also is going
`to accelerate both the interior and the exterior fluids, the
`sheath (inaudible), in this configuration (inaudible).
` That's also going to naturally cause an alignment of
`the particles within that sample layer because the sample
`layer is now smaller and there's just less space for the
`particles to move around in.
` Now, Dr. DiCarlo also did some math. There's a
` techniques or a factor called the Reynolds number. That's
` calculations that can be performed when you analyze the flow
` structure and look at all the parameters, and if you have a
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`18
`
`
`
`Case IPR2017-02097 (Patent 8,529,161 B2)
`Case IPR2017-02162 (Patent 9,446,912 B2)
`
` number that's below 2000, it indicates that laminar flow is
` present. If it's above, then you've lost laminar flow.
` What Dr. DiCarlo calculated was that the laminar
` flow for the blue region was around 230, and the laminar
` flow -- which you can go to Slide 28, please. This is his
` explanation for the calculation on the first blue region.
` And then Slide 29, he calculated the Reynolds number
` for the green region to be 455, well blow that laminar flow
` threshold.
` So we believe, as you sit here now, there is a
` fairly robust amount of evidence in front of you to
` demonstrate that what Dr. DiCarlo said is happening in the
` blue and green regions is actually true.
` There is a maintenance of laminar flow. The
` phenomenon that Dr. Kapur might have been referring to might
` have happened at the collection units, and some of his
` testimony seems a bit fuzzy at times about whether it's
` referring to the event occurring at the collection unit or
` upstream, but as a matter of science, it is not going to
` happen if you inject only fluid in the green region of the
` flow channel, that you will push the particles out of the
` laminar flow. That just won't happen. And we've
` demonstrated that and proven it with additional evidence.
` JUDGE GOODSON: So how is he able to calculate the
`Reynolds number for this figure? Is that based on the ratios
`that are shown in the figure?
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`19
`
`
`
`Case IPR2017-02097 (Patent 8,529,161 B2)
`Case IPR2017-02162 (Patent 9,446,912 B2)
`
` MR. KUSHAN: I will confess, I'm not -- I can't tell
`you with a lot of detail, but what we had Dr. DiCarlo do was
`look at the parameters described in Wada, adopt very
`conservative estimates for the size of the channel, for the
`flow rates, things like that. Those are the numbers of the
`attributes that he needed to do the Reynolds number
`calculation.
` We had him do that in a fairly conservative manner,
`and he ended up with these numbers.
` He provided that in his reply declaration to support
`his original conclusion that laminar flow is being
`maintained. And what we -- there wasn't really testing of
`that by the other side.
` And I think it's fair to say, these are relatively
`well-established principles of microfluidic, so it's not
`surprising that there's not a dispute about whether there's
`laminar flow in the two regions.
` JUDGE GOODSON: Okay.
` JUDGE DANIELS: So we didn't have -- so what
`Dr. DiCarlo -- so he wasn't deposed on this?
` MR. KUSHAN: Dr. DiCarlo was deposed, but I don't
`think any of the testimony was -- detracted in any way from
`his analysis, they didn't show any defects in the analysis.
` And I don't think there's been anything really
`identified in our explanation of the design of these two
`regions that would suggest that the phenomenon that he
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`20
`
`
`
`Case IPR2017-02097 (Patent 8,529,161 B2)
`Case IPR2017-02162 (Patent 9,446,912 B2)
`
`suggests is occurring is actually occurring. Those particles
`don't come out of a sample layer.
` JUDGE GOODSON: Was Dr. DiCarlo deposed after his
`second declaration?
` MR. KUSHAN: Yes. And they also had a surreply, as
`you'll recall.
` JUDGE DANIELS: And none of his testimony, from what
`I remember, none of his testimony in either of these cases is
`part of a motion to exclude, at least in this case. I think
`it's only the prior -- the litigation in the prior District
`Court litigation that's being excluded.
` MR. KUSHAN: I think there are objections to some of
`his testimony in one of his depositions, but, you know,
`patent owner counsel, I think, can address that.
` JUDGE DANIELS: Yup.
` MR. KUSHAN: Again, I think the proper way to think
`about this is that our expert analyzed Wada, found that
`laminar flow and focusing is occurring in both of those
`regions, explained his basis, we've presented that as our
`argument in our petition, and then they came forward and
`argued that it wasn't occurring.
` So this is a classic case where it's proper to put
`in a rebuttal to that assertion that the thing we said is
`happening is not, and then we provided our answers and
`explanations why that is -- why our expert was true.
` So what I'd like to do, and I want to be sensitive
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
`14
`15
`16
`17
`18
`19
`20
`21
`22
`23
`24
`25
`26
`
`21
`
`
`
`Case IPR2017-02097 (Patent 8,529,161 B2)
`Case IPR2017-02162 (Patent 9,446,912 B2)
`
` to time, if I could go back for a moment to a claim
` construction issue around focusing. And the reason I want
` to do that is that we -- the Board instituted -- when they
` instituted (inaudible), they set forth kind of their own
` construction for focusing which took parts of each side's
` constructions.
` And I think we can -- we're comfortable with the
` general -- with most of the construction you adopted, but
` there are a couple terms that we think were not appropriate.
` Now, when you go into a classical process for claim
` construction of a term like "focusing", which is in only
` some of the claims, "focusing", you first found, was not
` defined to have a special meaning in the patent, and we
` agree. So you revert to the ordinary meaning of "focusing".
` The '161 patent gives a description of the device,
` which we think is consistent with that ordinary meaning as
` is shown in the prior art.
` If you go to Slide 8, please.
` Slide 8. This is just an excerpt, and it's just
` kind of illustrating what's happening in the device that is
` portrayed as the invention in the '161 patent. And you see
` the concepts of sheath fluid envelope and pinch a sample
` fluid that contains a number of particles, that flow sheath
` fluid containing particles, suspended, may be narrowed.
` That's the consequence of that higher speed, higher velocity
` sheath fluid exerting force on the sample layer.
`
`1
`2
`3
`4
`5
`6
`7
`8
`9
`10
`11
`12
`13
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
