`571.272.7822
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`Paper No. 11
`Entered: July 27, 2018
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`FUJIFILM CORPORATION,
`Petitioner,
`
`v.
`
`HOLOGIC, INC.,
`Patent Owner.
`____________
`
`Case IPR2018-00538
`Patent 7,123,684 B2
`
`
`
`
`
`
`
`
`
`
`Before MEREDITH C. PETRAVICK, BRIAN J. McNAMARA, and
`MATTHEW S. MEYERS, Administrative Patent Judges.
`
`MEYERS, Administrative Patent Judge.
`
`
`
`
`
`
`DECISION
`
`Denying Institution of Inter Partes Review
`
`35 U.S.C. § 314(a)
`
`
`
`
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`IPR2018-00538
`Patent 7,123,684 B2
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`A. OVERVIEW
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`I.
`
`INTRODUCTION
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`FUJIFILM Medical Systems USA, Inc., FUJIFILM Corporation, and
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`FUJIFILM Techno Products Co., Ltd. (collectively, “Petitioner”) filed a
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`Petition (Paper 1, “Pet.”) requesting inter partes review of claims 11, 29, 33,
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`and 41 of U.S. Patent No. 7,123,684 B2 (Ex. 1003, “the ’684 patent”). Pet.
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`1. Hologic, Inc. (“Patent Owner”) filed a Preliminary Response (Paper 8,
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`“Prelim. Resp.”), to which we authorized Petitioner to file a Reply (Paper
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`10, “Pet. Reply”).
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`Section 314(a) of Title 35 of the United States Code provides that an
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`inter partes review may not be instituted “unless . . . the information
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`presented in the petition . . . shows that there is a reasonable likelihood that
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`the petitioner would prevail with respect to at least 1 of the claims
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`challenged in the petition.” 35 U.S.C. § 314(a). Upon consideration of the
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`Petition, the Preliminary Response, and Petitioner’s Reply, for the reasons
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`explained below, we conclude that the information presented in the Petition
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`does not establish a reasonable likelihood that Petitioner would prevail with
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`respect to any of the challenged claims.
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`Accordingly, we decline to institute an inter partes review.
`
`B.
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`RELATED PROCEEDINGS
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`Petitioner indicates that the ’684 patent is involved in: In the Matter
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`of Certain X-Ray Breast Imaging Devices and Components Thereof,
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`Investigation No. 337-TA-1063 in the U.S. International Trade Commission
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`and Hologic, Inc., v. FUJIFILM Medical Systems USA, Inc., Ltd., No. 3:17-
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`2
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`IPR2018-00538
`Patent 7,123,684 B2
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`cv-1056 in the United States District Court for the District of Connecticut.
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`Paper 1, 3.
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`
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`C.
`
`THE ’684 PATENT
`
`The ’684 patent relates to X-ray mammography using digital image
`
`receptors. Ex. 1003, 1:14–44. The ’684 patent acknowledges that
`
`conventional mammography systems “have provisions for partly or fully
`
`automating the selection of appropriate technic factors for an x-ray exposure,
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`such as one or more of kVp (the x-ray tube accelerating potential), mA (x-
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`ray tube current), and exposure time.” Id. at 1:45–49. The ’684 patent
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`describes that
`
`one known approach for use with digital flat panel image
`receptors is to take a short, low x-ray dosage pre-exposure after
`the breast has been compressed, and then take an imaging
`exposure while the breast remains immobilized, using technic
`factors based on measurements taken with the same receptor in
`the pre-exposure.
`
`Id. at 1:56–61. The ’684 patent further describes that it is known to transmit
`
`and store mammography images. Id. at 2:16–20. However, the ’684 patent
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`identifies that known processes are inefficient because “in many if not most
`
`cases, the breast takes up only a part of the image taken with flat panel
`
`digital receptors such that an imaginary rectangle that envelops the image of
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`the breast is smaller than the field of view of the receptor.” Id. at 2:21–24.
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`To address this drawback, the ’684 patent discloses “transmit[ting]
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`and stor[ing] only a portion of the field of view” of the digital receptor by
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`defining a “reduced field of view area 48” using various methods. Id. at
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`5:58–6:10; see id. at Fig. 6, elements 52, 54, 56. In effect, the ’684 patent
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`3
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`Patent 7,123,684 B2
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`discloses “crop[ping] the resulting breast image before transmitting and/or
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`storing and/ or formatting it for transmission or storage.” Id. at 5:65–6:2.
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`Reproduced below is Figure 5 of the ’684 patent.
`
`
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`FIG. 5 illustrates selection of a decreased size mammography
`image for storage and transmission.
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`Figure 5 depicts field of view 50 of flat panel x-ray image receptor
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`12c along with breast image 46, which is within reduced field of view 48.
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`Id. at 5:41–48.
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`
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`D.
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`ILLUSTRATIVE CLAIMS
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`Petitioner challenges claims 11, 29, 33, and 41 of the ’684 patent.
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`Each of claims 11, 29, 33, and 41 are independent. Independent claim 11 is
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`illustrative of the challenged claims, and is reproduced below:
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`11. A mammography method comprising:
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`4
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`providing an image of a patient’s breast that occupies less
`than the entire field of view of an imaging receptor;
`
`automatically selecting an outline that encompasses the
`breast image to thereby define a reduced field of view image,
`wherein said outline is selected based on automatically derived
`information about a compression paddle selected to compress the
`breast for x-ray imaging, said outline encompasses an entirety of
`the patient's breast in the breast image, and the reduced field of
`view is defined based on said outline; and
`
`using said reduced field or view image for further
`processing, transmission, and/or archiving.
`
`E.
`
`EVIDENCE AND ASSERTED GROUNDS OF UNPATENTABILITY
`
`Petitioner challenges the claims on the following grounds:
`
`Claims
`11 and 41
`29 and 33
`11 and 41
`29 and 33
`11 and 41
`
`Reference(s)
`
`Basis
`§ 102(b) Defreitas1
`§ 103(a) Defreitas and Niklason2
`§ 103(a) Muller3 and Admitted Prior Art4
`§ 103(a) Muller, Admitted Prior Art, and Niklason
`§ 103(a) Kawamata5 and Yamada6
`
`
`1 U.S. Patent No. 7,443,949 B2, issued Oct. 28, 2008 (Ex. 1005;
`“Defreitas”).
`2 U.S. Patent No. 5,872,828, issued Feb. 16, 1999 (Ex, 1006; “Niklason”).
`3 U.S. Patent Application Publication No. US 2001/0038679 A1, published
`Nov. 8, 2001 (Ex. 1007; “Muller”).
`
`4 “‘Background’ of the ’684 patent describing characteristics of ‘typical[]’ X-
`ray mammography systems, and known proposals for improving upon such
`systems” (Ex. 1003; “Admitted Prior Art”).
`
`5 Japanese Patent Application Publication No. S64-46436, published
`February 20, 1989 (Ex. 1009; “Kawamata”).
`
`6 Japanese Patent Application Publication No. H08-186762, published July
`16, 1996 (Ex. 1011; “the ’762 publication”).
`
`
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`5
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`Patent 7,123,684 B2
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`Claims
`29 and 33
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`Reference(s)
`Basis
`§ 103(a) Kawamata, Yamada, and Niklason
`
`Pet. 5–11. Petitioner relies upon a Declaration of Dr. Christopher Daft.
`
`Ex. 1001.
`
`A. CLAIM INTERPRETATION
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`II. ANALYSIS
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`In an inter partes review, the Board interprets claim terms in an
`
`unexpired patent according to the broadest reasonable interpretation in light
`
`of the specification of the patent in which they appear. 37 C.F.R.
`
`§ 42.100(b); Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46
`
`(2016) (upholding the use of the broadest reasonable interpretation
`
`approach). For the purposes of this decision, and on this record, we
`
`determine that only the following claim element needs explicit
`
`interpretation. See Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795,
`
`803 (Fed. Cir. 1999) (only those terms which are in controversy need to be
`
`construed, and only to the extent necessary to resolve the controversy).
`
`Petitioner proposes clarifying the scope of two claim terms:
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`“processing, transmission, and/or archiving,” as recited by claims 11 and 41,
`
`and “the reduced field of view is defined based on said [outline/rectangular
`
`region].” Pet. 14–15. Under the broadest reasonable interpretation standard,
`
`and absent any special definitions, we give claim terms their ordinary and
`
`customary meaning, as they would be understood by one of ordinary skill in
`
`the art at the time of the invention. In re Translogic Tech., Inc., 504 F.3d
`
`1249, 1257 (Fed. Cir. 2007). In interpreting claims, care must be exercised,
`
`as there is a fine line between interpreting claims in light of the
`
`specification, and reading limitations into the claims from the specification.
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`6
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`Comark Commc’ns, Inc. v. Harris Corp., 156 F.3d 1182, 1186–87 (Fed. Cir.
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`1998). Any special definitions for claim terms must be set forth with
`
`reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d
`
`1475, 1480 (Fed. Cir. 1994).
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`For the purposes of this Decision, we discern that only the following
`
`terms require construction.
`
`1.
`
`“reduced field of view”
`
`Petitioner asserts that the term “‘reduced field of view’” should be
`
`construed as ‘field of view smaller than the entire field of view of an
`
`imaging receptor.’” Pet. 13. Patent Owner does not oppose Petitioner’s
`
`proposed construction. We find Petitioner’s construction to be consistent
`
`with the use of the term in the’684 patent. The ’684 patent discloses that
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`“the image of the breast lies within a rectangle that is smaller than the field
`
`of view, as illustrated in FIG. 5, where the image of a breast is within a
`
`notional rectangular outline 48 (reduced field of view) that is much smaller
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`than the field of view 50 of receptor 12c.” Ex. 1003 5:44–49. Thus, we
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`construe “reduced field of view” as a “field of view smaller than the entire
`
`field of view of an imaging receptor.”
`
`2.
`
` “reduced field of view image”
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`Petitioner asserts that the “reduced field of view image” should be
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`construed as “[e]ncompass[ing] either pre- or post-acquisition reduction of
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`the field of view.” Pet. 14. Petitioner asserts this construction is proper
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`because “[t]he Challenged Claims’ language is agnostic on whether the
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`‘reduced field of view image’ is defined before or after the image is
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`acquired, and is broad enough to encompass either scenario.” Id. Petitioner
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`7
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`acknowledges the claims include some temporal order, i.e., “‘said reduced
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`field of view image’ must exist before the
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`processing/transmission/archiving,” is required by the claims, but Petitioner
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`argues that the claims “do not delineate whether the field of view is reduced
`
`before acquiring the image or afterwards.” Id. at15.
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`Patent Owner disagrees, asserting that “all Challenged Claims clearly
`
`require the ‘reduced field of view’ to be defined after a first image is
`
`‘provided’ (and therefore in existence)” (Prelim. Resp. 18), and thus, that the
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`claims require an implicit order based on both logic and antecedent basis.
`
`Id. at 16–17 (citing Mformation Technologies, Inc. v. Research-in-Motion
`
`Ltd., 764 F.3d 1392 (Fed. Cir. 2014); Wi- Lan, Inc. v. Apple, Inc., 811 F.3d
`
`455 (Fed. Cir. 2016)). More particularly, Patent Owner asserts that “[a]ll
`
`Challenged Claims require ‘providing an image of a patient’s breast that
`
`occupies less than the entire field of view of an imaging receptor’ and
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`“automatically selecting a[n outline/rectangular region] that encompasses
`
`the breast image to thereby define a reduced field of view image[.]” Id. at
`
`17.
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`As a general rule, “[u]nless the steps of a method actually recite an
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`order, the steps are not ordinarily construed to require one.” Interactive Gift
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`Express, Inc. v. Compuserve Inc., 256 F.3d 1323, 1342 (Fed.Cir.2001).
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`However, “a claim requires an ordering of steps when the claim language, as
`
`matter of logic or grammar, requires that the steps be performed in the order
`
`written, or the specification directly or implicitly requires an order of steps.”
`
`Mformation Techs., 764 F.3d at 1398–99 (internal citation and quotation
`
`marks omitted); see also Function Media, LLC v. Google, Inc., 708 F.3d
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`1310, 1320 (Fed. Cir. 2013) (concluding that a claim that recites
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`8
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`“processing” an “electronic advertisement” necessarily indicates that “the
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`creation of the ad must happen before the processing begins”). A method
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`claim can also require a specific order implicitly, for example, if the
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`language of a claimed step refers to the completed results of the prior step.
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`E–Pass Techs., Inc. v. 3Com Corp., 473 F.3d 1213, 1222 (Fed. Cir. 2007).
`
`Independent claim 117 is directed to a mammography method,
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`comprising the following steps in the order as written : (1) “providing an
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`image of a patient’s breast”; (2) “selecting an outline that encompasses the
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`breast image to . . . define a reduced field of view image”; and (3) “using
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`said reduced field of view image for further processing, transmission, and/or
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`archiving.” See Ex. 1003, 7:26–38; see id. at 9:18–30; 9:44–57; 10:36–49.
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`The claim term “an image of a patient’s breast” recited in step 1
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`provides antecedent basis for “the breast image” recited in step 2. Claim 11
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`further recites that the recited “image of a patient’s breast” “occupies less
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`than the entire field of view of an imaging receptor.” Step 2 of claim 11
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`recites “automatically selecting an outline that encompasses the breast image
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`to thereby define a reduced field of view image.” Step 2 is performed after
`
`step 1 because step 2 requires selecting an outline from the image recited in
`
`step 1. See Mantech Envtl. Corp. v. Hudson Envtl. Servs., Inc., 152 F.3d
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`1368, 1375–76, (Fed. Cir. 1998) (holding that the steps of a method claim
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`had to be performed in their written order because each subsequent step
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`referenced something indicating the prior step had been performed).
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`Furthermore, step 2 is a product of step 1—a breast image is provided before
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`
`7 Although differences exists between claims 11, 29, 33, and 41, these
`difference do not alter the order of the steps.
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`9
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`“a reduced field of view image” can be defined. See also E–Pass Techs.,
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`473 F.3d at 1222; see also Loral Fairchild Corp. v. Sony Elecs. Corp., 181
`
`F.3d 1313, 1321 (Fed. Cir. 1999) (holding that the claim language itself
`
`indicated that the steps had to be performed in the order written because the
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`second step required the alignment of a second structure with a first structure
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`formed by the prior step).
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`To interpret otherwise, it would mean the term “an image of a
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`patient’s breast” recited in step 1 refers to the same breast image recited in
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`step 2.8 Furthermore, step 1 would have no relationship with the other steps
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`in the mammography method. For these reasons, we are not persuaded that
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`step 2 can be performed “before or after the image is acquired,” as Petitioner
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`asserts. See Microsoft Corp., v. Proxyconn, Inc., 789 F.3d 1292, 1298
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`(Fed.Cir.2015) (Claims should not be construed “so broadly that [their]
`
`constructions are unreasonable under general claim construction principles.”
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`The language of claim 11 also requires the remaining step 3 to be
`
`performed in the order written. Notably, step 3 necessarily occurs after step
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`2 because step 3 uses the “reduced field of view image” defined in step 2 for
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`“further processing, transmission, and/or archiving,” as recited by claims 11
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`and 41, and “tomosynthesis processing and transmission,” as recited by
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`claims 29 and 33. See Loral Fairchild, 181 F.3d at 1321.
`
`
`8 We note that throughout the prosecution history of the ’684 patent, the
`Examiner made approximately 37 objections to the claims for “informalities,
`which appear to be minor draft errors including lack of antecedent basis and
`grammatical problems” (see Ex. 1004, 84–85, 234–235), but did not identify
`any issue related to the aforementioned claims.
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`10
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`The Specification also supports the recited steps being performed in
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`the order written. For example, the ’684 patent discloses that its
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`mammography system uses a relatively large field-of-view receptor, but is
`
`able “[t]o save on transmitting and storing the breast image” by discarding
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`information outside of the reduced field of view. Ex. 1003, 5:41–54. The
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`’684 patent further discloses, “[i]f there is any significant information
`
`outside outline 48, only that information 55 can be attached to the
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`information for the image portion inside outline 48.” Id. at 5:54–57. The
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`’684 patent still further discloses that “[t]he size and position of paddle 12e
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`can be automatically determined, and the result used to in effect crop the
`
`resulting breast image before transmitting and/or storing and/or formatting it
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`for transmission or storage.” Id. at 5:65–6:2.
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`For the foregoing reasons, we determine that claims 11, 29, 33, and 41
`
`require the recited steps be performed in the order written. We are not
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`persuaded by Petitioner’s assertion that the claims are “agnostic on whether
`
`the ‘reduced field of view image’ is defined before or after the image is
`
`acquired, and is broad enough to encompass either scenario” (Pet. 14). We
`
`agree with Patent Owner that the claims “require the ‘reduced field of view’
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`to be defined after a first image is ‘provided’ (and therefore in existence).”
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`Prelim. Resp. 18.
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`3.
`
`Remaining Claim Terms
`
`We have given all remaining claim terms their ordinary and customary
`
`meaning, and determine that it is not necessary to make that meaning
`
`explicit for any other term. See Vivid Techs., 200 F.3d at 803 (Fed. Cir.
`
`1999) (“[O]nly those terms need be construed that are in controversy, and
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`only to the extent necessary to resolve the controversy.”).
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`11
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`B.
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`LEVEL OF SKILL IN THE ART
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`Regarding the level of skill in the art, Petitioner asserts
`
`[a] person of ordinary skill in the field as of the ’684
`Patent’s effective filing date would have a Master’s Degree or
`Ph.D[.] in physics, electrical engineering, or a related field and
`would also have at least 2 years of experience in the field of
`medical imaging. Ex. 1001, ¶ 42. Alternatively, someone with a
`bachelor’s degree and at least 7 years of experience in the field
`of medical imaging could also be considered one of ordinary skill
`in the art.
`
`Pet. 11–12 (citing Ex. 1001 ¶ 42). Patent Owner disagrees to some extent
`
`with Petitioner’s assessment, but states “there is no meaningful difference
`
`between these definitions for purposes of the present proceeding.” Prelim.
`
`Resp. 15.
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`In view of Patent Owner’s acknowledgement, that there is no
`
`meaningful difference between its definition of one of ordinary skill and that
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`proposed by Petitioner, we adopt Petitioner’s definition. We also note that
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`the level of ordinary skill in the art is reflected by the prior art of record. See
`
`Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). Thus, the
`
`distinctions between Petitioner and Patent Owner’s proposed definitions of
`
`one of ordinary skill would not alter our decision to deny institution in the
`
`present proceeding.
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`A. ANTICIPATION BY DEFREITAS – GROUND 1
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`III. PATENTABILITY
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`Petitioner asserts that claims 11 and 41 are anticipated by Defreitas.
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`Pet. 26–34 (citing Exs. 1001, 1003, 1005, 1019). Patent Owner responds to
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`Petitioner’s assertions. Prelim. Resp. 18–30 (citing Exs. 1001, 1003, 1005,
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`1007, 1016, 1018, 1022, 2001).
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`12
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`1.
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`Overview of Defreitas
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`Defreitas is directed to a digital mammography system that employs
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`flat panel receptors. Ex. 1005, 1:8–10. More particularly, Defreitas
`
`discloses that its system employs “compression paddles that match both the
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`size and position of the patient’s breast relative to the proximal edge of a
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`digital x-ray image receptor so as to improve image quality, patient comfort
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`and the ability of the health professional to position the breast optimally for
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`imaging.” Id. at 2:34–39. Defreitas further discloses “automated
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`collimation control” that is “responsive to information regarding one or
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`more of the size of the paddle, its location along the beam, its location
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`relative to the proximal edge of the receptor, a desired field of view,
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`magnification parameters, and the like.” Id. at 3:5–11. Defreitas also
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`discloses, “[a]ny desired further lateral adjustment can be made by sliding
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`paddle 2 along the direction of the proximal edge 5a, before or during
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`compressing the breast for taking an image.” Id. at 5:17–20.
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`2.
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`Independent claims 11 and 41
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`Petitioner asserts that Defreitas anticipates claims 11 and 41 of the
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`’684 patent. Pet. 26–34 (citing Exs. 1001, 1003, 1005, 1019). Patent Owner
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`disagrees. Prelim. Resp. 18–30 (citing Exs. 1001, 1003, 1005, 1007, 1016,
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`1018, 1022, 2001). In particular, Patent Owner asserts that Petitioner does
`
`not adequately establish that Defreitas discloses a “reduced field of view
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`image,” as required by claims 11 and 41. Prelim. Resp. 18–28; see also id.
`
`at 1–5. We agree with Patent Owner.
`
`Independent claims 11 and 41 recite, “automatically selecting [an
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`outline/a rectangular region] that encompasses the breast image to thereby
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`13
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`define a reduced field of view image.” To address this limitation, Petitioner
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`asserts
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`Defreitas discloses the use of collimators to restrict the x-ray
`illumination (and therefore the resulting image) to a defined area
`that is smaller than the full field of the digital receptor—
`preferably, it is “just large enough to show the image of breast 3,
`or at least a selected part thereof”—thereby defining a reduced
`field of view image encompass[ing] the breast image.”
`
`Pet. 29 (citing Ex. 1005, 1:26–35, 1:38–44, 1:67–2:7, 3:54–64, 2:40–45,
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`3:41–46; Ex. 1001 ¶¶ 31–32, 75–76). Petitioner also asserts that this
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`collimation “can be achieved automatically using an auto-collimation
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`control to adjust the collimation of beam 30.” Pet. 29–30 (citing Ex. 1005,
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`4:19–20, 2:40–45, Fig. 2; Ex. 1001 ¶ 79). Petitioner further asserts “that the
`
`breast image defined by this automatic collimation process ‘is typically
`
`rectangular.’” Pet. 30 (citing Ex. 1005, 3:61; Ex. 1001 ¶ 79).
`
`In response, Patent Owner asserts that “collimation alone does not—
`
`and cannot—result in a ‘reduced field of view image’ within the meaning of
`
`the ’684 Patent.” Prelim. Resp. 1. Patent Owner acknowledges that
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`“collimation directs X-ray beams to a specific area,” but argues that “it does
`
`not prevent the digital detector from picking up data in areas outside the area
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`of collimation.” Prelim. Resp. 4 (citing Ex. 1022, 5; Ex., 1018, 3).
`
`According to Patent Owner, “Fujifilm’s expert, Dr. Daft, has admitted that
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`there [are] data received by the portion of the detector outside the field of
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`collimation.” Prelim. Resp. 4, 26–27 (citing Ex. 2001, 582:22–585:11,
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`588:24–590:10; 635:25–6:37:18).
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`Petitioner disagrees with Patent Owner’s assessment of Dr. Daft’s
`
`testimony. Pet. Reply 1–5 (citing Exs. 1005, 1011, 1027, 2001). Instead,
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`Petitioner asserts that Dr. Daft
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`explained again that collimation creates a reduced field of view
`image (Ex. 2001, 583:16–584:4, 636:3–6); the “image is only in
`the portion of the detector that was illuminated by the x-rays,”
`(Id., 589:5–7, see also 584:19–23, 589:12–20, 636:14–15), and
`the rest of the detector only receives noise generated by the
`circuitry or scatter—“meaningless numbers”—not an image (Id.,
`583:21–584:1, 589:8–21, 636:14–17).
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`Pet. Reply 2. Thus, Petitioner asserts that “Dr. Daft’s testimony confirms
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`that collimation, as taught in the prior art, ‘define[s] a reduced field of view
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`image[]’” (Pet. Reply 1 (emphasis omitted)) because Dr. Daft testified that
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`“‘there is no image created outside of the collimated x-ray beam.’” Pet.
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`Reply 1 (citing Ex. 1027, 133 Q. 403). We do not agree.
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`We find the full-context of Dr. Daft’s statement to be relevant. Dr.
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`Daft stated
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`[i]n the scenario described by Defreitas and other prior art, the
`mammography system provides a collimated area that is some
`subset of the image receptor’s area. The diagnostic image is
`confined to that collimated area. Outside of that area, the
`detector will receive scattered radiation and noise; there is no
`diagnostic value to the information in that area. So there is no
`image created outside of the collimated x-ray beam because there
`is no clinical value to that area. It is only noise and scatter:
`random numbers with no value.
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`Ex. 1027, 133 Q. 403. Dr. Daft’s testimony fails to support Petitioner’s
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`assertion that “collimation . . . ‘define[s] a reduced field of view image[]’”
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`(Pet. Reply 1 (emphasis omitted); see Pet. 28–30). Dr. Daft’s testimony
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`identifies that it is “[t]he diagnostic image [that] is confined to that
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`collimated area” (Ex. 1027, 133 Q. 403), but on this record, Petitioner has
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`failed to establish that “[t]he diagnostic image” constitutes a “reduced field
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`of view image” (emphasis added) within the meaning of each of the
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`challenged claims. Dr. Daft further states, “there is no image created outside
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`of the collimated x-ray beam because there is no clinical value to that area.”
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`Ex. 1027, 133 Q. 403; see also id. at 134 Q. 404. Regardless of whether
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`there is “clinical value” or not, Dr. Daft acknowledges that the detector does,
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`in fact, “receive scattered radiation and noise” (id.), which we agree with
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`Patent Owner, would generate pixel data. Prelim. Resp. 23–25 (citing Exs.
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`1007, 1018, 1022). Thus, we agree with Patent Owner that “collimation
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`alone does not—and cannot—result in a “reduced field of view image”
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`within the meaning of the ’684 Patent.” Prelim. Resp. 1 (emphasis added).
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`In this context, Patent Owner asserts that Petitioner has not shown
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`sufficiently that Defreitas discloses a “reduced field of view image” created
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`by
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`a process whereby a region of a first image (i.e., “entire field of
`view image”) is defined and the pixel data from sections of that
`first image outside that region (i.e., the “reduced field of view”)
`are excluded or discarded (e.g., cropped) from the first image to
`form a second image (i.e., “reduced field of view image”).
`
`Prelim. Resp. 20–21 (citing Ex. 1003, 5:65–6:2, 7:26–38) (emphases
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`omitted). More particularly, Patent Owner argues, “Defreitas simply does
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`not discuss the removal or exclusion of any data outside the reduced field of
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`view and therefore could not be describing a ‘reduced field of view image.’”
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`Prelim. Resp. 22. We agree with Patent Owner.
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`We agree with Patent Owner that “[a]lthough collimation will restrict
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`a majority of the X-ray beam to one region of the digital detector, the
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`machine will still read out data from the entire area of the detector.” Prelim.
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`Resp. 23 (citing Ex. 1022, 5). Defreitas “employ[s] compression paddles
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`that match both the size and position of the patient’s breast” and “provide[s]
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`automated collimation control that changes x-ray beam collimation in
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`accordance with one or more of the size and position of the compression
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`paddle and of the breast.” Ex. 1005, 2:34–35, 2:40–43. As Patent Owner
`
`points out, however, “Defreitas describes a process of taking a [cranio-
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`caudal] image, thereby generating a breast image that is ‘typically
`
`rectangular,’ but this image undergoes no processing that would remove any
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`image data.” Prelim. Resp. 22 (citing Ex. 1005, 3:54–67).
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`Furthermore, as discussed above, we determine that claims 11, 29, 33,
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`and 41 require the recited steps be performed in the order written. As we
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`noted in our discussion of claim 11, defining a reduced field of view image
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`by automatically selecting an outline that encompasses the breast image in
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`the first step is different from providing an image of the patient’s breast that
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`occupies less than the entire field of view in the second step. Turning to
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`Petitioner’s analysis of Defrietas, it is unclear how the “collimated area that
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`is some subset of the image receptor’s area” (see Pet. Reply 1 (citing Ex.
`
`1027, 133 Q. 403)), which Petitioner asserts “define[s] a reduced field of
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`view image[]” (Pet. Reply 1), as recited in the second step, is different from
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`the “image of a patient’s breast that occupies less than the entire field of
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`view of an imaging receptor,” as provided in the first step of each of the
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`challenged claims. See Pet. 28–29 (citing Ex. 1005, 1:26–35, 1:38–44,
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`1:67–2:7, 2:40–45, 3:41–46, 3:54–64, Ex. 1001 ¶¶ 31–32, 75–76).
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`Petitioner relies on the description in Defreitas of “the use of
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`collimators to restrict the x-ray illumination (and therefore the resulting
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`image) to a defined area that is smaller than the full field of the digital
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`receptor” (Pet. 29; see also id. at 28–29) as disclosing both the “image of a
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`patient’s breast” provided in the first step and the “reduced field of view
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`image” defined in the second step of each of the challenged claims. For this
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`reason, agree with Patent Owner that the image formed from collimation in
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`Defreitas is not the same as the “reduced field of view image” required by
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`the challenged claims.
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`For the above reasons, we determine that Petitioner fails to show a
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`reasonable likelihood that Defreitas discloses a “reduced field of view
`
`image,” and therefore has not shown a reasonable likelihood of prevailing on
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`its assertion that Defreitas anticipates claims 11 and 41.
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`B. OBVIOUSNESS OVER DEFREITAS AND NIKLASON – GROUND 2
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`Petitioner asserts that claims 29 and 339 are obvious over Defreitas
`
`and Niklason. Pet. 34–40 (citing Exs. 1001, 1004, 1006, 1020). Patent
`
`Owner responds to Petitioner’s assertions. Prelim. Resp. 30–35 (citing Exs.
`
`1003, 1006, 1020, 1022).
`
`1.
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`Overview of Niklason
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`Niklason is directed to a “method for tomosynthesis x-ray imaging.”
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`Ex. 1006, 2:24–25. Niklason discloses that its “x-ray source and detector are
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`disposed on opposite sides of an object region disposed about an object
`
`plane parallel to the image plane” and “[a]s the source moves along the arc,
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`the detector generates for a succession of points along the arc, a
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`corresponding succession of image data sets, each set being representative of
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`the intensity of x-rays incident on the detector for the then current position
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`9 Claims 29 and 33 are substantially similar to claims 11 and 41. The
`primary difference between the two sets of claims lies in the last limitation
`of each of the challenged claims. Claims 11 and 41 require using the
`reduced field of view image for further processing, transmission, and/or
`archiving, whereas claims 29 and 33 specify that the image will be used for
`“tomosynthesis processing and transmission.”
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`of the source.” Id. at 2:34–38. After processing, Niklason discloses that
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`“[t]he resultant image data thus corresponds in form to that produced by a
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`conventional linear motion . . . so that conventional techniques may be used
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`to produce a final representation of the x-ray absorption of the object
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`region.” Id. at 2:45–49. Niklason further discloses that tomosynthesis
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`images can be transmitted from its imaging system to a workstation. Id. at
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`7:42–46.
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`2.
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`Independent claims 29 and 33
`
`Petitioner asserts that claims 29 and 33 are obvious over the
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`combination of Defreitas and Niklason. Pet. 34–40. Petitioner asserts
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`[a] person of ordinary skill in the art would have been motivated
`to combine the teachings of Defreitas (disclosing elements [a]–
`[f] of claims 29 and 33) with the teachings of Niklason
`(disclosing element [g] of claims 29 and 33) in such a way that
`the resulting combination would yield the entire alleged
`invention of claims 29 and 33.
`
`Pet. 37. However, Petitioner does not allege that Niklason addresses the
`
`deficiencies identified in connection with Defreitas, as discussed above. In
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`particular, Petitioner does not explain how the addition of Niklason would
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`have rendered obvious a mammography method including the first step of
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`“providing an image of a patient’s breast that occupies less than the entire
`
`field of view of an imaging receptor” and then, as a second step,
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`“automatically selecting an [outline/rectangular region] that encompasses the
`
`breast image to thereby