Trials@uspto.gov
`571-272-7822
`
`Paper 48
`Entered: March 30, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`
`ZAP SURGICAL SYSTEMS, INC.,
`Petitioner,
`
`v.
`
`ELEKTA LIMITED,
`Patent Owner.
`____________
`
`IPR2019-01659
`Patent 7,295,648 B2
`____________
`
`
`
`
`Before BRYAN F. MOORE, JENNIFER S. BISK, and
`NORMAN H. BEAMER, Administrative Patent Judges.
`
`BEAMER, Administrative Patent Judge.
`
`
`
`JUDGMENT
`Final Written Decision
`Determining All Challenged Claims Unpatentable
`Denying Patent Owner’s Revised Motion to Amend
`Denying Patent Owner’s Motion to Exclude
`35 U.S.C. § 328(a)
`
`
`
`
`
`
`
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`
`INTRODUCTION
`I.
`In response to a Petition filed by ZAP Surgical Systems, Inc.
`(“Petitioner”), we instituted inter partes review of claims 1–4, 7–13, 16–18,
`20, and 22–23 of U.S. Patent No. 7,295,648 B2 (Ex. 1001, “the 648 patent”).
`Paper 1 (“Pet.”); Paper 7 (“Dec.”). Elekta Limited (“Patent Owner”) filed a
`Response to the Petition, Petitioner filed a Reply, and Patent Owner filed a
`Sur-Reply. Paper 14 (“PO Resp.”); Paper 19 (“Reply”); Paper 24 (“Sur-
`Reply”). Patent Owner also filed a Motion to Amend the claims, Petitioner
`filed an Opposition to that Motion, and we provided Preliminary Guidance
`under the Board’s Motion to Amend Pilot Program. Papers 13, 18, 20.
`Thereafter, Patent Owner filed a Revised Motion to Amend, Petitioner
`filed an Opposition, Patent Owner filed a Reply, and Petitioner filed a Sur-
`Reply. Paper 22 (“RMTA”); Paper 25 (“Opp. RMTA”); Paper 35 (“Reply
`RMTA”); Paper 43 (“Sur-Reply RMTA”). The Revised Motion to Amend
`states that it is contingent upon a finding that challenged independent
`claims 1 and/or 18 are unpatentable. RMTA 1.
`In addition, Patent Owner filed a Motion to Exclude evidence, which
`Petitioner opposed, and in support of which Patent Owner filed a Reply.
`Papers 37, 38, 41.
`An oral hearing took place on January 27, 2021. The Hearing
`Transcript (“Tr.”) is included in the record as Paper 47. After considering
`the parties’ arguments and supporting evidence, we determine that Petitioner
`has demonstrated by a preponderance of the evidence that claims 1–4, 7–13,
`16–18, 20, and 22–23 are unpatentable. Also, we determine that Patent
`Owner’s Revised Motion to Amend should be denied. In addition, for the
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`reasons explained below, we deny Patent Owner’s Motion to Exclude
`evidence.
`
`BACKGROUND
`II.
`A. The ’648 Patent
`The ’648 patent, titled “Method And Apparatus For Treatment By
`Ionizing Radiation,” was filed on October 21, 2004, issued on November 13,
`2007, and cites Great Britain priority applications filed October 23, 2003 and
`November 4, 2003. Ex. 1001, codes (54), (22), (45), (30). The patent
`describes a radiation therapy/surgery device for treatment of, e.g., tumors in
`the brain. Id. at code (57). Figure 5 of the ’648 patent, annotated by the
`panel to show a “rotation axis” and a “support axis,” is reproduced below.
`
`Rotation
`axis
`
`
`Support
`axis
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`Figure 5 illustrates a perspective view of the internal structure of an
`exemplary apparatus of the ’648 patent. Ex. 1001, 5:8–9. A sturdy
`mounting ring 20 supports rotatable ring 24, which can rotate around patient
`18 lying on a table. Id. at 7:5–14. The table support can be adjusted via a
`patient positioning system (not shown). Id. at 8:33–39. Mounting brackets
`26 and 28 are attached to ring 24, which include pivotable mounting points
`30 (only the upper such point is visible in Figure 5) spaced transversely from
`the plane of the ring, wherein an imaginary line drawn through the points 30
`(the “rotation axis” shown above) would pass directly through the axis of
`rotation of the ring (the “support axis” shown above), and which point of
`intersection is at the same height as a patient lying on the patient table. Id. at
`7:14–23.
`A linear accelerator (linac) 32 is mounted on the pivotal mounting
`points 30 in a suitable housing 34. A motor 36 is provided to allow the linac
`housing 34, and thus the linac 32, to be rotated about the pivotal mounting
`points 30. The height of the linear accelerator 32 and its direction are set so
`that its beam axis passes through the intersection point referred to above. Id.
`at 7:24–30. This intersection point is referred to as the “isocentre.” Id. at
`6:44–49.
`The linac can thereby rotate about the ring axis and the pivotable
`mounting point axis, allowing the beam to come from many directions and
`always pass through the intersection point, which is where the patient’s head
`(for example) is positioned. Id. at 7:31–40. In operation, the patient is
`subjected to multiple radiation doses from multiple directions, with each
`dose at a relatively low level so as not to damage the undiseased tissue
`through which the beam passes, but with the cumulative doses at the target
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`intersection high enough to destroy the diseased tissue. Id. at 1:11–36, 7:41–
`44.
`
`Because the target tissue can have an irregular shape, as the beam is
`directed to the target from different directions, its cross section is adjusted
`using a collimator at the output of the linac. Id. at 8:7–14. Also, the
`intensity of the beam, the speed of rotation of the linac about the axes of the
`system, and the position of the table supporting the patient can be varied
`during treatment. Id. at 8:1–13, 23–27, 33–37. The linac can also be used at
`lower intensities as an imaging device to calibrate the position of the patient
`or locate anatomical areas of the patient. Id. at 8:14–23. A control means
`can control the collimation, beam intensity and movement, and patient
`position, using, inter alia, feedback from the imaging device. Id. at 4:35–59.
`The ’648 patent asserts that the above-described arrangement has the
`advantage of accurately positioning the linac over a wide variety of approach
`angles, using only rotatable joints, such that the linac is suitably balanced
`around those joints, avoiding imprecision problems of prior art techniques
`that were less able to accommodate the heavy linac apparatus. Id. at 3:3–31,
`5:36–46, 7:50–56. In addition, spacing the pivotable mounting points
`transversely from the plane of the ring allows the linac to pivot without
`fouling the support or irradiating unintended areas such as the patient’s
`shoulder. Id. at 4:21–28, 8:67–9:1.
`
`B. Illustrative Claim
`Independent claim 1 of the ’648 patent is illustrative of the challenged
`claims, and is reproduced below.
`1. A device for treating a patient with ionising radiation
`comprising:
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`a ring-shaped support, on which is provided a mount,
`a radiation source attached to the mount;
`the support being rotateable about an axis coincident with
`the centre of the ring;
`the source being attached to the mount via a rotateable
`union having a [sic] an axis of rotation axis [sic] which is non-
`parallel to the support axis;
`wherein the rotation axis of the mount passes through the
`support axis of the support and the radiation source is collimated
`so as to produce a beam which passes through the co-incidence
`of the rotation and support axes.
`Ex. 1001, 9:54–67 (British standard spelling in original).
`
`C. References
`Petitioner relies on the following references (Pet. iv):
`• Grady et al., US 4,649,560, issued March 10, 1987. Ex. 1009
`(“Grady”).
`• K J Ruchala et al., “Megavoltage CT image reconstruction during
`tomotherapy treatments,” Phys. Med. Biol. 45, 3545-3562 (2000). Ex.
`1010 (“Ruchala”).
`• Lam et al., US 5,945,684, issued Aug. 31, 1999. Ex. 1013 (“Lam”).
`• Adler, US 5,207,223, issued May 4, 1993. Ex. 1012 (“Adler”).
`• Valentin, WO 01/12262 A1, pub. Feb. 22, 2001. Ex. 1014
`(“Valentin”).
`• Roder, DE 3321057 A1, pub. Dec. 13, 1984. Ex. 1015 (“Roder”).
`• Winter, US 4,998,268, issued March 5, 1991. Ex. 1016 (“Winter”).
`• Schonberg, Russell G., “The History of the Portable Linear
`Accelerator,” AAPM Meeting (2001). Ex. 1011 (“Schonberg”).
`Petitioner also relies on the declarations of J. Michael McCarthy and George
`Asmerom. Ex. 1003 (“McCarthy Decl.”); Ex. 1026 (McCarthy MTA Decl.”);
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`Ex. 1028 (McCarthy Reply Decl.”); Ex. 1036 (McCarthy RMTA Decl.”); Ex.
`1027 (“Asmerom Decl.”).
`Patent Owner relies on the declarations of K. David Steidley and
`Phillip Beron, M.D. Ex. 2001 (“Steidley Decl.”); Ex. 2007 (“Steidley 2nd
`Decl.”); Ex. 2040 (“Steidley 3rd Decl.”); Ex. 2008 (“Beron Decl.”).
`
`D. Asserted Grounds of Unpatentability
`Petitioner challenges the patentability of claims 1–4, 7–13, 16–18, 20,
`and 22–23 of the ’648 patent on the following grounds (Pet. 3)1:
`
`Claims Challenged
`1–4, 7–8, 11–12, 17–18, 20, 23
`9, 10, 13, 16, 22
`1–4, 7–8, 11–12, 17–18, 20, 23
`9, 10, 13, 16, 22
`1–4, 7–8, 11–12, 17–18, 20, 23
`9, 10, 13, 16, 22
`
`35 U.S.C. §
`103(a)
`103(a)
`103(a)
`103(a)
`103(a)
`103(a)
`
`References
`Grady, Ruchala
`Grady, Ruchala, Lam
`Adler, Grady
`Adler, Grady, Lam
`Valentin, Roder
`Valentin, Roder, Lam
`
`Petitioner also relies on Winter, Schonberg, and Adler as background art in
`connection with Grounds 1–4. Pet. 20–21, 46–50.
`
`E. Real Parties in Interest
`Petitioner identifies itself as the real party in interest. Pet. 77. Patent
`Owner identifies itself, and Elekta, Inc. as real parties in interest. Paper 5, 2.
`
`
`1 The Leahy-Smith America Invents Act (“AIA”) included revisions to
`35 U.S.C. §§ 102 and 103 that became effective after the filing of the
`application for the ’648 patent. Therefore, we apply the pre-AIA versions of
`these sections.
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`
`F. Related Proceedings
`The parties identify Elekta Limited and Elekta, Inc. v. Zap Surgical
`Systems, Inc., Case No. 4:19-cv-02269 (N.D. Cal.) as a related proceeding.
`Pet. 78; Paper 5, 2.
`
`III. ANALYSIS
`Legal Standards
`A.
`A claim is unpatentable for obviousness if, to one of ordinary skill in
`the pertinent art, “the differences between the subject matter sought to be
`patented and the prior art are such that the subject matter as a whole would
`have been obvious at the time the invention was made.” KSR Int’l Co. v.
`Teleflex Inc., 550 U.S. 398, 406 (2007) (quoting 35 U.S.C. § 103(a)). The
`question of obviousness is resolved on the basis of underlying factual
`determinations, including “the scope and content of the prior art”;
`“differences between the prior art and the claims at issue”; and “the level of
`ordinary skill in the pertinent art.” Graham v. John Deere Co., 383 U.S. 1,
`17–18 (1966). Additionally, secondary considerations, such as “commercial
`success, long felt but unsolved needs, failure of others, etc., might be utilized
`to give light to the circumstances surrounding the origin of the subject
`matter sought to be patented. As indicia of obviousness or nonobviousness,
`these inquiries may have relevancy.” Graham, 383 U.S. at 17–18.
`A patent claim “is not proved obvious merely by demonstrating that
`each of its elements was, independently, known in the prior art.” KSR,
`550 U.S. at 418. Rather, an obviousness determination requires finding
`“both ‘that a skilled artisan would have been motivated to combine the
`teachings of the prior art references to achieve the claimed invention, and
`that the skilled artisan would have had a reasonable expectation of success in
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`doing so.’” Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., 821 F.3d
`1359, 1367–68 (Fed. Cir. 2016) (citation omitted); see KSR, 550 U.S. at 418
`(for an obviousness analysis, “it can be important to identify a reason that
`would have prompted a person of ordinary skill in the relevant field to
`combine the elements [in the way the claimed] new invention does”).
`“Although the KSR test is flexible, the Board ‘must still be careful not to
`allow hindsight reconstruction of references . . . without any explanation as
`to how or why the references would be combined to produce the claimed
`invention.’” TriVascular, Inc. v. Samuels, 812 F.3d 1056, 1066 (Fed. Cir.
`2016) (citation omitted).
`Further, an assertion of obviousness “cannot be sustained by mere
`conclusory statements; instead, there must be some articulated reasoning
`with some rational underpinning to support the legal conclusion of
`obviousness.” KSR, 550 U.S. at 418 (quoting In re Kahn, 441 F.3d 977, 988
`(Fed. Cir. 2006)); accord In re NuVasive, Inc., 842 F.3d 1376, 1383 (Fed.
`Cir. 2016) (stating that “‘conclusory statements’” amount to an “insufficient
`articulation[] of motivation to combine”; “instead, the finding must be
`supported by a ‘reasoned explanation’” (citation omitted)); In re Magnum
`Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016) (“To satisfy its
`burden of proving obviousness, a petitioner cannot employ mere conclusory
`statements. The petitioner must instead articulate specific reasoning, based
`on evidence of record, to support the legal conclusion of obviousness.”).
`The motivation to combine must be “accompanied by a reasonable
`expectation of achieving what is claimed in the patent-at-issue.” Intelligent
`Bio-Sys, Inc. v. Illumina Cambridge Ltd., 821 F.3d 1359, 1367 (Fed. Cir.
`2016). “The reasonable expectation of success requirement refers to the
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`likelihood of success in combining references to meet the limitations of the
`claimed invention.” Id.
`Level of Ordinary Skill in the Art
`B.
`Petitioner relies on its expert, Dr. McCarthy, to contend:
`A POSITA [person of ordinary skill in the art] at the time
`of the claimed invention would have a bachelor’s degree in
`mechanical engineering as well as at least five years of
`experience in the industry working with mechanical systems
`such as rotatable gantries, gyroscope gimbals and robotic
`systems, including robot arms and wrists; or without an
`undergraduate degree, a person of ordinary skill would have ten
`years of experience designing, manufacturing, or overseeing
`mechanical systems such as rotatable gantries, robotic systems,
`such as robot arms, robotic surgery systems, and robotic
`rehabilitation systems, all of which
`involve mechanical
`positioning systems. See [McCarthy Decl.] ¶ 16.
`Pet. 13.
`Patent Owner’s expert, Dr. David Steidley, proposes:
`[A] POSITA, at the time of the ’648 patent, would have an
`undergraduate degree in science, math, physics, engineering, or
`the like, and a graduate degree (M.S. or Ph.D.) in a similar field
`that includes study of engineering, natural science, physics, radi-
`ation physics or the like, together with at least five years of
`experience working with radiation imaging and radiation therapy
`systems beyond the completion of his or her degrees.
`Steidley Decl. ¶ 52; Steidley 2nd Decl. ¶¶ 18, 45. Dr. Steidley testifies that
`one of ordinary skill in the art must have at least five years of radiation
`imaging and therapy experience, because the use of radiation to treat patients
`creates a serious risk to the health and safety of human life, and a person
`having less than five years’ experience would be unable to appreciate and
`predict the medical risks encountered in the clinical practice of radiation
`therapy. Steidley 2nd Decl. ¶ 51.
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`
`As stated in the “Field Of The Invention” of the ’648 patent:
`This invention relates to a device for treating a patient with
`ionising radiation. It is particularly suited to forms of radiosur-
`gery and to certain forms of radiotherapy.
`Ex. 1001, 1:6–8. The “Background Art” portion of the ’648 patent further
`provides basic information about the treatment of pathological cells using
`radiation, including the fact that radiation can be used to kill tumor cells, the
`corresponding need to avoid damage to healthy cells, the use of radiation
`imaging to assist in treatment, the need for “pinpoint accuracy” in focusing
`the radiation beam when treating brain tumors, and characterizations of
`several then-known approaches for radiation treatment. Id. at 1:12–2:23.
`The background section also provides a high-level description of
`linear accelerator (“linac”) devices used for treatment, including their use of
`accelerated electrons to generate a collimated X-ray beam directed to the
`patient from a variety of directions, to “minimise the dosage outside the
`tumour and maximise it within the tumour.” Id. at 2:24–43. The ’648 patent
`asserts that a disadvantage of using a linac is that they are “extremely
`heavy,” due to the linac components themselves as well as the required
`shielding to protect from radiation, and thus are hard to accurately position,
`particularly if the linac is mounted on a robotic arm. Id. at 2:44–3:31.
`Nonetheless, the’648 patent states that the use of linacs on robotic arms “can
`be constructed and find application to bodily tumours, [although] they are
`not sufficiently accurate for use with tumours of the brain.” Id. at 3:15–17.
`Beyond this background section, the bulk of the ’648 patent is
`directed to detailed description of a sturdy mechanical apparatus capable of
`rotationally manipulating a linear accelerator in three dimensions oriented in
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`a variety of approach angles with high geometrical accuracy. Ex. 1001,
`Figs. 1–17, 3:65–4:48, 5:36–9:36. In particular, the ’648 patent describes:
`a support, on which is provided a mount, a radiation source
`attached to the mount, the support being rotateable about an axis,
`the source being attached to the mount via a rotateable union
`having an axis of rotation which is non-parallel to the support
`axis, wherein the axis of the mount passes through the axis of the
`support and the radiation source is collimated so as to produce a
`beam which passes through the coincidence of those axes.
`Id. at 4:5–13. In other words, the ’648 patent is primarily directed to the
`mechanical engineering aspects of designing an apparatus using a linac for
`radiation treatment, not the details about the linac itself, or how such devices
`are used in a clinical context.
`Accordingly, we agree with Petitioner’s proposal requiring a person of
`ordinary skill to have education and training in mechanical engineering.
`Pet. 13. However, Petitioner’s proposal does not sufficiently take into
`account the radiation imaging and radiation therapy environment of the
`pertinent field, which Patent Owner emphasizes. PO Resp. 12–13. But
`Patent Owner’s proposal omits the predominately mechanical engineering
`aspects of the pertinent field, and disproportionately requires five years of
`experience in radiation imaging and therapy. The person of ordinary skill in
`the context of the ’648 patent is not the user of the radiation device, but the
`designer of that device. We are not persuaded by Patent Owner’s expert Dr.
`Steidley’s opinion that a mechanical engineer of ordinary skill would not
`have been able to fully take into account the well-known dangers of
`radiation in designing a radiation treatment device. Steidley 2nd Decl. ¶ 51.
`Therefore, based on the preponderance of the evidence before us, we
`determine that Petitioner’s proposal should be modified to add the
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`requirement that a person of ordinary skill in the art would also have several
`years of experience designing radiation imaging and radiation therapy
`systems. Alternatively, given that a person skilled in the art of mechanical
`engineering would have been capable of applying engineering skills to a
`wide variety of applications if given the necessary information and
`specifications pertaining to such applications, it is sufficient for the person
`of ordinary skill in the art of the ’648 patent to be skilled in the art of
`mechanical engineering and to have access to sources of information (such
`as collaborators in a development team) about the capabilities, constraints
`and specifications of radiation imaging and radiation therapy systems, at
`least to the extent of the general background information set forth in the ’648
`patent. See In re Paulsen, 30 F.3d 1475, 1482 (Fed. Cir. 1994) (affirming
`rejection of a laptop computer hinge as obvious over hinged cabinets, piano
`lids, etc., because the “problem is not unique to portable computers”);
`Pentec, Inc. v. Graphic Controls Corp., 776 F.2d 309, 314 (Fed. Cir.1985)
`(affirming invalidation of a patent for a hinged pen arm because a person
`skilled in pen art would have looked to hinge and fastener art for a way to
`attach a pen to a pen arm); Sci. Plastic Prod., Inc. v. Biotage AB, 766 F.3d
`1355, 1360 (Fed. Cir. 2014) (“[W]hen the problem an invention is designed
`to solve is not unique to the specific field of the invention, it is not improper
`for the trier of fact to consider whether a person of ordinary skill would
`consult a different art in order to solve the problem.”).
`Either of these articulations are consistent with the level of ordinary
`skill in the art reflected by the prior art. See Okajima v. Bourdeau, 261 F.3d
`1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir.
`1995). They are also consistent with the evidence that actual radiation
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`therapy devices are developed by design teams that include mechanical
`engineers with limited prior experience working specifically with radiation
`treatment systems, who are able to consult with radiation therapists as
`necessary. Asmerom Decl. ¶¶ 30–41.
`Claim Construction
`C.
`For petitions filed after November 13, 2018, as here, a claim “shall be
`construed using the same claim construction standard that would be used to
`construe the claim in a civil action under 35 U.S.C. 282(b).”
`37 C.F.R. § 42.100(b) (2019). We apply the claim construction standard
`from Phillips v. AWH Corp., 415 F.3d 1303, 1312–13 (Fed. Cir. 2005) (en
`banc).
`Under that standard, claim terms are generally given their ordinary
`and customary meaning, as would be understood by one with ordinary skill
`in the art in the context of the specification, the prosecution history, other
`claims, and even extrinsic evidence including expert and inventor testimony,
`dictionaries and learned treatises, although extrinsic evidence is less
`significant than the intrinsic record. Phillips, 415 F.3d at 1312–17. Usually,
`the specification is dispositive, and it is the single best guide to the meaning
`of a disputed term. Id. at 1315.
`“Importantly, the person of ordinary skill in the art is deemed to read
`the claim term not only in the context of the particular claim in which the
`disputed term appears, but in the context of the entire patent, including the
`specification.” Id. at 1313. “In determining the meaning of the disputed
`claim limitation, we look principally to the intrinsic evidence of record,
`examining the claim language itself, the written description, and the
`prosecution history, if in evidence.” DePuy Spine, Inc. v. Medtronic
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`Sofamor Danek, Inc., 469 F.3d 1005, 1014 (Fed. Cir. 2006) (citing Phillips,
`415 F.3d at 1312–17). However, in construing the claims, care should be
`taken to avoid improperly importing a limitation from the specification into
`the claims. See Cont’l Circuits LLC v. Intel Corp., 915 F.3d 788, 797–98
`(Fed. Cir. 2019) (“[U]se of the phrase ‘present invention’ or ‘this invention’
`is not always . . . limiting, such as where . . . other portions of the intrinsic
`evidence do not support applying the limitation to the entire patent.”
`(citations omitted)). An inventor may provide a meaning for a term that is
`different from its ordinary meaning by defining the term in the specification
`with reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d
`1475, 1480 (Fed. Cir. 1994).
`Claim terms need only be construed to the extent necessary to resolve
`the controversy. Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1361
`(Fed. Cir. 2011).
`
`1. claim 1: rotateable union
`Petitioner proposes to construe the claim term “rotateable union” to
`mean “a pivot between two components that provides rotating movement of
`one component about the same axis along which the pivot itself rotates.”
`Pet. 8.2 The term “rotateable union” was included in the original application
`claims and specification. Ex. 1003 ¶¶ 341, 343, 352, 378. Although not
`explicitly identified as such, we agree with Petitioner that, in the illustrative
`embodiment of the claimed invention described in the ’648 patent, the two
`“pivotal mounting point[s] 30,” illustrated in Figure 5 and described above,
`which together establish that the rotation axis of the mount, correspond to
`
`2 The record includes some instances of the United States spelling: “rotatable
`union.” E.g., Ex. 1002, 18; Ex. 1008, 56.
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`the claimed rotatable union. Pet. 8–9; see Ex. 1001, Fig. 5, 7:16–28. The
`“pivotal mounting point 30” is also referred to as merely a “pivot,” and also
`as “pivot axis 30.” Ex. 1001, code(57), 8:47. Also, in the Great Britain
`priority application, the claims were originally directed to a “pivot,” and
`subsequently amended to “rotateable union.” Ex. 1007, 3, 157.
`Therefore, we agree with Petitioner that, in the context of the
`preferred embodiments of the ’648 patent, “a person of ordinary skill in the
`art (‘POSITA’) would understand the term ‘rotateable union’ equates to a
`physical ‘pivot,’” with the caveat that two such opposing pivots are required
`to define the rotatable union. Pet. 9. However, we do not agree that it is
`necessary or helpful to construe “rotatable union” as proposed. The term
`“rotateable union” is clear in the context of the claims and specification, and
`there is no need to instead revert to calling it a “pivot,” or “pivots.”
`Moreover, the portion of the proposed construction, “the same axis along
`which the pivot itself rotates,” is confusing, because a “pivot” itself does not
`rotate, but rather establishes the axis about which something else rotates —
`in this instance the “source.” See Ex. 1001, 12:10–12 (“the rotateable union
`comprises a connection allowing rotation of the source around the mount”).
`Patent Owner urges that “the term ‘rotateable union’ should not be
`limited to a ‘pivot’ or any particular pivot.” PO Resp. 23. Patent Owner
`also argues that Petitioner’s proposed construction of “rotatable union”
`should be rejected. Id. at 26–27. As discussed above, we agree as to both of
`these points.
`
`2. rotation axis of the mount; support axis of the support
`Petitioner points out that “rotation axis of the mount” in claim 1 has
`no explicit antecedent, and proposes to resolve any uncertainty on that score
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`by construing the phrase to mean “the rotation axis of the rotateable union.”
`Pet. 12-13. Patent Owner states that it “agrees with Petitioner that ‘the
`rotation axis of the mount’ refers to the ‘axis of rotation’ in the claim
`language.” PO Resp. 21. However, Patent Owner argues that “‘rotation axis
`of the mount’ is best understood as ‘the rotation axis of the source relative to
`the mount,’” and maintains that Petitioner’s construction “does not properly
`capture the antecedent claim language.” Id.
`Literally, the “rotation axis of the mount” in the fifth limitation of
`claim 1 most closely corresponds to the “rotateable union having a [sic] an
`axis of rotation axis [sic]” of the fourth limitation, which, after removing
`obvious errors, reads “rotateable union having an axis of rotation.”3 Ex.
`1001, 9:60–61. Thus, we agree with Petitioner’s interpretation, and we
`adopt it for purposes of this decision. Although Patent Owner is correct that
`the mount rotates about the rotation axis, the claim specifically states that it
`is the “rotatable union” that has an “axis of rotation.” Ex. 1001, 9:60–61.
`Petitioner’s construction more directly corresponds to the structure of the
`claim — that the “rotation axis of the mount” is the “rotation axis of the
`rotateable union.”
`In addition, we note that the claimed “support axis of the support” in
`the fifth limitation of claim 1 refers to the “axis coincident with the centre of
`the ring” in the third limitation. Ex. 1001, 9:58–59. Petitioner does not
`
`
`3 See Novo Industries, L.P. v. Micro Molds Corp., 350 F.3d 1348, 1357 (Fed.
`Cir. 2003) (correct on of errors in a claim is permitted if (1) the correction is
`not subject to reasonable debate based on consideration of the claim
`language and the specification and (2) the prosecution history does not
`suggest a different interpretation of the claims); Fitbit, Inc. v. Valencell, Inc.,
`964 F.3d 1112, 1119–20 (Fed. Cir. 2020) (re Board’s ability to correct
`certain errors).
`
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`address this issue, and Patent Owner agrees with our interpretation. PO
`Resp. 21.
`In sum, there are two axes required by claim 1: a rotation axis and a
`support axis. Examples of those axes are illustrated in the annotated figure
`reproduced above at page 3. The rotation axis is referred to in the claim
`language: “rotateable union having a [sic] an axis of rotation axis [sic],” and
`“the rotation axis of the mount” (emphasis supplied). The radiation source
`rotates about the rotation axis. The support axis is referred to in the claim
`language: “an axis coincident with the centre of the ring,” and “the support
`axis of the support” (emphasis supplied). The ring-shaped support rotates
`about the support axis. See Ex. 1001, Fig. 1, 9:55–67.
`
`3. ring-shaped support
`Although not specifically raised as a claim construction issue, the
`meaning of “ring-shaped support” in the claims is at issue, in connection
`with the fifth ground asserted by Petitioner. Pet. 53. In particular, the
`question arises as to whether a “C-shaped,” or semicircular, structure is ring-
`shaped. Id. We conclude it is not: a ring-shaped support must encompass a
`full, 360-degree circle, in accord with the plain meaning of “ring.” Patent
`Owner agrees with this interpretation. PO Resp. 21–22. Our interpretation
`is confirmed by the fact that the ’648 patent specifically distinguishes
`between the ring-shaped support of the illustrative embodiment versus the
`prior art that uses a “C-arm” or “U-arm” described in the background of the
`invention:
`
`Nakagawa et al [Ex. 2003] . . . proposes a system . . . in
`which some flexibility of movement is sacrificed in favour of
`greater accuracy. The linear accelerator is mounted on one end
`of a C-arm, which is (in turn) held in a rotateable support. The
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`C-arm can move on its support; thus at its two extremities of mo-
`tion it resembles more a U-arm or an inverted U. . . . [A]s the C-
`arm moves, the centre of gravity of the apparatus will shift, caus-
`ing errors. To counteract this, Nakagawa et al require a complex
`system of retractable balance weights in order to prevent move-
`ment; this is a potential weakness in the accuracy of the
`apparatus.
`
`* * *
`[In the present invention, t]he rotation of the rotateable
`support will be eased if this part of the apparatus is circular.
`Ex. 1001, 3:18–31, 4:18–20 (emphasis added).
`
`4. claim 18: rotatable union
`Unlike claim 1, independent claim 18 does not recite a “mount” that is
`“provided” by the “ring-shaped support,” and to which is “attached” a
`“radiation source.” Ex. 1001, 10:63–11:9. Rather, the claim requires a
`“ring-shaped support for the source,” where the support permits “rotation
`about two axes,” the source rotates “about the two axes,” and the “rotation
`takes place via a rotateable union of the source to the support.” We do not
`understand by this that the claim requires a rotateable union that permits
`rotation about two axes. We construe claim 18 as requiring a rotateable
`union to permit rotation about one axis, with no explicit requirement as to
`how the support permits rotation about the second axis. Patent Owner
`agrees with this interpretation. PO Resp. 27–28. Petitioner does not address
`this issue.
`
`D. Objective Indicia of Non-Obviousness
`Patent Owner submits e