`571-272-7822
`
`Paper 18
`Date: August 24, 2020
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`NANOCELLECT BIOMEDICAL, INC.,
`Petitioner,
`v.
`CYTONOME/ST, LLC,
`Patent Owner.
`
`IPR2020-00545
`Patent 6,877,528 B2
`
`Before LYNNE H. BROWNE, JO-ANNE M. KOKOSKI, and
`JAMES A. WORTH, Administrative Patent Judges.
`
`BROWNE, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314, 37 C.F.R. § 42.4
`
`
`
`
`
`
`
`
`
`INTRODUCTION
`I.
`A. Background and Summary
`On February 10, 2020, NanoCellect Biomedical, Inc. (“Petitioner”)
`filed a Petition requesting inter partes review of claims 18–24 of U.S. Patent
`No. 6,877,528 B2 (Ex. 1001, “the ’528 patent”). Paper 2 (“Pet.”). On June
`1, 2020, Cytonome/ST, LLC (“Patent Owner”) filed a Preliminary Response.
`Paper 8 (“Prelim. Resp.”). With authorization, on June 19, 2020, Petitioner
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`Patent 6,877,528 B2
`filed a Preliminary Reply (Paper 9, “Prelim. Reply”) and on June 26, 2020,
`Patent Owner filed a Preliminary Sur-Reply (Paper 10, “Prelim. Sur-
`Reply”). Also with authorization, on July 17, 2020, Petitioner filed
`Preliminary Supplemental Briefing (Paper 14, “Prelim. Supp. Br.”) and on
`July 22, 2202, Patent Owner to filed a Response to Petitioner’s Preliminary
`Supplemental Briefing (Paper 15, “Prelim. Supp. Resp.”).
`Having considered the arguments and evidence of record, for the
`reasons explained below, we deny institution of inter partes review.
`B. Real Parties in Interest
`Petitioner indicates that it is the real-party-in-interest. Pet. 2. Patent
`Owner indicates that it and Inguran, LLC are the real-parties-in-interest.
`Paper 4, 2.
`C. Related Matters
`The parties identify the following matters related to the ’528 patent:
`Cytonome/ST, LLC v. NanoCellect Biomedical, Inc., No. 1:19-cv-
`00301-UNA (D. Del.) (the “parallel proceeding);
`Inter partes review of US 8,623,295 B2 (IPR2020-00548);
`Inter partes review of US 9,011,797 B2 (IPR2020-00550);
`Inter partes review of US 9,339,850 B2 (IPR2020-00546);
`Inter partes review of US 10,029,263 B2 (IPR2020-00549)
`Inter partes review of US 10,029,283 B2 (IPR2020-00547); and
`Inter partes review of US 10,065,188 B2 (IPR2020-00551).
`Pet. 3, Paper 4, 1–2.
`D. The ’528 Patent
`The ’528 patent “relates to microscale fluid handling devices and
`systems. More particularly, the present invention relates to a method and
`system for controlling liquid flow in a microchannel by the introduction of a
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`gas bubble to a microfluidic system.” Ex. 1001, 1:16–21. Figure 16,
`reproduced below, shows the sorting apparatus.
`
`
`
`Figure 1 is a schematic view of “a particle sorting system that
`implements a bubble valve . . . to produce fluid impulses to sort particles.”
`Ex. 1001, 5:43–45. As shown in Figure 16, “particle sorter 160 comprises a
`closed channel system of capillary size for sorting particles, such as cells”
`including “first supply duct 162 for introducing a stream of particles and []
`second supply duct 164 for supplying a carrier liquid.” Id. at 11:51–55.
`“[F]irst supply duct 162 ends in a nozzle, and a stream of particles is
`introduced into the flow of carrier liquid.” Id. at 11:55–57. “[F]irst supply
`duct 162 and the second supply duct 164 enter a measurement duct 166,
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`which branches into a first branch 172a and a second branch 172b at a
`branch point 171.” Id. at 11:57–60. “[M]easurement region 182a is defined
`in the measurement duct 166 and is associated with a detector 182b to sense
`a predetermined characteristic of particles in the measurement region 182a.”
`Id. at 11:60–63. “Two opposed bubble valves 10a and 10b are positioned in
`communication with the measurement duct 166 and are spaced opposite
`each other.” Id. at 11:63–66. “The bubble valves 10a, 10b communicate
`with the measurement duct 166 through a pair of opposed side passages
`174a and 174b, respectively.” Id. at 11:66–12:1. “An external actuator 176
`is also provided for actuating the bubble valves 10a, 10b, which
`momentarily causes a flow disturbance in the duct to deflect the flow therein
`when activated by the actuator 176.” Id. at 12:3–6.
`This system can distinguish between normal particles 180a and
`particles of interest 180b. Ex. 1001, 12:7–9. When detector 182b senses a
`predetermined characteristic in the particles in measurement region 182a, it
`raises a signal. Id. at 12:12–14. When external actuator 176 receives this
`signal it activates bubble valves 10a, 10b to create a flow disturbance in
`measurement duct 166. Id. at 12:14–16. The flow disturbance deflects the
`particle having the predetermined characteristic so that it flows down first
`branch 172a. Id. at 12:16–20. Actuator 176 creates the flow disturbance by
`causing pressure variations in reservoir 70 of first bubble valve 10a. Id.
`at 12:22–25. Reservoir 70b of second bubble valve 10b is a chamber with a
`resilient wall or contains compressible gas to allow the flow of liquid from
`measurement duct 166 into second side passage 174b. Id. at 12:30–34.
`“Upon activation of the actuator, the pressure within the reservoir of the first
`bubble valve 10a is increased, causing a transient discharge of liquid from
`the first side passage 174a as indicated by the arrow.” Id. at 12:37–41. “The
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`Patent 6,877,528 B2
`sudden pressure increase caused at this point in the duct causes liquid to
`flow into the second side passage 174b because of the resilient properties of
`the reservoir of the second bubble valve 10b.” Id. at 12:41–44.
`E. Illustrative Claim
`Petitioner challenges claims 18–24 of the ’528 patent. Pet. 1. Claims
`18 and 22 are independent claims. Claim 18, reproduced below, is
`illustrative of the claimed subject matter, and is reproduced below.
`18. A microfluidic device, comprising:
`a channel for conveying a stream of particles in a carrier
`
`fluid;
`
`an actuator for selectively applying a pressure pulse to
`the stream to deflect a particle in the stream of particles from
`the stream of particles, and
`a buffer for absorbing the pressure pulse.
`F. Prior Art and Asserted Grounds
`Petitioner asserts that claims 18–24 would have been unpatentable
`based on the following grounds:
`Reference(s)/Basis
`Claim(s) Challenged
`35 U.S.C. §
`Wada1
`18–22
`103(a)
`Wada, Anderson2
`23, 24
`103(a)
`Marcus,3 Anderson
`18–24
`103(a)
`Petitioner also relies on a Declaration of Bernhard H. Weigl, Ph. D.
`Ex. 1002.
`
`II. ANALYSIS
`A. Discretion Under 35 U.S.C. § 314(a)
`Patent Owner contends that we should exercise discretion under
`35 U.S.C. § 314(a) to deny institution in the instant proceeding. Prelim.
`
`
`1 WO 00/070080, published November 23, 2000 (Ex. 1006, “Wada”).
`2 WO 97/002357, published January 23, 1997 (Ex. 1012, “Anderson”).
`3 US 5,101,978, issued April 7, 1992 (Ex. 1005, “Marcus”).
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`Resp. 14. Petitioner disagrees. Prelim. Reply 1. Because —based on the
`merits for the reasons discussed below— we deny institution, we do not
`address exercise of discretion under § 314(a).
`B. Claim Construction
`For petitions filed on or after November 13, 2018, 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), including
`construing the claim in accordance with the ordinary and customary
`meaning of such claim as understood by one of ordinary skill in the art and
`the prosecution history pertaining to the patent. 37 C.F.R. § 42.100(b)
`(2019). The Petition was filed February 10, 2020. Thus, we apply the claim
`construction standard as set forth in Phillips v. AWH Corp., 415 F.3d 1303
`(Fed. Cir. 2005) (en banc).
`Accordingly, claim terms are generally given their ordinary and
`customary meaning as would have been 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 1312–1317.
`Only those claim terms that are in controversy need to be construed, and
`only to the extent necessary to resolve the controversy. Nidec Motor Corp.
`v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir.
`2017).
`Petitioner asserts that it “does not believe any express claim
`constructions are required for the Board to conclude the asserted prior art
`renders the challenged claims unpatentable.” Pet. 11. Patent Owner asserts
`that the terms “pressure pulse” and “buffer” should be construed. Prelim.
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`Patent 6,877,528 B2
`Resp. 30. We agree with Patent Owner that construction of the claims terms
`“pressure pulse” and “buffer” is necessary to resolve the controversy. We
`address each term in turn.
`1. Pressure Pulse
`Noting that “[t]he district court rejected Petitioner’s proposed
`construction of ‘pressure pulse’ [in the parallel proceeding]—namely, ‘a
`unidirectional flow to the [microchannel/supply duct]’—and will apply the
`term’s ‘plain and ordinary meaning,’” Patent Owner contends that “the
`Board should also apply the plain and ordinary meaning, which is ‘a
`transient increase in pressure.’” Prelim. Resp. 30–31 (citing Ex. 2012, 6–7).
`Patent Owner contends further that “in light of surrounding claim language,
`the Board should find that the claimed ‘pressure pulse’ must travel across
`the “duct” to be ‘absorb[ed]’ by the ‘buffer’ as claimed.” Id. at 31.
`In reply, Petitioner argues that “[a]fter prevailing in arguing the terms
`should be given their plain meaning, [Patent Owner] now attempts to rewrite
`them to categorically exclude pressure pulses generated using hydrodynamic
`flow.” Prelim. Reply. 3. Petitioner asserts that Patent Owner’s proposed
`definition would require “that the flow stream (as opposed to the pressure
`pulse it generates) cross the entire channel and enter the buffer/reservoir, and
`to require increasing the pressure within the channel instead of simply
`propagating a pulse of pressure (i.e., transient application of force).” Id.
`We agree with the district court in the parallel proceeding that for the
`claim term “pressure pulse,” the plain and ordinary meaning applies.
`Ex. 2012, 5. We also agree with Patent Owner that the plain and ordinary
`meaning of “pressure pulse” is “a transient increase in pressure,” because
`this meaning is consistent with the use of this term in the Specification of
`the ’528 patent. Prelim. Resp. 31; Ex. 1001, 4:38–41. We do not agree with
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`Patent 6,877,528 B2
`Petitioner that Patent Owner’s discussion of the context in which this claim
`term is used in any way changes this definition, because Patent Owner’s
`assertions do not require the flow stream to cross the channel as argued by
`Petitioner. Prelim. Reply 3. Accordingly, for purposes of this Decision and
`based on the record before us, we construe the claim term “pressure pulse”
`to mean a transient increase in pressure.
`2. Buffer
`In the Markman Order in the parallel proceeding, the district court
`defined ‘“buffer’ to mean ‘a reservoir of fluid that absorbs a pressure
`pulse.’” Ex. 2012, 4. Petitioner asserts that we need not construe this term.
`Pet. 11. Patent Owner agrees, then asserts that “in light of Petitioner’s
`arguments, the Board should confirm that the prior art must disclose the
`‘functional’ language associated with ‘buffer,’ namely that it must be ‘for
`absorbing the pressure pulse.’” Prelim. Resp. 34.
`Based on the current record, we determine that is necessary to
`construe the claim term “buffer” in order to resolve the present controversy.
`The term “buffer” does not appear in the Specification of the ‘528 patent,
`making its first appearance in claim 15, which is not challenged in this
`proceeding. We adopt the district court’s definition because, as the district
`court explains, it is consistent with the prosecution history. Ex. 2012, 3.
`Thus, for purposes of this Decision, we construe “buffer” to mean a
`reservoir of fluid that absorbs a pressure pulse.
`C. Ground 1: Claims 18–22 as Unpatentable Over Wada
`Petitioner contends that claims 18–22 are unpatentable over Wada.
`Pet. 20. Petitioner provides supporting evidence, and relies on testimony
`from its declarant, Dr. Weigl, in support of this contention. Id. at 20–46; Ex.
`1002. Patent Owner disagrees, provides supporting evidence, and relies on
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`testimony from its declarant, Don W. Arnold, Ph.D. (Ex. 2001), in support
`of its position. Prelim. Resp. 48–66; Ex. 2001. Before we discuss the merits
`of this challenge, we provide a brief overview of Wada.
`1. Wada
`Wada relates to “[m]ethods and systems for particle focusing to
`increase assay throughput in microscale systems . . . The invention includes
`methods for providing substantially uniform flow velocity to flowing
`particles in microfluidic devices.” Ex. 1006, code 57. Figure 22,
`reproduced below, illustrates one of the embodiments relied upon in this
`challenge. We discuss Figure 22 because it best illustrates the features
`discussed in our analysis in Section II.C.4 below.
`
`
`Figure 22 is “a schematic representation of a particle sorting
`configuration utilizing sets of opposing microchannels to focus and/or
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`Patent 6,877,528 B2
`otherwise direct the flow of the members of, e.g., a cell population to
`achieve cell sorting.” Ex. 1006, 11:3–5. In this schematic, a main
`microchannel extends from the bottom of the figure upwards. Cells 2200
`flow into the main microchannel from below. The main microchannel splits
`into two microchannels near the top of the figure. Each of these
`microchannels terminate in a collection well 2210. Id. at 20:2. Four side
`microchannels intersect the main microchannel (two on each side) forming
`two pairs of microchannels, one above the other, that intersect the main
`microchannel directly opposite each other. A detector 2204 is located below
`the intersection of the top pair of side microchannels with the main
`microchannel. As shown, the bottom pair of microchannels simultaneously
`introduce hydrodynamic flow 2202 to the main microchannel. Id. at 19:27–
`29. Hydrodynamic flow is also introduced from the top right side
`microchannel. Id. at 19:29–31. Hydrodynamic flow 2202 directs selected
`cells to one particle well and non-selected cells to the other. Id. at 19:29–
`20:2.
`2. Petitioner’s Allegations
`Petitioner addresses each limitation of claims 18–22, explaining how
`Wada discloses or suggests the limitations of these claims. Pet. 20–46. For
`the limitation requiring “a buffer for absorbing the pressure pulse” in claim
`18, Petitioner provides annotated copies of Wada’s Figures 22 and 23,
`reproduced below:
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`Ex. 1006, 15:1; Pet. 30. Figure 23, as annotated by Petitioner, differs from
`the copy of Wada’s Figure 23 reproduced in Section II.C.1 above in that the
`top right side microchannel is highlighted in yellow and labeled “Buffer.” In
`annotated Figure 22 the top left side microchannel is also highlighted in
`yellow and labeled “Buffer.”
`Petitioner asserts that Wada discloses “microfluidic devices [that]
`comprise a buffer for absorbing the pressure pulse.” Pet. 29 (citing Ex. 1002
`¶¶ 133–142; Pet. 14–19). Specifically, Petitioner asserts that “Wada[’s]
`Figures 22-23 depict a buffer in the form of a non-actuated, opposing
`microchannel structure disposed opposite the actuated sorting microchannel
`structure (from which the actuator selectively applies the pressure pulse
`represented by arrows 2202 and 2302).” Id. at 29–30 (citing Ex. 1006,
`19:23–20:20; Ex. 1002, ¶¶ 133–134). According to Petitioner, a person of
`ordinary skill in the art “would have understood the non-actuated, opposed
`sorting microchannel structure contains a fluid and receives and absorbs the
`pressure pulse,” because, as explained by Dr. Weigl, “the opening in the
`main flow channel leading to the buffer is aligned with the direction of the
`pressure pulse (substantially perpendicular to the main microchannel) so that
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`the pressure pulse is allowed to flow into the opening and be absorbed by the
`buffer.” Id. at 31 (citing Ex. 1002 ¶¶ 134–136).
`For the similar limitation in claim 22 requiring “a buffer in
`communication with the second side channel for absorbing the pressure
`pulse,” Petitioner makes similar assertions. Ex. 1006, 16–17; Pet. 44–45.
`3. Patent Owner’s Response
`Patent Owner contends that “[b]ecause there is no ‘pressure pulse’
`disclosed in Wada, there is no ‘buffer for absorbing the pressure pulse’ as
`recited in the challenged claims.” Prelim. Resp. 58. According to Patent
`Owner, “[r]egarding the ‘opposing microchannels,’ they do not ‘absorb’
`anything—they are described as useful solely for introducing ‘hydrodynamic
`flow,’” because “Wada explains that, in Figure 22, ‘[a] second set of
`opposing microchannels is typically located downstream from detector 2204
`for introducing at least one hydrodynamic flow 2202 so as to direct selected
`cells 2208 . . . [into] collection wells 2210.’” Id. at 59–60 (citing Ex. 1006,
`19:29–20:2, 20:8–13). In other words, Patent Owner explains, “when two
`downstream side channels are employed, both are used to introduce flow.”
`Id. at 60 (citing Ex. 1006, Fig. 22; Ex. 2001 ¶¶ 120–123). Patent Owner
`asserts further that “[t]his is entirely consistent with Wada’s reliance on
`Ramsey to teach the sorting operation of Figures 22–23, wherein one of the
`two side channels increases flow, but fluid from the second side channel
`nonetheless continues flowing into the transport channel.” Id. at 60–61
`(citing Ex. 2014, Figs. 16–17 (as annotated in Prelim. Resp. 61), 7:24–50).
`Thus, Patent Owner asserts that “fluid is never received by either side
`channel.” Id. at 61 (citing Ex. 2001 ¶¶ 124–126).
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`4. Analysis
`We agree with Patent Owner that Wada does not disclose a buffer as
`required by the challenged claims. Figure 224 of Wada depicts top and
`bottom pairs of opposing microchannels that introduce hydrodynamic flow
`into the main microchannel. Ex. 1006, 19:27– 20:2. Specifically, Wada
`states that “[o]ne set of opposing microchannels is typically located, e.g.,
`upstream from detector 2204 for simultaneously introducing hydrodynamic
`flow 2202 from both microchannels to focus cells 2200.” Id. at 19:27–29.
`Wada also states that “[a] second set of opposing microchannels is typically
`located downstream from detector 2204 for introducing at least one
`hydrodynamic flow 2202 so as to direct selected cells 2208 . . . and non-
`selected cells 2206 into, in this case, one of two microchannels, each
`terminating in particular collection wells 2210.” Id. at 19:29–20:2. Wada
`does not indicate that any of the side microchannels is a buffer or describe
`them in such a way that a person of ordinary skill in the art would consider
`them to be “a reservoir of fluid that absorbs a pressure pulse” in accordance
`with the meaning of the term reservoir. On the record before us, we see no
`indication that a reservoir is used in Wada’s system, and we are not
`persuaded that use of such a reservoir would have been obvious to one of
`ordinary skill in the art at the time of the invention.
`For these reasons, Petitioner fails to establish a reasonable likelihood
`that it would prevail with respect to this challenge.
`
`
`4 As above, we discuss Figure 22 because it best describes the features at
`issue. We note that for the features relied upon in Wada, there are no
`substantive differences between Wada’s Figures 22–24.
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`D. Ground Two: Claims 23 and 24 as Unpatentable Over Wada and
`Anderson
`Petitioner contends that claims 23 and 24 are unpatentable over the
`combined teachings of Wada and Anderson. Pet. 46. Petitioner provides
`supporting evidence and testimony from Dr. Weigl in support of this
`contention. Id. at 46–52; Ex. 1002. Patent Owner disagrees, and also
`provides supporting evidence and testimony from Dr. Arnold in support of
`its position. Id. Before we discuss the merits of this challenge, we provide a
`brief overview of Anderson.
`1. Anderson
`Anderson relates to “a miniaturized integrated nucleic acid diagnostic
`device and system (522). The device (522) of the invention is generally
`capable of performing one or more sample acquisition and preparation
`operations in combination with one or more sample analysis operations.”
`Ex. 1012, code (57). Anderson’s system utilizes an inlet/outlet valve
`structure to seal its reaction chamber as shown in Figure 2B reproduced
`below:
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`Figure 2B is a schematic representation of a reaction chamber design
`in cut-away view. Id. at 6:22–23. The reaction chamber includes polymeric
`part 102 having a well 104 manufactured into its surface. Id. at 36:37–37:1.
`It also has one or more fluid channels 110, 120 connecting it to an
`inlet/outlet port 108. Id. at 37:9–11. Diaphragm valve 114 attached to
`planar member 112 extends across inlet 108. Id. at 38:17–19. Anderson
`explains that deflection of diaphragm valve 114 may be carried out by a
`variety of methods including application of a vacuum or electromagnetic
`actuators and/or piezoelectric actuators coupled to it. Id. at 38:23–27.
`2. Petitioner’s Allegations
`a. Claim 23
`Petitioner asserts that “Wada renders claim 22 obvious” as discussed
`in Ground 1 above. Pet. 50. Petitioner asserts that “Wada references
`Anderson, which provides more details of actuators and micropumps
`suitable for use in microfluidic devices.” Id. (citing Ex. 1002 ¶ 180).
`Petitioner asserts that Anderson was specifically referenced and incorporated
`in Wada. Id. at 51. Petitioner asserts that “Anderson teaches ‘[p]umping
`devices that are particularly useful in a variety of micromachined pumps,’
`including those with ‘a bulging diaphragm.’” Id. (citing Ex, 1012, 63:1-13;
`Ex. 1002 ¶ 181). Petitioner asserts further that “[b]ased on these disclosures,
`a [person of ordinary skill in the art] would have recognized that Anderson
`teaches the use of an actuator comprising a flexible membrane (e.g.,
`diaphragm).” Id. at 50–51 (citing Ex. 1002 ¶¶ 181–82).
`b. Claim 24
`Petitioner asserts that “Wada renders claim 22 obvious” and that
`“Wada also discloses the microfluidic device wherein the buffer comprises a
`flexible membrane.” Pet. 51 (citing Ex. 1002 ¶¶ 184–188; Pet. 14–18).
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`Petitioner also asserts that, “[a]s discussed for claim 23, Anderson teaches
`the use of an actuator comprising a flexible membrane.” Id. (citing Ex. 1002
`¶ 185). As an example, Petitioner asserts that “Anderson discloses using a
`piezoelectrically-actuated diaphragm pump ‘as one surface of the chamber’
`in microfluidic device.” Id. (citing Ex. 1012, 45:3–12; 20:9–17).
`Noting that “in claim 22, the buffer absorbs the pressure pulse,”
`Petitioner contends that a person of ordinary skill in the art “would have
`appreciated that the diaphragm pump of Anderson comprises a flexible
`membrane that absorbs the pressure pulse.” Id. (citing Ex. 1002 ¶ 186).
`Petitioner asserts further that a person of ordinary skill in the art “would
`have had good reasons to, and a reasonable expectation of success in, using a
`diaphragm pump comprising a flexible membrane as a buffer in the
`microfluidic device of claim 22.” Id. at 52 (citing Ex. 1002 ¶ 186).
`3. Patent Owner’s Response
`Patent Owner contends that “because independent claim 22 is not
`anticipated or rendered obvious by Wada, it is unnecessary to address
`whether Anderson discloses the ‘flexible membrane’ recited in dependent
`claims 23 and 24.” Prelim. Resp. 66.
`4. Analysis
`We agree with Patent Owner that Anderson does not cure the
`deficiencies in Wada discussed in Section II.C above, because Petitioner
`does not rely on Anderson to meet the limitations pertaining to a “buffer.”
`See Pet. 46–52. Thus, for the same reasons discussed in Section II.C above,
`we determine that Petitioner fails to establish a reasonable likelihood that it
`would prevail with respect to this challenge.
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`E. Ground Three: Claims 18–24 as Unpatentable Over Marcus and
`Anderson
`Petitioner contends that claims 18–24 are unpatentable over the
`combined teachings of Marcus and Anderson. Pet. 52. Petitioner provides
`supporting evidence and testimony from Dr. Weigl in support of this
`contention. Id. at 52–76; Ex. 1002. Patent Owner disagrees, and provides
`supporting evidence and testimony from Dr. Arnold in support of its
`position. Id. at 67–74; Ex. 2001. Before we discuss the merits of this
`challenge, we provide a brief overview of Marcus.
`1. Marcus
`Marcus “relates to a fluidic sorting device for the separation of two or
`more different materials or particles which are suspended in a fluid.”
`Ex. 1005, 1:13–15. Marcus’ device is illustrated in Figure 1 reproduced
`below:
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`Figure 1 is “a schematic diagram of a fluidic sorting device.”
`Ex. 1005, 3:21–22. It shows fluidic logic element 1 extending from left to
`right having input flow port 2 at one end and control ports 3, 4 located about
`half way between the left and right ends. Id. at 3:30–34. At the right end of
`fluidic logic element 1, it splits into two output ports 5, 6. Id. at 3:33–36.
`Two types of particles 7, 8 flow through fluidic logic element 1. Id. at 3:47.
`Particles 7 are sorted into output 7 and particles 8 are sorted into output 5.
`Id. at 3:61–62. At a point just downstream from input flow port 2, a
`machine vision apparatus is connected to fluidic logic element 1. Id. at
`3:36–38. Machine vision apparatus 16 includes camera lens 9, image
`capture device 10, image interpretation device 11, and decision control
`device 12. Id. at 3:38–41. Machine vision apparatus 16 may also include
`counter device 13. Id. at 3:41–43.
`In operation, a suspension containing particles 7 and 8 “is forced
`through input flow port 2.” Id. at 3:49–51. Machine vision camera lens 9
`reads the appearance of particles 7 and 8 and transmits what is read to image
`capture device 10. Id. at 3:52–54. Image capture device 10 forwards what it
`sees to image interpretation device 11 which interprets and registers a
`distinction between particles 7 and 8. Id. at 3:54–57. This distinction is then
`transmitted to control decision device 12 which signals fluidic controller
`device 14 to instruct control ports 3, 4 to separate out particles 7 and 8 by
`sorting them into output ports 5 and 6. Id. at 57–62.
`2. Petitioner’s Allegations
`Petitioner contends that Marcus and Anderson disclose or suggest all
`of the limitations of claims 18–24. Pet. 52–76. For the limitation in claim
`18 requiring “a buffer for absorbing the pressure pulse,” Petitioner contends
`that “Marcus teaches a buffer for absorbing the pressure pulse.” Id. at 59
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`Patent 6,877,528 B2
`(citing Ex. 1002 ¶¶ 212–219; Pet. 14–18); Ex. 1001, 15:21. As an example,
`Petitioner asserts that “Marcus Figure 1 teaches a buffer in the form of the
`non-actuated sorting microchannel structure (e.g., fluid control port 3 when
`selected particle is deflected into outlet port 5) disposed opposite the
`actuated sorting microchannel structure (e.g., fluid control port 4).” Id.
`(citing Ex. 1005, 3:28–62; Ex. 1002 ¶¶ 212–213). Petitioner asserts that
`“[b]ased on the teachings of Marcus and Anderson, a [person of ordinary
`skill in the art] would recognize that the pressure pulse flows from only one
`of the opposed sorting microchannel structures (e.g., fluidic control port 4)
`and toward the non-actuated, opposed sorting microchannel structure (e.g.,
`fluidic control port 3).” Id. (citing Ex. 1002 ¶ 213). Petitioner asserts
`further that “[t]he non-actuated, opposed sorting microchannel structure in
`Figure 1 contains a fluid, and is configured to receive and absorb the
`pressure pulse because it is aligned with the direction of the pressure pulse
`(substantially perpendicular to the main microchannel). Id.
`3. Patent Owner’s Response
`Patent Owner responds that “Marcus and Anderson fail to disclose the
`claimed ‘pressure pulse’ and ‘buffer’ limitations recited in independent
`claims 18 and 22.” Prelim. Resp. 67. Patent Owner asserts that “Marcus’s
`very limited disclosure describes only dual-actuated control ports to sort
`particles, which teaches away from using the ports as an actuator that
`dispatches a pressure pulse and a buffer that absorbs it.” Id. Patent Owner
`asserts further that “Anderson does not supply the missing limitations or
`reasons to combine because it discloses only fluid supply pumps that deliver
`a sample through a transport channel.” Id.
`Specifically, regarding the buffer Patent Owner asserts that Marcus
`explains that “both control ports 3 and 4 are actuated by fluidic controller
`
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`device 14 and thus are not passive ‘buffers’ that absorb a pressure pulse.”
`Id. at 70. Patent Owner asserts further that “Marcus explains that particle
`characteristics are ‘transmitted to a control decision device 12 which signals
`a fluidic controller device 14 to instruct control ports A and B, 4 and 3
`respectively, to separate out said particles 7 and 8.’” Id. (citing Ex. 1005,
`3:57–61). According to Patent Owner, “the mere fact that two control ports
`are ‘aligned’ with one another does not mean one of them ‘absorbs’ fluid or
`pressure.” Id. at 70–71 (citing Ex. 2001 ¶ 156; Prelim. Resp. 58–63).
`4. Analysis
`We agree with Patent Owner that Marcus does not disclose a buffer as
`claimed, and Anderson does not cure this deficiency in Marcus. Marcus
`discloses fluidic logic element 1 having opposing control ports 3, 4.
`Ex. 1005, 3:33–34. In Marcus, fluidic control device 14 is instructed to
`control these valves (i.e. open and close them) to separate out particles 7 and
`8. Id. at 3:59–61. Marcus does not disclose or suggest that control ports 3, 4
`are buffers. Anderson does not cure this deficiency in Marcus because
`Petitioner does not rely on Anderson to meet the limitations pertaining to a
`“buffer.” See Pet. 52–76.
`For this reason, we determine that Petitioner fails to establish a
`reasonable likelihood that it would prevail with respect to this challenge.
`III. CONCLUSION
`Based on the arguments and evidence of record, we determine that
`Petitioner has not established a reasonable likelihood that it would prevail in
`showing that claims 18–24 of the ’528 patent are unpatentable.
`IV. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that the Petition is denied, and no trial is instituted.
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`
`FOR PETITIONER:
`
`Michael T. Rosato
`mrosato@wsgr.com
`
`Lora Green
`lgreen@wsgr.com
`
`Douglas Carsten
`jmills@wsgr.com
`
`Jad A. Mills
`dcarsten@wsgr.com
`
`
`FOR PATENT OWNER:
`Kirt S. O’Neill
`koneill@akingump.com
`
`Daniel L. Moffett
`dmoffett@akingump.com
`
`George Andrew Rosbrook
`arosbrook@akingump.com
`
`Dorian Ojemen
`dojemen@akingump.com
`
`
`
`22
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`