Trials@uspto.gov
`571-272-7822
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`Paper 18
`Date: August 24, 2020
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`NANOCELLECT BIOMEDICAL, INC.,
`Petitioner,
`v.
`CYTONOME/ST, LLC,
`Patent Owner.
`
`IPR2020-00547
`Patent 10,029,283 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 12, 2020, Nanocellect Biomedical, Inc. (“Petitioner”)
`filed a Petition requesting inter partes review of claims 1, 2, 4–6, 9, and 11
`of U.S. Patent No. 10,029,283 B2 (Ex. 1001, “the ’283 patent”). Paper 2
`(“Pet.”). On June 1, 2020, Cytonome/ST, LLC (“Patent Owner”) filed a
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`571-272-7822
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`Paper 18
`Date: August 24, 2020
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`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`NANOCELLECT BIOMEDICAL, INC.,
`Petitioner,
`v.
`CYTONOME/ST, LLC,
`Patent Owner.
`
`IPR2020-00547
`Patent 10,029,283 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 12, 2020, Nanocellect Biomedical, Inc. (“Petitioner”)
`filed a Petition requesting inter partes review of claims 1, 2, 4–6, 9, and 11
`of U.S. Patent No. 10,029,283 B2 (Ex. 1001, “the ’283 patent”). Paper 2
`(“Pet.”). On June 1, 2020, Cytonome/ST, LLC (“Patent Owner”) filed a
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`Patent 10,029,283 B2
`Preliminary Response. Paper 8 (“Prelim. Resp.”). With authorization, on
`June 19, 2020, Petitioner 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 Supplement Briefing (Paper 14, “Prelim. Supp.
`Br.”) and on July 22, 2020, Patent Owner filed a Response to Petitioner’s
`Preliminary Supplemental Briefing (Paper 15, “Prelim. Resp. Supp. Br.”).
`Having considered the arguments and evidence of record, for the
`reasons explained below, we deny institution 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 ’283 patent:
`Cytonome/ST, LLC v. NanoCellect Biomedical, Inc., No. 1:19-cv-
`00301-UNA (D. Del.) (the “parallel proceeding);
`Inter partes review of US 6,877,528 B2 (IPR2020-00545);
`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); and
`Inter partes review of US 10,065,188 B2 (IPR2020-00551).
`Pet. 3, Paper 4, 1–2.
`D. The ’283 Patent
`The ’283 patent relates to “a method and apparatus for the sorting of
`particles in a suspension, where the input flow path of a sorting module can
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`be split into several output channels.” Ex. 1001, 1:25–28. Figure 1,
`reproduced below, shows the sorting apparatus.
`
`
`Figure 1 is “a schematic view of a particle sorting system [10] according to
`an illustrative embodiment of the invention.” Id. at 4:54–55. As shown in
`Figure 1, “particle sorting system 10 comprises a closed channel system of
`capillary size for sorting particles” including first supply duct 12 for
`introducing stream of particles 18 and second supply duct 14 for supplying
`carrier liquid. Id. at 6:2–3. First supply duct 12 forms nozzle 12a and, along
`with second supply duct 14, is in fluid communication with measurement
`duct 16. Id. at 6:6–10. Measurement duct 16 branches into first branch
`channel 22a and second branch channel 22b at branch point 21. Id. at 6:11–
`13. Measurement duct 16 includes measurement region 20 that is associated
`with detector 19. Id. at 6:13–14. System 10 also includes two opposed
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`bubble valves 100a and 100b positioned relative to measurement duct 16 in
`fluid communication therewith via opposed side passages 24a and 24b. Id.
`at 6:16–23. Actuator 26 actuates either bubble valve to cause flow
`disturbance in measurement duct 16 to deflect flow therein. Id. at 6:27–30.
`Side passage 24b is hydraulically connected to compression chamber 70b in
`bubble valve 100b and side passage 24a is hydraulically connected to buffer
`chamber 70a in bubble valve 100a. Id. at 6:34–35, 39–41.
`In operation, side passage 24b cooperates with side passage 24a to
`direct flow disturbance caused by pressurization of compression chamber
`70b such that flow displacement has a component perpendicular to normal
`flow of stream of particles 18 through measurement duct 16. Ex. 1001,
`6:42–47. Resiliency of side passage 24a results upon pressurized discharge,
`in a transient flow of liquid in measurement duct 16 into side passage 24a.
`Id. at 6:50–52. Cooperation of side passages 24a and 24b and the fluidic
`structures they interconnect causes flow through measurement duct 16 to be
`transiently moved sideways back and forth upon pressurizing and
`depressurizing compression chamber 70b induced by actuator 26 in response
`to a signal raised by detector 19. Id. at 6:53–58.
`E. Illustrative Claim
`Petitioner challenges claims 1, 2, 4–6, 9, and 11 of the ’283 patent.
`Pet. 1. Independent claim 1 —the sole independent claim challenged— is
`reproduced below.
`1. A particle sorting chip comprising:
`a duct configured to convey particles in a stream, the duct
`including an inlet and a plurality of flow-through outlet channels
`formed in a substrate;
`a first chamber formed in the substrate, the first chamber
`in fluid communication with the duct via a first side opening
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`Patent 10,029,283 B2
`and otherwise sealed, the first side opening positioned upstream
`of the plurality of flow-through outlet channels; and
`an actuator provided on the substrate and associated with
`the first chamber, the actuator configured to increase a pressure
`within the first chamber and to discharge an amount of fluid
`from the first side opening into the duct during a switching
`operation.
`F. Prior Art and Asserted Grounds
`Petitioner asserts that claims 1, 2, 4–6, 9, and 11 would have been
`unpatentable based on the following grounds:
`Reference(s)/Basis
`Claim(s) Challenged
`35 U.S.C. §
`Wada1
`1, 5, 6
`103(a)
`Wada, Anderson2
`1, 2, 4–6
`103(a)
`Wada, Anderson, Riley3
`9, 11
`103(a)
`Wada, Anderson, Bargeron4
`11
`103(a)
`Petitioner also relies on a Declaration of Bernhard H. Weigl, Ph.D.
`Ex. 1002.
`
`II. ANALYSIS
`
`A. 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.
`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).
`
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`1 WO 00/070080, published November 23, 2000 (Ex. 1006, “Wada”).
`2 WO 97/002357, published January 23, 1997 (Ex. 1012, “Anderson”).
`3 US 2002/0122167 A1, published September 5, 2002 (Ex. 1013, “Riley”).
`4 US 4,148,585, issued April 10, 1979 (Ex. 1036, “Bargeron”).
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`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 12, 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. 15. Patent Owner asserts
`that “the Board need not expressly construe any terms,” but in the same
`section of its Preliminary Response, Patent Owner contends that it will
`demonstrate that the prior art is deficient for the term “otherwise sealed.”
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`Prelim. Resp. 30. We determine that construction of the claim term
`“otherwise sealed” is necessary to resolve the controversy in this case.
`In the parallel proceeding, the district court construed the term
`“otherwise sealed” to mean “sealed in all other aspects.” Ex. 2012, 6. The
`Specification of the ’283 patent does not use this term. Ex. 1001 1:1–14:37.
`It appears for the first time in claim 1. Id. at 14:47. The Specification,
`however, uses the term “sealed” to describe compression chamber 70, which
`communicates with side passage 24a through a fluid interface port. Id. at
`10:11–14. This suggests that compression chamber 70 is sealed in all other
`aspects except for the fluid interface port. The district court’s construction
`of the term “otherwise sealed” is consistent with our understanding of the
`use of the term “sealed” as described. Accordingly, we agree with and adopt
`the district court’s construction of the term “otherwise sealed” to mean
`sealed in all other aspects.
`C. Ground 1: Claims 1, 5, and 6 as Unpatentable Over Wada
`Petitioner contends that claims 1, 5, and 6 are unpatentable over
`Wada. Pet. 25. Petitioner provides supporting evidence, and relies on
`testimony from its declarant, Dr. Weigl, in support of this contention. Id. at
`25–44; Ex. 1002. Patent Owner disagrees, provides supporting evidence,
`and relies on testimony from its declarant, Don W. Arnold, Ph.D. (Ex.
`2001), in support of its position. Prelim. Resp. 42–63; 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 24,
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`Patent 10,029,283 B2
`reproduced below, illustrates one of the embodiments relied upon in this
`challenge. We discuss Figure 24 because it is the only figure relied upon
`that was not altered by Petitioner’s annotations. Pet. 36.
`
`
`Figure 24 is “a schematic representation of a microchannel
`configuration that includes Joule heating elements for use in particle
`sorting.” Ex. 1006, 11:8–9. In this schematic, main microchannel 2402
`extends from the top of the figure downwards. Id. at 22:24–25, Fig. 24.
`Main micro 2402 channel originates at particle well 2400. Id. Focusing
`microchannel 2404 extends from the right side of Figure 24 to intersect main
`microchannel 2402 at a “T” junction approximately halfway between
`particle well 2400 and four-way junction. Id. at 22:25–27. Main
`microchannel 2402 extends past this intersection to the four-way junction,
`then splits into two bottom microchannels. Id., Fig. 24. The bottom
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`Patent 10,029,283 B2
`microchannels terminate in collection wells 2420, 2422.5 Id. at 23:14–18.
`Detector 2408 is located in main microchannel 2402 just above this junction.
`Id. at 22:25–27. Particle sorting microchannel 2418 located on the left side
`of main microchannel 2402 extends away from main microchannel 2402,
`then splits into two sub-microchannels. Id. at 23:1–3; Fig. 24. Joule heating
`electrodes 2416 are located at the ends of these sub-microchannels. Id.
`at 23:3–4; Fig. 24.
`Particles flow from particle well 2400 into main microchannel 2402.
`Ex. 1006, 22:24–25. Focusing flow stream 2406 flows from focusing
`microchannel 2404 into main microchannel 2402 to focus or pinch particles
`against the wall of main microchannel 2402 opposite the “T” junction. Id.
`at 22:25–27. Detector 2408 detects a selected particle 2410 and sends an
`electrical signal that triggers flow of current to Joule heating electrodes
`2416. Id. at 22:30–32. Heat produced by heating electrodes 2416 raises the
`temperature of a buffer or gel in particle sorting microchannel 2418, which
`reduces hydrodynamic resistance in the buffer or gel. Id. at 23:7–10.
`Reduced viscosity, in conjunction with vacuum sources that are located in
`particle collection wells 2420, 2422 induce flow of the buffer or gel from
`particle sorting microchannel 2418. Id. at 23:10–13. This induced flow
`deflects the flow of selected particle 2410 into one of the particle wells. Id.
`at 23:14–18.
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`5 The reference numeral 2024 is used to depict both flow in the left side
`microchannel and the collection well associated with the left side bottom
`microchannel. In Wada, reference numeral 2024 is only used to indicate this
`collection well. Accordingly, we understand the use of reference numeral
`2024 to depict flow in the left side microchannel to be a drafting error.
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`2. Petitioner’s Contentions
`Petitioner addresses each limitation of independent claim 1 and its
`respective dependent claims 5 and 6, explaining how Wada discloses or
`suggests the limitations. Pet. 25–44. For the limitation requiring “a first
`chamber formed in the substrate . . . in fluid communication with the duct
`via a first side opening and otherwise sealed” in claim 1, Petitioner provides
`annotated copies of Wada’s Figures 22–24, reproduced below:
`
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`Pet. 36. Figure 24, as annotated by Petitioner, differs from the copy of
`Wada’s Figure 24 reproduced in Section II.C.1 above in that the enlarged
`portion of the top branch of particle sorting microchannel 2418 where one of
`Joule heating electrode 2416 is located is labeled “First Chamber,” and this
`portion of particle sorting channel 2418 along with the narrower extent of
`microchannel 2418 extending from the enlarged portion to the point where it
`splits into two channels are highlighted in red. Also, the area where
`microchannel 2418 intersects main microchannel 2402 is highlighted in
`orange and labeled “Side Opening.” From this annotated figure, we
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`Patent 10,029,283 B2
`understand Petitioner’s position to be that the red highlighted portions
`correspond to the claimed first chamber and the orange highlighted portions
`correspond to the claimed side opening.
`
`Annotated Figures 22 and 23 of Wada differ in more than just
`highlighting and labeling from original Figures 22 and 23. Pet. 36. In
`Figure 22, Petitioner added an oval at the end of the upper right side
`microchannel, highlighted that oval in red, and labeled the oval “First
`Chamber.” Id. Petitioner added a similar oval to the left side microchannel
`in Figure 23. Id.
`Petitioner asserts that Wada discloses a first chamber formed in the
`substrate because it describes “fluid passages, chambers or conduits which
`have at least one internal cross-sectional dimension . . . that is less than
`500 um, and typically between about 0.1 um and about 500 um,” a “body
`structure of the microfluidic devices [that] typically comprises an
`aggregation of two or more layers . . . containing the channels and/or
`chambers,” and “channels and/or chambers of the microfluidic devices [that]
`are typically fabricated into the upper surface of the bottom substrate’ such
`that joining the layers of the device forms ‘channels and/or chambers (i.e.,
`the interior portion) of the device at the interface of these two components.”
`Pet. 32 (quoting Ex. 1006, 37:29–32, 38:11-17, 39–19–33; citing Ex. 1002 ¶
`147). Specifically, Petitioner asserts that Wada “discloses the microfluidic
`chip comprises a first chamber in fluid communication with the duct via a
`first side opening, the first side opening positioned upstream of the plurality
`of flow-through outlet channels.” Id. at 32–33 (citing Ex. 1002 ¶¶ 148–152).
`According to Petitioner, in Wada’s Figure 24 “particle sorting microchannel
`2418 terminat[es] in one or more wells associated with an actuator 2416.”
`Id. at 33 (citing Ex. 1006, 22:23–23:18, Fig. 24; Ex. 1002 ¶¶ 149–50).
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`Petitioner also notes that “Wada expressly discloses that the
`microchannel 2418 may be unbranched.” Pet. 33 (citing Ex. 1006, 23:1–3).
`With this disclosure in mind, Petitioner asserts that “[w]hether branched or
`unbranched, the microchannel 2418 and associated well is a chamber and a
`physical structure that contains fluid that it uses to generate a pressure flow
`2420 to deflect selected particles (e.g., cells) into a selected flow through
`outlet channel.” Id. at 33–34 (citing Ex. 1002 ¶¶ 149–152 (internal citations
`omitted)). Petitioner also asserts that Wada “teaches the first chamber (e.g.,
`particle sorting structure) being otherwise sealed.” Id. at 34 (citing Ex. 1002
`¶¶ 152–157). In support of this assertion, Petitioner notes that “Wada
`discloses forming chambers in the substrate by sealing a covering on top of
`the chip substrate over the chamber” and “Figure 24 does not depict the
`particle sorting structure being in fluid communication with anything
`external or internal to the chip other than the duct.” Id. (citing Ex. 1006,
`21:3–5, 38:11–39:33, Fig. 24; Ex. 1002 ¶ 153). Petitioner’s declarant,
`Dr. Weigl asserts that “it was routine and conventional to have a first
`chamber (a fluid direction component) that would not be open to the
`atmosphere but that would be ‘otherwise sealed’ during actuation ‘to best
`perform its stated function as a fluid direction component.’” Id.
`3. Patent Owner’s Response
`Patent Owner contends that Wada fails “to disclose a ‘first chamber’
`that is ‘otherwise sealed.’” Prelim. Resp. 51 (citing Ex. 2001 ¶ 117). In
`support of this contention, Patent Owner asserts that “[t]he ‘wells’ Petitioner
`cites as a ‘first chamber’ are described as used for supplying fluid from an
`external source, . . . ‘for facilitating fluid or material introduction into the
`interior portion of the device, as well as providing ports at which electrodes
`may be placed into contact with fluids within the device.’” Id. (citing
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`Ex. 2001 ¶ 118). Thus, according to Patent Owner, “the wells are not
`‘otherwise sealed’ . . . because they must be connected to an external
`source.” Id.
`Patent Owner asserts that “[t]his is consistent with Wada’s
`hydrodynamic flow-based sorting operation, which a [person of ordinary
`skill in the art] would have understood requires a connection to an external
`fluid supply source.” Prelim. Resp. 52 (citing Ex. 2001 ¶¶ 108, 122–25).
`Patent Owner asserts that “[u]nlike the invention—whose sorting operation
`relies on no change in flow rate—Wada’s operation requires fluid sources to
`continuously add fluid to the system via side channels.” Id. (citing Ex. 2001
`¶¶ 43–50, 122, 125).
`4. Analysis
`We agree with Patent Owner that Wada fails to disclose a first
`chamber that is otherwise sealed as claimed. Prelim. Resp. 51. Specifically,
`we agree that Petitioner fails to adequately demonstrate that the portion of
`Figs. 22–24 labeled “First Chamber” in the annotated version of these
`figures reproduced above, is otherwise sealed as required by claims 1, 5, and
`6. We do not discuss the embodiments shown in Wada’s Figures 22 and 23,
`because these figures clearly do not show such a chamber and Petitioner’s
`alterations of these figures does not change that.
`Although we agree with Petitioner that Wada’s Figure 24 shows a
`portion of particle sorting microchannel 2418 that can reasonably be
`considered to be a first chamber, we do not agree that this chamber is
`otherwise sealed as required by claims 1, 5, and 6. Even assuming that this
`chamber is not “open to the atmosphere” to allow it to “best perform its
`stated function as a fluid direction component,” Dr. Weigl’s testimony does
`not convince us that this chamber is otherwise sealed. Ex. 1002 ¶¶ 152–56,
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`208). Rather, we agree with Patent Owner’s declarant, Dr. Arnold, that this
`chamber would have to be open to a fluid source in order operate as
`described, and, thus, is not otherwise sealed. Ex. 2001 ¶¶ 117–125.
`
`For this reason, Petitioner fails to establish a reasonable likelihood
`that it would prevail with respect to this challenge.
`D. Ground II: Claims 1, 2, and 4–6 as Unpatentable Over Wada and
`Anderson
`Petitioner asserts that claims 1, 2, and 4–6 are unpatentable over the
`combined teachings of Wada and Anderson. Pet. 63. Petitioner provides
`supporting evidence and testimony from Dr. Weigl in support of this
`contention. Id. at 63–69; Ex. 1002. Patent Owner disagrees, and provides
`supporting evidence and testimony from Dr. Arnold in support of its
`position. Prelim. Resp. 63–68. 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 Challenge
`For this ground, Petitioner asserts that “Wada discloses and renders
`obvious challenged claims 1, 5, and 6 for at least the reasons set forth in
`Ground 1 above.” Pet. 44. Petitioner asserts that “Anderson provides
`additional evidence that the ‘otherwise sealed’ first chamber of claim 1 and
`the ‘otherwise sealed’ second chamber of claim 6 would have been
`obvious.” Id. Specifically, Petitioner asserts that “Anderson confirms
`micropumps that comprise an otherwise sealed chamber were used to move
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`particles through microfluidic channels. For example, Anderson discloses
`that a ‘thermopneumatic element’ or a piezo electric element may be used to
`power a micropump having a ‘bulging diaphragm.’” Id. at 48 (citing
`Ex. 1012, 63:1–13). According to Petitioner, Dr. Weigl explains that “the
`operation of a diaphragm pump as disclosed in Anderson typically demands
`that the pressure chamber be otherwise sealed.” Id. (citing Ex. 1002 ¶¶ 193–
`195). Petitioner also asserts that “Anderson teaches more generally that its
`pumping chambers are otherwise sealed to prevent the environment outside
`the chamber from influencing the chamber.” Id. at 48–49 (citing Ex. 1012,
`28:3–29, 38:1–39:4, 52:20–23).
`3. Patent Owner’s Response
`Patent Owner responds that Anderson fails to cure the deficiency in
`Wada. See Prelim. Resp. 63–66. In particular, Patent Owner argues that
`“Anderson’s ‘microfabricated pumps’ are not for sorting (like the side
`channels in Wada) but for establishing a continuous (longitudinal) flow
`through the transport channel.” Id. at 64 (citing Ex. 2001 ¶¶ 147–149).
`Thus, according to Patent Owner, a person of ordinary skill in the art “would
`not find Wada’s citation to Anderson at all relevant to Wada’s (or any)
`sorting operation.” Id. (citing Ex. 2001 ¶¶ 148–49).
`With this distinction in mind, Patent Owner asserts that “Petitioner
`fails to offer any reason why [persons of ordinary skill in the art] would need
`to look to references such as Anderson in the first place to accomplish
`sorting in light of Wada’s extensive disclosure on sorting.” Id. As an
`example, Patent Owner asserts that “Petitioner identifies no benefit to
`somehow incorporating Anderson’s micropumps in place of the Joule
`heaters and electrokinetic components already described and cited in Wada
`to accomplish sorting.” Id. at 64–65 (citing Ex. 1006 at 17:10–24:12).
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`According to Patent Owner, “Petitioner simply argues that ‘Anderson’s
`microfabricated pumps were capable of generating pressure-based fluid
`flow” and would have been “useful as [a] fluid pressure force modulator.”
`Id. at 65.
`4. Analysis
`We agree with Patent Owner that Anderson does not cure the
`deficiencies in Wada discussed in Section II.C above because Petitioner has
`not articulated sufficient reasons with rationale underpinning for the
`proposed modification. Specifically, Petitioner has not adequately explained
`why one of ordinary skill in the art would replace Wada’s Joule heating
`elements with Anderson’s micropumps. Further, we are not convinced that
`Anderson’s micropumps are “otherwise sealed.” Petitioner makes the
`assertion that they are without providing sufficient evidence that this is the
`case.
`For these reasons, we determine that Petitioner fails to establish a
`reasonable likelihood that it would prevail with respect to this challenge.
`E. Ground 3: Claims 9 and 11 as Unpatentable Over Wada, Anderson,
`and Riley, and Ground 4: Claim 11 as Unpatentable Over Wada,
`Anderson, and Bargeron
`Petitioner asserts that claims 9 and 11 are unpatentable over the
`combined teachings of Wada Anderson, and Riley, and that claim 11 is
`unpatentable over the combined teachings of Wada, Anderson, and
`Bargeron. Pet. 56, 60. Petitioner provides supporting evidence and
`testimony from Dr. Weigl in support of this contention. Id. at 56–63; Ex.
`1002. Patent Owner disagrees, and provides supporting evidence and
`testimony from Dr. Arnold in support of its position. Prelim. Resp. 68. We
`
`17
`
`
`
`IPR2020-00547
`Patent 10,029,283 B2
`do not provide a brief overview of Riley or Bargeron as a discussion of these
`references is not necessary to our analysis.
`Claims 9 and 11 depend from claim 1, and thus require a first chamber
`that is otherwise sealed as claimed in claim 1. Ex. 1001, 15:14, 16:7. As
`discussed in Sections II.C and II.D above, neither Wada nor Anderson
`disclose or suggest a first chamber that is otherwise sealed as required by
`claim 1. Petitioner does not rely on Riley or Bargeron to cure this deficiency
`in Grounds 1 and 2, and thus, Grounds 3 and 4 suffer from the same
`deficiency. Accordingly, we need not discuss Grounds 3 and 4 in detail in
`order to determine that Petitioner fails to establish a reasonable likelihood
`that it would prevail with respect to these challenges.
`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 1, 2, 4–6, 9, and 11 of the ’283 patent are unpatentable.
`IV. ORDER
`In consideration of the foregoing, it is hereby:
`ORDERED that the Petition is denied, and no trial is instituted.
`
`
`
`
`18
`
`
`
`IPR2020-00547
`Patent 10,029,283 B2
`
`
`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
`
`
`19
`
`
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