Paper 15
`Trials@uspto.gov
`Date: September 1, 2020
`571-272-7822
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`NANOCELLECT BIOMEDICAL, INC.,
`Petitioner,
`v.
`CYTONOME/ST, LLC,
`Patent Owner.
`
`IPR2020-00548
`Patent 8,623,295
`
`
`
`
`
`
`
`
`
`Before JO-ANNE M. KOKOSKI, WESLEY B. DERRICK, and
`JAMES A. WORTH, Administrative Patent Judges.
`DERRICK, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314, 37 C.F.R. § 42.4
`
`
`
`
`
`
`
`
`Trials@uspto.gov
`Date: September 1, 2020
`571-272-7822
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`NANOCELLECT BIOMEDICAL, INC.,
`Petitioner,
`v.
`CYTONOME/ST, LLC,
`Patent Owner.
`
`IPR2020-00548
`Patent 8,623,295
`
`
`
`
`
`
`
`
`
`Before JO-ANNE M. KOKOSKI, WESLEY B. DERRICK, and
`JAMES A. WORTH, Administrative Patent Judges.
`DERRICK, Administrative Patent Judge.
`
`DECISION
`Denying Institution of Inter Partes Review
`35 U.S.C. § 314, 37 C.F.R. § 42.4
`
`
`
`
`
`
`
`
`
`IPR2020-00548
`Patent 8,623,295
`
`INTRODUCTION
`Petitioner NanoCellect Biomedical, Inc., filed a Petition requesting
`inter partes review of claims 1–3, 9, 17, and 18 of U.S. Patent
`No. 8,623,295 B2 (“the ’295 patent”). Paper 2 (“Pet.”). Patent Owner
`Cytonome/ST, LLC filed a Preliminary Response. Paper 6 (“Prelim.
`Resp.”). As authorized, Petitioner also filed a Pre-Institution Reply (Paper
`7, “Reply”) and Pre-Institution Supplemental Briefing (Paper 11) and Patent
`Owner, in turn, also filed a Pre-Institution Sur-Reply (Paper 8) and a
`Response to Petitioner’s Pre-Institution Supplemental Briefing (Paper 12).
`We have authority to determine whether to institute an inter partes
`review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). We may not institute an inter
`partes review “unless . . . there is a reasonable likelihood that the petitioner
`would prevail with respect to at least 1 of the claims challenged in the
`petition.” 35 U.S.C. § 314(a). Applying that standard, for the reasons set
`forth below, we decline to institute an inter partes review because Petitioner
`has not shown a reasonable likelihood that it would prevail in establishing
`the unpatentability of any of claims 1–3, 9, 17, and 18.
`
`BACKGROUND
`A. Real Parties in Interest
`Petitioner identifies itself as the real party-in-interest. Pet. 3. Patent
`Owner identifies itself and Inguran, LLC, as the real parties-in-interest.
`Paper 4, 1.
`B. Related Matters
`The parties identify Cytonome/ST, LLC v. NanoCellect Biomedical,
`Inc., No. 1:19-cv-00301-UNA (D. Del.) as a related proceeding. Pet. 3;
`Paper 4, 1. The ’295 patent is one of a number of patents asserted in that
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`district court proceeding. Pet. 3; Paper 4, 1. Other patents asserted are also
`subject to filed inter partes review petitions, and are identified by Petitioner
`as related proceedings: IPR2020-00545 (US 6,877,528 B2); IPR2020-00546
`(US 9,339,850 B2); IPR2020-00547 (US 10,029,283 B2); IPR2020-00549
`(US 10,029,263 B2); IPR2020-00550 (US 9,011,797 B2); and IPR2020-
`00551 (US 10,065,188 B2). Pet. 3; Paper 4, 1.
`C. The ’295 Patent (Ex. 1001)
`The ’295 patent is titled “Microfluidic System Including a Bubble
`Valve for Regulating Fluid Flow Through a Microchannel,” and issued on
`January 7, 2014, from an application filed on September 26, 2011.
`Ex. 1001, at [22], [45], [54]. The ’295 patent identifies related applications,
`including a provisional application—the earliest filed—that was filed on
`April 17, 2002. Id. at [60], [63], 1:5–19.
`The ’295 patent relates to “[a] microfluidic system [that] includes a
`bubble valve for regulating fluid flow through a microchannel.” Id. at [57].
`Figure 16, reproduced below, depicts an apparatus that provides for
`regulating fluid flow in a manner that allows sorting particles. Id. at 5:40–
`42.
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`Id., Fig. 16 (depicting a schematic of a particle sorting system). As
`disclosed in the ’295 patent, “particle sorter 160 . . . for sorting particles,
`such as cells. . . . comprises a first supply duct 162 for introducing a stream
`of particles . . . a second supply duct 164 for supplying a carrier liquid . . . a
`measurement duct 166, which branches into a first branch 172a and a second
`branch 172b at branch point 171,” and “[t]wo opposed bubble valves 10a
`and 10b . . . in communication . . . with the measurement duct 166 through a
`pair of opposed side passages 174a and 174b, respectively.” Id. at 11:40–
`57, Fig. 16. In operation, and as depicted, “[l]iquid . . . partly fill[ing] these
`side passages 174a and 174b . . . form[s] a meniscus 175,” and a provided
`“external actuator 176” “actuat[es] the bubble valves 10a, 10b, . . .
`momentarily caus[ing] a flow disturbance in the duct to deflect the flow
`therein.” Id. at 11:57–61; see also Figs. 17A–17C (depicting operation of
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`Patent 8,623,295
`particle sorter 160 to sort particles flowing from left to right in the figures
`into one or the other of first branch 172a and 172b). As to the operation of
`the apparatus, the ’295 patent discloses that the external actuator increases
`pressure within one of the two opposed bubble valves causing a transient
`discharge of fluid from the associated side channel, which causes a sudden
`increase in pressure at this point in the duct, which increased pressure causes
`liquid to flow into the associated side channel of the second opposed bubble
`valves because of the resilient properties of the reservoir of the second
`bubble valve. Id. at 12:23–33.
`D. Illustrative Claim
`Claim 1—the sole independent claim—is illustrative of the claimed
`subject matter.
`1. A microfluidic system comprising:
`a microfluidic flow channel formed in a substrate and adapted
`to facilitate analysis or processing of a sample having one
`or more particles suspended in a suspension medium
`flowing through the flow channel;
`a first reservoir operatively associated with the flow channel
`and adapted for dampening or absorbing a pressure pulse
`propagated across the flow channel; and
`a second reservoir operatively associated with the flow channel
`and adapted for generating the pressure pulse based on a
`change in volume or pressure in the second reservoir;
`wherein the flow channel defines a first aperture for connecting
`the flow channel relative to the first reservoir and a second
`aperture for connecting the flow channel relative to the
`second reservoir, wherein the first aperture is substantially
`opposite the second aperture.
`Ex. 1001, 13:42–14:3.
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`E. Prior Art Relied Upon
`Petitioner relies on the references listed below (Pet. 16, 18–19):
`Reference
`Date
`Exhibit No.
`WO 00/70080 (“Wada”)
`Nov. 23, 2000
`1006
`WO 97/02357 (“Anderson”)
`Jan. 23, 1997
`1012
`US 5,101,978 (“Marcus”)
`Apr. 7, 1992
`1005
`
`The status of these references as prior art printed publications is not
`contested by Patent Owner. See generally Prelim. Resp.
`F. The Asserted Grounds of Unpatentability
`Petitioner challenges the patentability of the claims on the following
`grounds, relying on the Declaration from Bernhard H. Weigl, Ph.D.
`(Ex. 1002). Pet. 5, 20–69.
`Claim(s) Challenged
`1–3, 9, 18
`1–3, 9, 17, 18
`1–3, 9, 17, 18
`
`35 U.S.C. §
`103
`103
`103
`
`Reference(s)/Basis
`
`Wada
`Wada, Anderson
`Marcus, Anderson
`
`ANALYSIS
`A. Level of Ordinary Skill in the Art
`Petitioner contends that a person of ordinary skill in the art “would
`have had a bachelor’s or master’s degree in the field of bioengineering,
`mechanical engineering, chemical engineering, or analytical chemistry; or a
`bachelor’s or master’s degree in a related field and at least three years of
`experience in designing or developing microfluidic systems.” Pet. 14 (citing
`Ex. 1002 ¶¶ 46–49).
`Patent Owner reserves the right to dispute Petitioner’s proposed
`definition of the level of ordinary skill in the art, but applies Petitioner’s
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`proposed definition “[s]olely for purposes of [the Patent Owner Preliminary
`Response].” Prelim. Resp. 29.
`On this record, we have no reason to fault Petitioner’s definition of
`the level of ordinary skill and, therefore, adopt it for the purposes of this
`Decision. We further note that the prior art itself demonstrates the level of
`skill in the art at the time of the invention. See Okajima v. Bourdeau,
`261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that “specific findings on
`the level of skill in the art . . . [are not required] ‘where the prior art itself
`reflects an appropriate level and a need for testimony is not shown’”
`(quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158,
`163 (Fed. Cir. 1985))).
`B. Claim Construction
`We apply the claim construction standard from Phillips v. AWH
`Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). 37 C.F.R. § 42.100(b)
`(2019).
`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 1312–1317. Usually, the specification
`is dispositive, and it is the single best guide to the meaning of a disputed
`term. Id. at 1315.
`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., 868 F.3d 1013, 1017 (Fed.
`Cir. 2017); see also U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554,
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`1568 (Fed. Cir. 1997) (holding claim construction is not necessary when it is
`not “directed to, or has been shown reasonably to affect, the determination
`of obviousness”).
`Petitioner contends that no “express claim constructions are required
`for the Board to conclude the asserted prior art renders the challenged claims
`unpatentable.” Pet. 11–12. Petitioner does, however, contend that Patent
`Owner has made relevant “admissions about the meanings of claim terms in
`the asserted patents.” Id. at 12. In particular, Petitioner maintains that
`Patent Owner’s declarant in the district court proceeding has maintained
`“that the terms ‘reservoir’ and ‘chamber’ as used in the challenged claims
`. . . should be understood as a physical structure that contains fluid” (id. at
`12 (citing Ex. 1002 ¶ 43; Ex. 1042, 20; Ex. 1043 ¶¶ 25–27, 31, 34, 44–48)),
`“that the term ‘absorbing’ as used in the challenged claims . . . means to
`receive, take up, or take in the pressure pulse” (id. at 13 (citing Ex. 1043
`¶¶ 50–52; Ex. 1002 ¶ 44; Ex. 1042 1, 7–8, 18–19; Ex. 1045, 8–10, 18–20)),
`and “that the terms ‘dampen’ or ‘dampening’ . . . means to meaningfully
`dissipate so as to prevent a pressure wave from affecting the flow of the
`remaining particles in the stream of particles” (id. (citing Ex. 1043 ¶¶ 56–
`57; Ex. 1002 ¶ 45; Ex. 1042, 13–14)).
`Patent Owner contends that the terms “pressure pulse” and “first
`reservoir” should be construed. Prelim. Resp. 29. Patent Owner contends
`that that “the plain and ordinary meaning of ‘pressure pulse,’ . . . is a
`pressure increase that is inherently transient in nature” (id. at 30), and that
`“[t]he prosecution history further confirms that a ‘pressure pulse’ is a
`transient increase in pressure” (id. at 31). Patent Owner further contends
`that the ’295 patent “never suggests that [“pressure pulse”] is a ‘flow.’” Id.
`at 30 (citing Ex. 1001, 12:13–32). Patent Owner contends that “the Board
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`should confirm that the prior art must disclose the ‘functional’ language, . . .
`that [the first reservoir] must be ‘adapted for dampening or absorbing a
`pressure pulse propagated across the flow channel.’” Id. at 32.
`Petitioner responds that a “pressure pulse” is a transient increase in
`pressure and that these claim terms do not “require that the flow stream (as
`opposed to the pressure pulse it generates) cross the entire channel and enter
`the buffer/reservoir.” Reply 3.
`For the purposes of this Decision, based on the current record, we
`determine that the claim term “pressure pulse” means “a transient increase in
`pressure” because this is the plain and ordinary meaning of the term and is
`consistent with the use of this term in the ’295 patent. We further note that
`this determination is consistent with the district court’s determination that
`the claim term “pressure pulse” has its “plain and ordinary meaning.”
`Ex. 2012, 5–6.
`Turning to the claim term “reservoir,” for the purposes of this
`Decision, based on the current record, we determine that the claim term has
`its plain and ordinary meaning of “a physical structure that contains fluid,”
`but decline to reach any determination as to the nature or type of fluid as it is
`not necessary to resolve the issues here. Wellman, 642 F.3d at 1361. This
`determination is consistent with the construction adopted by the district
`court. Ex. 2012, 4–5. As to the recited reservoir being “adapted for
`dampening or absorbing a pressure pulse” (claim 1), this, and other,
`limitations are addressed to the limited extent necessary in reaching our
`Decision that Petitioner has not established a reasonable likelihood that it
`would prevail in establishing the unpatentability of at least one challenged
`claim. Wellman, 642 F.3d at 1361.
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`C. Principles of Law
`Petitioner has asserted that each of the challenged claims of
`the ’295 patent is unpatentable as obvious under 35 U.S.C. § 103. A claim is
`unpatentable under § 103 if “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 to a
`person having ordinary skill in the art to which said subject matter pertains.”
`KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). The question of
`obviousness is resolved on the basis of underlying factual determinations,
`including: (1) the scope and content of the prior art; (2) any differences
`between the claimed subject matter and the prior art; (3) the level of skill in
`the art; and (4) objective evidence of nonobviousness, i.e., secondary
`considerations. See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`“In an [inter partes review], the petitioner has the burden from the
`onset to show with particularity why the patent it challenges is
`unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed.
`Cir. 2016) (citing 35 U.S.C. § 312(a)(3) as “requiring inter partes review
`petitions to identify ‘with particularity . . . the evidence that supports the
`grounds for the challenge to each claim’”); cf. Intelligent Bio-Systems, Inc. v.
`Illumina Cambridge, Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016) (quoting
`35 U.S.C. § 312(a)(3)) (addressing “the requirement that the initial petition
`identify ‘with particularity’ the ‘evidence that supports the grounds for the
`challenge to each claim’”). This burden never shifts to Patent Owner. See
`Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378
`(Fed. Cir. 2015) (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d
`1316, 1326–27 (Fed. Cir. 2008)) (discussing the burden of proof in inter
`partes review). Furthermore, Petitioner cannot satisfy its burden of proving
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`obviousness by employing “mere conclusory statements.” In re Magnum
`Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016).
`Thus, to prevail in an inter partes review, Petitioner must explain how
`the proposed combinations and/or alterations of the prior art would render
`them unpatentable as obvious. At this preliminary stage, we determine
`whether the information in the Petition shows there is a reasonable
`likelihood that Petitioner would prevail in establishing that at least one of the
`challenged claims would have been obvious over the proposed combinations
`and/or alterations of the prior art.
`D. Overview of Prior Art
`1. Wada (Ex. 1006)
`Wada relates to microfluidic devices, and also describes methods and
`apparatus and includes “methods for providing substantially uniform flow
`velocity to flowing particles” and “[m]ethods of sorting members of particle
`populations, such as cells and various subcellular components.” Ex. 1006, at
`[57]. An example of a device described in Wada is depicted schematically
`in Figure 22, reproduced below:
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`Id. at Fig. 22 (depicting a schematic representation of a particle sorting
`configuration). As disclosed in Wada, “cells 2200 are generally flowed into
`a main microchannel that includes . . . sets of opposing microchannels for
`focusing and/or otherwise directing the flow of cells 2200 using
`hydrodynamic flow 2202” and operation of the disclosed microchannels
`“direct[s] selected cells 2208 (e.g., fluorescently-labeled cells) and non-
`selected cells 2206 into, in this case, one of two microchannels, each
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`terminating in particular collection wells 2210.” Id. at 19:24–20:2, Fig. 22.
`Detector 2204 is used to identify cells so that they can be sorted as required.
`Id.
`
`2. Anderson (Ex. 1012)
`Anderson relates to “a miniaturized integrated nucleic acid diagnostic
`device and system (522),” which “device (522) . . . is generally capable of
`performing . . . sample acquisition and preparation operations in
`combination with . . . sample analysis operation.” Ex. 1012, at [57].
`Anderson discloses the use of controllable microvalves and micropumps to
`direct fluid samples in a miniature fluidic system. See, e.g., 2:30–34, 5:14–
`26, 9:24–27, 46:23–29, 63:1–13. Anderson sets forth that valves used “can
`employ a variety of structures, but [are] preferably . . . flexible diaphragm
`type valve[s] which may be displaced pneumatically, magnetically or
`electrically.” Id. at 53:6–10, see also id. at 38:23–27 (identifying different
`ways that a diaphragm valve may be deflected to actuate). Anderson also
`sets forth a number of different types of pumps, and alternatives to pumps,
`including providing pressure or motive force to the liquid sample external to
`the microfluidic device. See, e.g., id. at 46:23–29, 62:18–64:31. Among the
`pumps disclosed, Anderson sets forth that “pumps which hav[e] a bulging
`diaphragm” and those “powered by a piezoelectric” actuator “may be used to
`move the sample through the various operations of the device.” Id. at
`62:18–63:13. Anderson further notes that such a “diaphragm pump will
`generally be fabricated from any one of a variety of flexible materials, e.g.,
`silicon [sic], latex, teflon, mylar, and the like.” Id. at 45:8–12.
`3. Marcus (Ex. 1005)
`Marcus relates to “[a] fluidic sorting device for the separation of two
`or more visually different materials or materials which react differently to an
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`externally applied force. . . . [that] are suspended in a fluid.” Ex. 1005, at
`[57]. The device includes a “machine vision apparatus” that decides
`whether a particle is to be sorted out, which “controls a fluidic logic element
`which facilitates the separation of the particles or materials.” Id. Such a
`device is depicted schematically in Figure 1, reproduced below:
`
`
`
`Id. at Fig. 1 (depicting a schematic representation of a fluidic sorting
`device). The device is described as including: a machine vision apparatus
`16, which includes a machine vision camera lens 9, an image capture device
`10, an image interpretation device 11, and a decision control device 12, and
`optionally a counter device 13; a fluidic controller device 14; and a fluidic
`logic element 1, which includes input flow port 2, control ports 3 and 4, and
`output ports 5 and 6. Id. at 3:29–48, Fig. 1. As described, the machine
`vision apparatus detects and arrives at a decision as to particulate matter 7
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`and 8, and relays that decision to fluidic controller device 14, which
`transmits signals via leads 17 and 18 to control ports 3 and 4 (of fluidic logic
`element 1) in order to sort particulate matter 7 and 8 into separate output
`ports 5 and 6 as required. Id. at 3:29–62.
`E. Asserted Unpatentability Over Wada
`Petitioner contends that claims 1–3, 9, and 18 are unpatentable under
`35 U.S.C. § 103 over Wada. Pet. 5, 20–42. Patent Owner disagrees.
`Prelim. Resp. 42–64. We focus our discussion on the dispositive claim
`limitations of independent claim 1.
`1. Petitioner’s Contentions
`Petitioner first contends that “some embodiments [of Wada] . . .
`reasonably would have been viewed by a [person of ordinary skill in the art]
`as anticipating the claimed subject matter” and would, accordingly, render
`the claims obvious. Pet. 20–21 (citing Ex. 1002 ¶¶ 107–170; Ex. 1006, Figs.
`22–23); In re McDaniel, 293 F.3d 1379, 1385 (Fed. Cir. 2002) (“anticipation
`is the epitome of obviousness”). Petitioner also contends that a person of
`ordinary skill in the art “would have had good reason to use all the
`[disclosed] elements in a single embodiment and a reasonable expectation of
`success of thereby obtaining what is claimed.” Pet. 21 (citing Ex. 1002
`¶¶ 107–111).
`Petitioner relies on “Wada teach[ing] a first reservoir operatively
`associated with the flow channel and adapted for dampening or absorbing a
`pressure pulse propagated across the flow channel,” as recited in claim 1.
`Id. at 26 (citing id. at 16–17; Ex. 1002 ¶¶ 125–139). Petitioner reproduces
`Figures 22 and 23 of Wada, with annotations identifying what Petitioner
`contends is a “first reservoir.”
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`Id. (citing Ex. 1006, Figs. 22–23; Ex. 1002 ¶ 125) (depicting schematic
`representations of a particle sorting configuration of Figure 23 on the left
`and Figure 22 on the right, with Petitioner’s annotations that highlight in
`yellow the areas it labels as “First Reservoir”). In each of the annotated
`figures, Petitioner identifies the “opposing microchannel structure disposed
`opposite of the actuated sorting microchannel” as a “reservoir,” where the
`actuated microchannel has within it an arrow, which Petitioner identifies as a
`“pressure pulse.” Id. at 26–27 (citing Ex. 1006, 19:23–20:14). Petitioner
`further contends that a person of ordinary skill in the art “would have
`recognized that the opposing microchannel structure . . . is a physical
`structure that contains a fluid, receives a pressure pulse, and is operatively
`associated with the flow channel via its fluid communication with the flow
`channel,” and “is configured to . . . dampen and absorb the pressure pulse
`because the structure opening is aligned with the direction of the pressure
`pulse (substantially perpendicular to the main microchannel).” Id. at 27.
`Petitioner further contends that a person of ordinary skill in the art “would
`thus have understood that the opposed microchannel structure . . . [is] not
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`only a reservoir, but . . . is also . . . adapted for dampening or absorbing a
`pressure pulse propagated across the flow channel as recited in [claim 1].”
`Id. at 28 (citing Ex. 1002 ¶¶ 126–130 (citing Ex. 1005, Fig. 1; Ex. 1007,
`Fig. 2; Ex. 1016, 1:49–2:19, 5:44–54, Fig. 1; Ex. 1018, 341–42; Ex. 1032,
`8:4–8; Ex. 1033, 198; Ex. 1034, 2:23–34, 39:25–34, 40:20–25; Ex. 1035,
`377, 382–83).
`Petitioner further relies on “Wada disclos[ing] its fluid direction
`components ‘nudge materials across the width of a first channel’ in order to
`‘direct sample flow towards or away from’ a first flow channel, and ‘into,
`e.g., an additional intersecting channel or . . . channel region.’” Pet. 28
`(some internal quotations omitted) (citing Ex. 1006, 18:26–19:13).
`Petitioner also contends that “[w]hen the actuator in only one of the two
`opposed sorting microchannel structures of Wada is activated at a given
`time, . . . the well at the distal end of the opposite (non-actuated)
`microchannel dampens or absorbs the pressure pulse propagated across the
`flow channel.” Id. at 29 (citing Ex. 1002 ¶¶ 133–137). Petitioner also
`contends on this basis that Wada teaches a structure like that in Figure 24,
`but including a “first reservoir” opposite branched particle sorting
`microchannel 2418, where Figure 24 depicts none. Pet. 27–29 (citing
`Ex. 1006, 49:13–20; Ex. 1002 ¶¶ 129–134).
`Petitioner further contends that Wada discloses a Joule heating
`electrode as an exemplary actuating mechanism to generate a pressure pulse,
`and that such a “Joule heating [electrode] is typically . . . positioned within a
`well, microscale channel, or other cavity within the device” and that this
`would have been recognized “as teaching a chamber.” Pet. 29–30 (citing
`Ex. 1006, 20:23–25; Ex. 1002 ¶¶ 134–138); id. at 28–29 (citing Ex. 1006,
`7:25–29, 8:12–23, 22:30–23:24). Petitioner contends that a person of
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`ordinary skill in the art “would thus have had good reason to place the Joule
`heating electrode . . . on the substrate within a chamber at the distal end of
`each opposed sorting microchannel to generate a pressure pulse that will
`propagate across the flow channel . . . to deflect a selected particle into a
`selected branch of the flow channel.” Id. at 30 (citing Ex. 1006, 43:5–14;
`Ex. 1002 ¶¶ 134–138).
`2. Patent Owner’s Contentions
`Patent Owner contends that Petitioner fails to show both that Wada
`discloses a “second reservoir” for generating a “pressure pulse” (Prelim.
`Resp. 46–55) and a “first reservoir” for “dampen[ing] or absorb[ing]” the
`“pressure pulse” (id. at 55–61). Patent Owner further contends that
`modification of Wada so as to achieve the claimed invention would modify
`the operating principle of Wada’s device, and that Petitioner relies on
`impermissible hindsight. Id. at 61–64.
`Regarding the first reservoir, Patent Owner contends, with supporting
`testimony from its declarant Don W. Arnold, Ph.D., that Petitioner’s reliance
`on Wada’s Figures 22 and 23 falls short because “the ‘opposing
`microchannels,’ . . . do not ‘dampen’ or ‘absorb’ anything—they are
`described as useful solely for introducing ‘hydrodynamic flow.’” Id. at 57
`(citing Ex. 2001 ¶¶ 130–134). Patent Owner highlights Petitioner’s reliance
`on Petitioner’s characterization of “Wada’s opposed side channel as ‘non-
`actuated’ and ‘aligned’ with the actuated side channel” and “conclu[sion]
`that it therefore constitutes the claimed ‘reservoir,’” and Petitioner’s
`determination, “alternatively, that [persons of ordinary skill in the art] would
`simply know to attach a dampening/absorbing ‘reservoir.’” Id. at 59 (citing
`Pet. 26–33). Patent Owner relies on Wada teaching that the “second
`opposed side channel is optional and [is] for the expressly-stated purpose of
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`Patent 8,623,295
`. . . ‘introducing’ . . . ‘hydrodynamic flow.’” Id. (citing Ex. 1006, 19:29–
`20:13). Patent Owner also contends that “Petitioner’s [own] expert
`acknowledges as much by illustrating and discussing that precise usage”—
`the introduction of hydrodynamic flow. Id. (citing Ex. 1002 ¶¶ 129–136);
`see also Ex. 2001 ¶¶ 93–95 (citing Ex. 1006, 19:29–20:14), 126–127 (citing
`Ex. 1006, 22:23–24:18, Fig. 24).
`Patent Owner also contends, with testimony from Dr. Arnold, that
`Wada’s “Joule heaters are employed solely to induce hydrodynamic flow out
`of a side channel, . . . [and] Wada certainly never explains that the Joule
`heating wells dampen or absorb a pressure pulse or fluid.” Id. (citing Pet.
`29–30; Ex. 1006, 20:23–25; Ex. 2001 ¶¶ 74, 96–97, 127–128)).
`Patent Owner also addresses a number of “background references”
`cited in Dr. Weigl’s declaration—and in the citation to the portions of
`Dr. Weigl’s declaration addressing both the contention that the claimed
`“pressure pulse” was known in the art (id. at 53–55) and the contention that
`reservoirs adapted to dampen or absorb a pressure pulse were known in the
`art (id. at 60–61).
`3. Analysis
`On this record, Petitioner’s contention that Wada discloses a
`“reservoir . . . adapted for dampening or absorbing a pressure pulse
`propagated across the flow channel” amounts to little more than an assertion,
`which we find lacking in support. Figure 22 of Wada depicts top and bottom
`pairs of opposing microchannels that introduce hydrodynamic flow into the
`main microchannel through which particles to be sorted pass. See, e.g.,
`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
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`Patent 8,623,295
`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. Thus, both microchannels are for providing
`such hydrodynamic flow into the main microchannel, as depicted in each of
`Figures 22 and 23.
`Wada does not indicate that any of the side microchannels is a
`reservoir that absorbs or dampens a pressure pulse. The required function of
`the side microchannels is wholly different, and there is no showing that what
`is required to absorb or dampen a pressure pulse is included in the disclosed
`structure for introducing hydrodynamic flow into the central microchannel
`that cells to be sorted pass through. See generally Pet. Petitioner and
`Dr. Weigl rely on Wada “describing that the fluid direction components
`‘nudge’ materials across the width of the first channel,’” however, that is
`insufficient to support Petitioner’s contention that “the opposed
`microchannel structure in each of Figures 22 and 23 is configured to receive
`. . . and to dampen and absorb the pressure pulse.” Pet. 27–29; Ex. 1002
`¶ 126. On the record before us, thus, we are not persuaded that Wada
`includes any reservoir adapted for dampening or absorbing a pressure pulse
`such as recited in the claims. As to Dr. Weigl’s testimony to the contrary,
`we find it conclusory, largely unsupported as applied to Wada, and entitled
`to little weight. Dr. Weigl contends that the orientation of opposing
`microchannels across from one another indicates that one, or both, of them
`function as a reservoir that is adapted to dampening or absorbing a pressure
`pulse, and then points to structures in other references that are not shown to
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`Patent 8,623,295
`be similar or to have the same function as support. See Ex. 1002 ¶¶ 125–
`139. This position is not sufficiently supported, though, particularly where
`there is insufficient explanation provided as to why what Dr. Weigl contends
`is disclosed in the further “background references” is what is also present in
`Wada’s disclosed structure, and what would follow based on its function.
`See generally Pet.; Ex. 1002. For example, while Dr. Weigl contends that
`the use of microchannel structure geometry with a channel, chamber or
`reservoir structure across the source of the transient pressure pulse for
`dampening or absorbing the transient pressure pulse was well known, and
`that it was understood that they can be used to mitigate undesirable flow
`fluctuations (see, e.g., Ex. 1002 ¶¶ 126–130), it simply does not follow that a
`pair of oppositely-oriented microchannels, as disclosed in Wada for
`providing fluid flow into the main microchannel, have similar structure or
`that they function in like manner, and Petitioner fails to set forth clearly how
`the structures are sufficiently similar at a level of detail sufficient to
`establish like function (see generally Pet.). Similarly, Petitioner’s reliance
`on the disclosed Joule heating wells in Wada as dampening or absorbing a
`pressure pulse or fluid (id. at 29–31) fails to establish sufficient basis for
`including structure that is adapted to dampen or absorb a pressure or fluid
`(see generally Pet.; Ex. 1002).
`As discussed above, as to “a first reservoir . . . adapted for dampening
`or absorbing a pressure pulse propagated across the flow channel,” what
`Wada discloses falls short, and Petitioner provides no reasonable basis for
`modifying what is, in fact, disclosed in Wada to arrive at the claimed
`invention. See generally Pet. Instead, as discussed above, Petitioner merely
`sets forth what one of ordinary skill in the art could have done. This is not
`sufficient to reasonably support a ground of obviousness. See Be
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