Trials@uspto.gov
`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.
`
`IPR2020-00549
`Patent 10,029,263 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 11, 2020, Nanocellect Biomedical, Inc. (“Petitioner”)
`filed a Petition requesting inter partes review of claims 1, 5–6, 8, and 15–16
`of U.S. Patent No. 10,029,263 B2 (Ex. 1001, “the ’263 patent”). Paper 2
`(“Pet.”). On June 1, 2020, Cytonome/ST, LLC (“Patent Owner”) filed a
`
`
`
`
`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.
`
`IPR2020-00549
`Patent 10,029,263 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 11, 2020, Nanocellect Biomedical, Inc. (“Petitioner”)
`filed a Petition requesting inter partes review of claims 1, 5–6, 8, and 15–16
`of U.S. Patent No. 10,029,263 B2 (Ex. 1001, “the ’263 patent”). Paper 2
`(“Pet.”). On June 1, 2020, Cytonome/ST, LLC (“Patent Owner”) filed a
`
`
`
`
`
`IPR2020-00549
`Patent 10,029,263 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 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 14, “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 ’263 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 10,029,283 B2 (IPR2020-00547); and
`Inter partes review of US 10,065,188 B2 (IPR2020-00551).
`Pet. 3; Paper 4, 1–2.
`D. The ’263 Patent
`The ’263 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
`
`2
`
`
`
`IPR2020-00549
`Patent 10,029,263 B2
`be split into several output channels.” Ex. 1001, 1:26–29. 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 7:20–21. 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 7:59–63. First supply duct 12 forms nozzle 12a and
`along with second supply duct 14 is in fluid communication with
`
`3
`
`
`
`IPR2020-00549
`Patent 10,029,263 B2
`measurement duct 16. Id. at 7:64–66. Measurement duct 16 branches into
`first branch channel 22a and second branch channel 22b at branch point 21.
`Id. at 7:67–8:3. Measurement duct 16 includes measurement region 20 that
`is associated with detector 19. Id. at 8:3–6. System 10 also includes two
`opposed bubble valves 100a and 100b positioned relative to measurement
`duct 16 in fluid communication therewith via opposed side passages 24a and
`24b. Id. at 8:6–11. Each bubble valve has a reservoir. Id. at 8:14. Actuator
`26 actuates either bubble valve to cause flow disturbance in measurement
`duct 16 to deflect flow therein. Id. at 8:15–20. 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 8:21–22, 26–28. System 10 also includes switch
`40 (not shown in Figure 1). Id. at 10:18–19.
`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, 8:29–34.
`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
`8:37–39. 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 8:40–45.
`
`4
`
`
`
`IPR2020-00549
`Patent 10,029,263 B2
`E. Illustrative Claim
`Petitioner challenges claims 1, 5–6, 8, and 15–16 of the ’263 patent.
`Pet. 1. Claims 1 and 15 are independent. Claim 1, reproduced below, is
`illustrative of the claimed subject matter.
`A microfluidic system for sorting particles, the microfluidic
`1.
`system comprising:
`a first microfluidic flow channel formed in a particle
`processing component substrate having an upstream inlet
`configured to introduce a fluidic stream having a plurality of
`particles into the first microfluidic flow channel and downstream
`outlets configured to output portions of the fluidic stream of
`particles;
`a detection region located downstream of the inlet, the
`detection region configured to allow a particle having a
`predetermined characteristic to be sensed, the sensed particle
`being one of the plurality of particles in the fluidic stream; and
`a switching device located downstream of the detection
`region, the switching device operatively coupled to the first
`microfluidic flow channel to deliver a transient pressure pulse
`in a direction substantially perpendicular to a flow direction of
`the fluidic stream of particles,
`wherein the transient pressure pulse displaces and
`separates a selected single sensed particle from the fluidic
`stream of particles,
`wherein the selected particle is displaced and separated
`from the fluidic stream of particles in a switching region,
`wherein the fluidic stream of unselected particles flows
`into a first downstream outlet configured to output a first
`portion of the fluidic stream of particles,
`wherein the transient pressure pulse is not generated
`downstream of the switching region,
`wherein the switching device, when activated, does not
`block or partially block flow of the fluidic stream of particles,
`and
`
`5
`
`
`
`IPR2020-00549
`Patent 10,029,263 B2
`wherein the particle processing component substrate
`includes a reservoir adapted for dampening or absorbing the
`transient pressure pulse propagated across the microfluidic
`channel.
`F. Prior Art and Asserted Grounds
`Petitioner asserts that claims 1, 5–6, 8, and 15–16 would have been
`unpatentable based on the following grounds:
`Reference(s)/Basis
`Claim(s) Challenged
`35 U.S.C. §
`Wada1
`1, 5, 6, 15, 16
`103(a)
`Wada, Anderson2
`1, 5, 6, 8, 15, 16
`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.
`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)
`
`
`1 WO 00/070080, published November 23, 2000 (Ex. 1006, “Wada”).
`2 WO 97/002357, published January 23, 1997 (Ex. 1012, “Anderson”).
`
`6
`
`
`
`IPR2020-00549
`Patent 10,029,263 B2
`(2019). The Petition was filed February 11, 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. 11–12. Patent Owner
`asserts that the terms “pressure pulse” and “reservoir” should be construed.
`Prelim. Resp. 31. We agree with Patent Owner that construction of the
`claim terms “pressure pulse” and “reservoir” 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. 31 (citing Ex. 2012, 6–7).
`
`7
`
`
`
`IPR2020-00549
`Patent 10,029,263 B2
`Patent Owner contends further that “in light of surrounding claim language,
`the Board should find that the claimed ‘pressure pulse’ must ‘propagate[]
`across the microfluidic flow channel’ to be ‘dampen[ed] or absorb[ed]’ by
`the ‘reservoir’ as claimed.” Id.
`In reply, Petitioner argues that “[a]fter prevailing [in the district court]
`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 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 that for the claim term “pressure
`pulse” the plain and ordinary meaning applies. Ex. 2012, 6. 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 ’263 patent. Prelim. Resp. 31;
`Ex. 1001, 3:67–4:5; 5:10–15, 8:15–20, 9:29–33, 11:29–33, 56–60. We do
`not agree with 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.
`
`8
`
`
`
`IPR2020-00549
`Patent 10,029,263 B2
`2. Reservoir
`In its Markman Order, the district court in the parallel proceeding
`applied the plain and ordinary meaning to the claim term “reservoir.”
`Ex. 2012, 6. Petitioner asserts that we need not construe this term. Pet. 11–
`12. Patent Owner agrees. Prelim. Resp. 34. Neither party informs us of
`their understanding of the plain and ordinary meaning of this term. The
`Specification of the ’263 patent describes reservoir 70a, 70b as part of
`bubble valves 100a, 100b. Ex. 1001, 9:19–21, 26–29. Referring to second
`reservoir 70b, the ’263 patent states that “reservoir 70b of the second bubble
`valve 100b is a buffer chamber having a resilient wall or containing a
`compressible fluid, such as a gas.” Id. at 9:26–29. The dictionary definition
`of “reservoir,” which is consistent with the use of this term in the ’263
`patent, is “a receptacle or chamber for holding a liquid or fluid.”
`Dictionary.com, (accessed August 7, 2020),
`https://www.dictionary.com/browse/reservoir. For purposes of this
`Decision, we adopt this plain and ordinary meaning of the claim term
`“reservoir.”
`C. Ground 1: Claims 1, 5, 6, 15, and 16 as Unpatentable Over Wada
`Petitioner contends that claims 1, 5, 6, 15, and 16 are unpatentable
`over Wada. Pet. 19. Petitioner provides supporting evidence, and relies on
`testimony from its declarant, Dr. Weigl, in support of this contention. Id. at
`19–78; Ex. 1002. Patent Owner disagrees, provides supporting evidence,
`and relies on testimony from its declarant, Dr. Arnold (Ex. 2001), in support
`of its position. Id. at 45–65; Ex. 2001. Before we discuss the merits of this
`challenge, we provide a brief overview of Wada.
`
`9
`
`
`
`IPR2020-00549
`Patent 10,029,263 B2
`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 23,
`reproduced below, illustrates one of the embodiments relied upon in this
`challenge. We discuss Figure 23 because it has the least complicated
`configuration of the three figures relied upon by Petitioner in this challenge.
`
`
`Figure 23 is “a schematic representation of a microchannel
`configuration that includes one separation element.” Ex. 1006, 11:6–7. In
`this schematic, a main microchannel extends from the bottom of the figure
`upwards. Cells 2300 flow into the main microchannel from below. The
`main microchannel splits into two microchannels near the top of the figure at
`
`10
`
`
`
`IPR2020-00549
`Patent 10,029,263 B2
`separation element 2310. Each of these microchannels terminate in a
`collection well 2312. Id. at 20:12–13. Three side microchannels intersect
`the main microchannel below separation element 2310. Two of the side
`microchannels are located on opposite sides (right and left) of the main
`microchannel directly opposite from each other. They are located about
`halfway between the bottom and top of Figure 23. The third side
`microchannel is located below the right side microchannel. Hydrodynamic
`flow 2302 enters the main microchannel from the left side channel and the
`third side channel. Hydrodynamic flow 2302 directs selected cells and non-
`selected cells to either side of separation element 2310. Id. at 20:9–11.
`2. Petitioner’s Allegations
`a. Claims 1, 5, and 6
`Petitioner addresses each limitation of independent claim 1 and its
`respective dependent claims 5 and 6, explaining how Wada discloses or
`suggests each of the limitations therein. Pet. 19–54. For the limitation
`requiring “a switching device located downstream of the detection region,
`the switching device operatively coupled to the first microfluidic flow
`channel to deliver a transient pressure pulse in a direction substantially
`perpendicular to a flow direction of the fluidic stream of particles” in claim
`1, Petitioner provides annotated copies of Wada’s Figures 22–24,
`reproduced below:
`
`
`11
`
`
`
`IPR2020-00549
`Patent 10,029,263 B2
`
`
`
`Pet. 31. 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 of the
`figure is labeled “Downstream,” the left side microchannel is highlighted in
`red and labeled “Switching Device,” and the area below where the left side
`channel intersects the main microchannel is highlight green and labeled
`“Detection Region.” Figures 22 and 24 show alternate configurations of
`Wada’s system that Petitioner similarly annotates. From these annotated
`figures, we understand Petitioner’s position to be that the left side
`microchannel of Figure 23, and its similarly labeled corresponding
`microchannels in Figures 22 and 24, correspond to the claimed switching
`device.
`Petitioner asserts that these “switching devices” are “operatively
`coupled to the first microfluidic flow channel because [they are] in fluid
`communication with it and generate[] or receive[] the transient fluid flow
`propagated substantially perpendicularly across the flow channel to deflect a
`particle into a particular outlet.” Pet. 33–34 (citing Ex. 1002 ¶¶ 157–159;
`Ex. 1006, Figs. 22–24). According to Petitioner, “heating the fluid by Joule
`
`12
`
`
`
`IPR2020-00549
`Patent 10,029,263 B2
`heating electrode generates and applies a transient pressure pulse and
`propagates it across the flow channel to deflect a particle into a selected
`branch of the flow channel.” Id. at 34 (citing Ex. 1002 ¶160; Ex. 1006,
`17:3–6, 20:15–23:20). Specifically, for the “pressure pulse,” Petitioner
`asserts that “[t]he pressure pulse is selectively generated and transiently
`applied when the detector indicates the particle is selected for deflection
`from the stream of particles.” Id. (citing Ex. 1006, 23:10–18; Ex. 1002
`¶¶ 160–161). Petitioner also asserts that “Wada’s disclosures are not limited
`to embodiments where the actuator mechanism is a heating element” and
`that “Wada broadly teaches ‘techniques for inducing the flow of focusing
`fluids to sort particles’ using fluid direction components and flow control
`regulators,” and that “Wada discloses that the pressure pulse generated by
`the actuator has short and transient pulse duration.” Id. at 34–35 (citing Ex.
`1006, 4:1–5, 7:18–29, 19:9–13, 20:30–31, 21:32–22:2, 42:8–30). Based on
`this disclosure, Petitioner asserts that “Wada discloses generating a transient
`pressure pulse” as claimed. Id. at 35 (citing Ex. 1002 ¶ 126).
`b. Claims 15 and 16
`Petitioner addresses each limitation of independent claim 15 and its
`dependent claim 16. Pet. 55–79. For the limitation requiring use of “a
`reservoir operatively associated with the first microfluidic flow channel to
`dampen or absorb a transient pressure pulse propagated across the
`microfluidic channel,” Petitioner refers to its assertions that the similar
`limitation in claim 1 is met by Wada and essentially repeats the arguments
`discussed above. Pet. 70–76.
`3. Patent Owner’s Response
`Patent Owner contends that “Wada fails to disclose the claimed
`‘switching device’ . . . that delivers a ‘pressure pulse’ . . . because that
`
`13
`
`
`
`IPR2020-00549
`Patent 10,029,263 B2
`pressure pulse must be ‘propagated across the microfluidic channel’ and be
`‘dampen[ed] or absorb[ed]’ by a ‘reservoir.’” Prelim. Resp. 46. According
`to Patent Owner, “the ‘hydrodynamic flow’ that Petitioner identifies as the
`‘pressure pulse’ fails to cross any channel or reach any alleged ‘reservoir’
`(much less be dampened or absorbed by one).” Id. Instead, Patent Owner
`asserts, “the alleged pressure pulse enters the transport channel and
`immediately turns downstream.” Id. at 47 (citing Ex. 2001 ¶¶ 111–12).
`Patent Owner also contends that “Wada fails to disclose the claimed
`‘switching device’ . . . that delivers a ‘pressure pulse’ because
`‘hydrodynamic flow’ is not a pressure pulse in the first place.” Prelim.
`Resp. 47. Patent Owner asserts that “Wada’s ‘hydrodynamic flow’ is a
`continuous flow of fluid that is increased/accelerated when a selected
`particle is detected, not a ‘transient pressure pulse’ that simply disrupts flow
`in the channel without adding fluid.” Id. (citing Ex. 2001 ¶¶109–112).
`4. Analysis
`We agree with Patent Owner that Wada fails to disclose or suggest a
`“pressure pulse” and “reservoir” as required by the claims. Figure 233 of
`Wada depicts a microchannel configuration that includes separation element
`2310. Ex. 1006, 20:3–4. Wada explains that “cells 2300 are typically
`flowed in a microchannel that intersects with another microchannel typically
`located upstream from detector 2304” and that “[t]he upstream microchannel
`is optionally used to focus cells 2300 to one side of the microchannel as cells
`2300 pass through detector 2304 using hydrodynamic flow 2302.” Id. at
`
`
`3 As above, we discuss Figure 23 because it depicts the least complicated
`embodiment relied upon in this challenge. We note that for the features of
`Wada relied upon, there are no substantive differences between Wada’s
`Figures 22–24.
`
`14
`
`
`
`IPR2020-00549
`Patent 10,029,263 B2
`20:4–8. Wada explains further that a set of opposing microchannels located
`downstream of detector 2304 introduce hydrodynamic flow 2303 to direct
`selected cells 2308 and non-selected cells 2306 to either side of separation
`element 2310, and into one of two microchannels that each terminate in
`collection wells 2312. Id. at 20:8–13. Wada does not describe delivery of a
`transient pressure pulse from the microchannel labeled “Switching Device”
`in the annotated copy of Figure 23 reproduced above. Further, on the record
`before us, we are not persuaded that use of such a transient pressure pulse
`would have been obvious to one of ordinary skill in the art at the time of the
`invention.
`Further, considering the limitation of claim 1 requiring “a reservoir
`adapted for dampening or absorbing the transient pressure pulse propagated
`across the microfluidic channel” alluded to by Patent Owner in its argument
`discussed above and the similar limitations in claim 15, we agree with Patent
`Owner that Wada fails to disclose a reservoir as claimed, because Wada does
`not describe the area labeled “Reservoir” in annotated Figure 23 reproduced
`above as such a device, and does not discuss the need for dampening or
`absorbing a transient pressure pulse propagated across the microfluidic
`channel as required by claims 1 and 15. Ex. 1001, 14:28–30; Prelim. Resp.
`47. 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.
`
`15
`
`
`
`IPR2020-00549
`Patent 10,029,263 B2
`D. Ground Two: Claims 1, 5, 6, 8, 15, and 16 as Unpatentable Over
`Wada and Anderson
`Petitioner asserts that claims 1, 5, 6, 8, 15, and 16 are unpatentable
`over the combined teachings of Wada and Anderson. Pet. 79. Petitioner
`provides supporting evidence, and relies on Dr. Weigl’s testimony, in
`support of this contention. Id. at 79–86; Ex. 1002. Patent Owner disagrees,
`and also provides supporting evidence, and relies on the testimony of Dr.
`Arnold, in support of its position. Prelim. Resp. 65–72; Ex. 2001. 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:
`
`
`
`16
`
`
`
`IPR2020-00549
`Patent 10,029,263 B2
`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
`For this ground, Petitioner asserts that “Wada renders obvious each of
`claims 1, 5–6, and 15–16 as a whole” as discussed in Ground 1 above.
`Pet. 82. Petitioner asserts Anderson teaches “the conventional usage of an
`actuator in moving fluid containing particles through a microfluidic device
`using micropumps formed by etching a chamber into the substrate and
`sealing the chamber with a flexible diaphragm to form a diaphragm pump.”
`Id. at 83 (citing Ex. 1002 ¶¶ 109–113, 292–295). Petitioner asserts that
`Anderson was “specifically referenced and incorporated in Wada.” Id.
`Petitioner asserts further that “Anderson also discloses microfluidic particle
`sorters comprising separation channels for separating a component of a fluid
`sample,” and “Anderson thus provides additional evidence for the
`obviousness of applying actuators for use in a switching device (i.e., in a
`switching region) for sorting particles, as required by each of claims 1, 5-6,
`and 15-16.” Id. at 84 (citing Ex. 1012, 3:35–4:6, 13:9–14:10; Ex. 1002
`¶¶ 113, 292).
`
`17
`
`
`
`IPR2020-00549
`Patent 10,029,263 B2
`3. Patent Owner’s Response
`Patent Owner contends that “Anderson fails to disclose the limitations
`missing from Wada.” Prelim. Resp. 65. Patent Owner asserts that “Wada
`fails to disclose the ‘switching device’ or ‘switch component’ in independent
`claims 1 and 15 that delivers a ‘transient pressure pulse’ across a transport
`channel to sort particles. Anderson also fails to disclose those limitations.”
`Id. Thus, according to Patent Owner, Wada and Anderson fail to disclose
`the claimed “pressure pulse” and “reservoir” required by all of the claims.
`Id.
`
`4. Analysis
`We agree with Patent Owner that Anderson does not cure the
`deficiencies in Wada, as discussed in Section II.C above, because the
`Petition does not rely on Anderson to meet the limitations pertaining to a
`“pressure pulse” and “reservoir.” See Pet. 79–86. 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.
`
`III. CONCLUSION
`Based on the arguments and the evidence of record, we determine that
`Petitioner has not established a reasonable likelihood that it would prevail in
`showing that claims 1, 5, 6, 8, 15, and 16 of the ’263 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
`
`
`
`IPR2020-00549
`Patent 10,029,263 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
`
`
Accessing this document will incur an additional charge of $.
After purchase, you can access this document again without charge.
Accept $ Charge
Still Working On It
This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.
Give it another minute or two to complete, and then try the refresh button.
A few More Minutes ... Still Working
It can take up to 5 minutes for us to download a document if the court servers are running slowly.
Thank you for your continued patience.
This document could not be displayed.
We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.
Your account does not support viewing this document.
You need a Paid Account to view this document. Click here to change your account type.
Your account does not support viewing this document.
Set your membership
status to view this document.
With a Docket Alarm membership, you'll
get a whole lot more, including:
- Up-to-date information for this case.
- Email alerts whenever there is an update.
- Full text search for other cases.
- Get email alerts whenever a new case matches your search.
One Moment Please
The filing “” is large (MB) and is being downloaded.
Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.
Your document is on its way!
If you do not receive the document in five minutes, contact support at support@docketalarm.com.
Sealed Document
We are unable to display this document, it may be under a court ordered seal.
If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.
Access Government Site
