Trials@uspto.gov
`571-272-7822
`
`Paper 79
`Date: December 9, 2021
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`BLUECATBIO MA INC.,
`Petitioner,
`v.
`YANTAI AUSBIO LABORATORIES CO., LTD.,
`Patent Owner.
`
`PGR2020-00051
`Patent 10,338,063 B2
`
`
`
`
`
`
`
`
`
`Before CHRISTOPHER L. CRUMBLEY, JO-ANNE M. KOKOSKI, and
`ELIZABETH M. ROESEL, Administrative Patent Judges.
`ROESEL, Administrative Patent Judge.
`
`JUDGMENT
`Final Written Decision
`Determining No Challenged Claims Unpatentable
`35 U.S.C. § 328(a)
`
`Dismissing Patent Owner’s Motion to Exclude
`37 C.F.R. § 42.64
`
`
`
`
`
`
`

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`PGR2020-00051
`Patent 10,338,063 B2
`
`INTRODUCTION
`I.
`A. Background and Summary
`BlueCatBio MA Inc. (“Petitioner”) filed a Petition (Paper 2, “Pet.”)
`seeking post-grant review of claims 1, 3–5, 7, 10–12, and 14–20 (“the
`challenged claims”) of U.S. Patent No. 10,338,063 B2 (Ex. 1001,
`“the ’063 Patent”). Yantai AusBio Laboratories Co., Ltd. (“Patent Owner”)
`filed a Preliminary Response. Paper 23 (“Prelim. Resp.”). We instituted a
`post-grant review of the challenged claims. Paper 26 (“Inst. Dec.”). We
`denied Patent Owner’s request for rehearing of the Decision granting
`institution. Papers 28, 41.
`After institution, we issued an Order (Paper 51) granting-in-part
`Patent Owner’s Motion for additional discovery (Paper 43), which was
`opposed by Petitioner (Paper 48). See also Paper 49 (Patent Owner’s reply).
`Our Order required Petitioner to produce two categories of information:
`(1) particular documents sought by Patent Owner to show secondary
`considerations of non-obviousness; and (2) all communications between
`Petitioner’s declarants, Prof. Alexander Slocum and Mr. Yoshiki Yagi, in
`the time period leading up to the filing of the Petition. Paper 51.
`Thereafter, Patent Owner filed a Response to the Petition (Paper 53,
`“PO Resp.”), Petitioner filed a Reply (Paper 58, “Pet. Reply”), and Patent
`Owner filed a Sur-reply (Paper 64, “PO Sur-reply”). Patent Owner filed a
`Motion to exclude evidence (Paper 69), Petitioner filed an Opposition
`(Paper 70), and Patent Owner filed a Reply (Paper 71). An oral hearing was
`held on September 17, 2021, and a transcript of the hearing is included in the
`record. Paper 78 (“Tr.”).
`We have jurisdiction under 35 U.S.C. § 6. This Final Written
`Decision is issued pursuant to 35 U.S.C. § 328(a). For the reasons that
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`PGR2020-00051
`Patent 10,338,063 B2
`follow, we determine that Petitioner has not shown that the challenged
`claims of the ’063 Patent are unpatentable. In brief, we determine that the
`claims, when properly construed, require that the claimed centrifuge
`generate a wind that drives to the drain all or nearly all of the liquid expelled
`from a reaction vessel onto the inner surface of the centrifuge housing, and
`that Petitioner failed to show by a preponderance of the evidence that the
`Gyro Washer, asserted as prior art, drives all or nearly all of the expelled
`liquid to the drain.
`
`B. Related Matters
`The parties state that the ’063 Patent is not currently involved in any
`other judicial or administrative matters that would affect, or be affected by, a
`decision in this proceeding. Pet. xi; Paper 6, 2 (Patent Owner’s Mandatory
`Notices).
`
`C. The ’063 Patent (Ex. 1001)
`The ’063 Patent was issued on an application filed February 5, 2016,
`and claims priority to PCT Application No. PCT/EP2014/066947, filed
`August 6, 2014, and EP Application No. 13179437, filed August 6, 2013.
`Ex. 1001, codes (21), (22), (30), (86).
`The ’063 Patent is titled, “Centrifuge and Method for Centrifuging a
`Reaction Vessel Unit.” Ex. 1001, code (54). An object of the ’063 Patent
`“is to provide a centrifuge for cleaning a reaction vessel unit.” Id.
`at 3:18–19. The ’063 Patent discloses that the centrifuge has a rotor for
`holding at least one reaction vessel unit with its openings directed
`outwardly, a motor for rotating the rotor around a rotation axis, a housing
`having a substantially cylindrical inner surface, and a drain for discharging
`fluid expelled from the reaction vessel unit. Id. at 3:23–29. According to
`
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`PGR2020-00051
`Patent 10,338,063 B2
`the ’063 Patent, “a gap is provided between the inner surface and the rotor so
`that by rotating the rotor a wind is generated which drives the expelled fluid
`on the inner surface to the drain wherein an aspiration pump is connected to
`the drain for discharging fluid.” Id. at 3:29–33; see also id. at 3:53–4:5
`(discussing the size of the gap and its function).
`Figure 2 of the ’063 Patent is reproduced below.
`
`Figure 2 is a perspective view of a rotor and housing of a centrifuge with its
`front side wall removed. Ex. 1001, 9:30–31.
`
`
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`Patent 10,338,063 B2
`Figure 3 of the ’063 Patent is reproduced below.
`
`
`
`Figure 3 is a front view of a rotor and housing of a centrifuge with its front
`side wall removed. Ex. 1001, 9:33–34.
`As shown in Figures 2 and 3, rotor 8 comprises two receptacle
`sections, each for receiving one microtiter plate (not shown). Ex. 1001,
`10:15–16. Rotor 8 is mounted on horizontal shaft 10 and surrounded by
`housing 23 having cylindrical jacket wall 24 (not labeled) comprising lower
`and upper half shells 27, 28 connected by outwardly arranged flanges 29.
`Id. at 10:14–15, 10:63–67. Groove-shaped drain 30 is provided in the lower
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`PGR2020-00051
`Patent 10,338,063 B2
`section of the inner surface of the jacket wall 24. Id. at 11:6–8. The depth
`of the groove increases toward the rear of housing 23, where aspiration
`pump 73 is connected to drain 30. Id. at 11:8–12.
`Referring to Figure 3, the ’063 Patent discloses:
`A gap g between the radial outmost portions of the rotor 8
`and the inner surface of the jacket wall 24 is preferably not larger
`than one millimeter, particularly not larger than 0.75 millimeter
`and most preferably not larger than 0.5 millimeter. The smaller
`the gap is the stronger a circular airstream is generated when the
`rotor 8 is rotating in the housing 23. However, this gap g should
`preferably not be smaller than 0.1 millimeter and in particular not
`smaller than 0.2 millimeter or 0.3 millimeter, because such small
`gaps could cause the rotor to come into contact with a fluid film
`on the inner surface of the jacket wall 24.
`Ex. 1001, 11:15–25.
`The ’063 Patent additionally discloses:
`During the centrifugation the liquid is expelled from the
`reaction vessels 3 and drops of the liquid are impinged on the
`inner surface of the jacket wall 24. The drops form a liquid film
`on the inner surface of the jacket wall 24. Due to the rotation of
`the rotor 8 and the small gap between the rotor 8 and the inner
`surface of the jacket wall 24, a strong rotational airstream is
`caused, which forces the liquid film on the inner surface of the
`jacket wall 24 to flow in the rotational direction of the rotor.
`Thus, the liquid is driven to the drain 30, from which the liquid
`is withdrawn by means of the aspiration pump.
`Ex. 1001, 12:62–13:5
`
`D. Illustrative Claims
`Claims 1, 3–5, 7, 10–12, and 14–20 of the ’063 Patent are challenged
`in the Petition. Claims 1 and 12 are the challenged independent claims and
`are reproduced below:
`1. A centrifuge for cleaning a reaction vessel unit that
`includes at least one opening, comprising:
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`PGR2020-00051
`Patent 10,338,063 B2
`a housing including a cylindrical inner surface and a drain;
`a rotor disposed within the housing and including an
`outmost surface, the rotor being configured to hold the reaction
`vessel unit with its at least one opening directed outwardly;
`a motor for rotating the rotor around a rotation axis in a
`first rotational direction to cause liquid from the reaction vessel
`to be expelled from the at least one opening onto the inner surface
`of the housing;
`wherein a gap is provided between the inner surface of the
`housing and the outmost surface of the rotor, a size of the gap
`being such that by rotating the rotor a wind is generated which
`drives the expelled liquid on the inner surface of the housing to
`the drain; and
`wherein a size of the gap is not less than 0.3 mm.
`Ex. 1001, 23:64–24:14.
`12. A method for cleaning a reaction vessel unit with a
`centrifuge, wherein the reaction vessel unit comprises at least one
`opening and wherein the centrifuge comprises a housing
`including a cylindrical inner surface and a drain, a rotor disposed
`within the housing and including an outmost surface, and a gap
`between the inner surface of the housing and the outmost surface
`of the rotor, the method comprising the steps of:
`loading the reaction vessel unit into the centrifuge so that
`it is held by the rotor with its at least one opening directed
`outwardly; and
`centrifuging the reaction vessel unit by rotating the rotor
`in a first rotational direction, wherein the centrifuging causes
`liquid in the reaction vessel unit to be expelled onto the inner
`surface of the housing, and wherein a size of the gap and a
`rotation speed of the rotor are such that centrifuging generates a
`wind which drives the expelled liquid on the inner surface of the
`housing to the drain, wherein the centrifuging is performed with
`a gap not less than 0.3 mm.
`Id. at 24:60–25:12.
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`PGR2020-00051
`Patent 10,338,063 B2
`E. Asserted Grounds and Evidence
`We instituted post-grant review based on the following grounds of
`unpatentability asserted in the Petition.
`
`Claim(s)
`
`35 U.S.C. § Basis
`
`1, 3–5, 11, 12,
`14–16, 18–20
`
`102(a)(1)
`
`Alleged public use of Gyro Washer
`
`10
`
`103
`
`7, 12, 14–17
`
`103
`
`Alleged public use of Gyro Washer in
`view of alleged sale of Gyro Washer to
`Kyowa Hakko
`Alleged public use of Gyro Washer in
`view of alleged knowledge of a POSA1
`
`
`F. Testimonial Evidence
`Petitioner filed a Declaration (Ex. 1005) and a Reply Declaration
`(Ex. 1038) of Yoshiki Yagi, a fact witness who resides in Japan. Pursuant to
`a procedure agreed upon by the parties and approved by the Board
`(Papers 45, 47), Patent Owner twice interviewed Mr. Yagi with the
`assistance of an interpreter and submitted transcripts of the interviews as
`sworn witness statements. Exs. 2068, 2080. Petitioner filed a Declaration
`(Ex. 1006) and a Reply Declaration (Ex. 1039) of Alexander H.
`Slocum, Ph.D. After receiving the Reply, Patent Owner cross-examined
`Prof. Slocum and filed a transcript of his deposition testimony as
`Exhibit 2079.
`
`
`1 Petitioner asserts two separate grounds that rely on the knowledge of a
`person of ordinary skill in the art (“POSA”), one for claims 7 and 17 and
`another for claims 12 and 14–17.
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`PGR2020-00051
`Patent 10,338,063 B2
`Along with its opposition to Patent Owner’s motion for additional
`discovery concerning real parties-in-interest and its motion for leave to file
`updated mandatory notices (Paper 18), Petitioner filed the declarations of
`Frank Feist, Wolfgang Mann, and Wolfgang Heimberg. Exs. 1019–1021.
`Patent Owner cross-examined Mr. Feist, Dr. Mann, and Dr. Heimberg and
`filed transcripts of their deposition testimony as Exhibits 2065–2067.
`Patent Owner filed a Declaration (Ex. 2016)2 and a second
`Declaration (Ex. 2031) of Joseph Katz, Ph.D. Petitioner cross-examined
`Dr. Katz and filed a transcript of his deposition testimony as Exhibit 1041.
`Patent Owner filed a Declaration of Paul Nisson, Ph.D. Ex. 2035. Petitioner
`cross-examined Dr. Nisson and filed a transcript of his deposition testimony
`as Exhibit 1040.
`
`II. ANALYSIS
`
`A. Principles of Law
`In addition to patents and printed publications, the prior art for
`purposes of a post-grant review includes products that were “in public use,
`on sale, or otherwise available to the public before the effective filing date of
`the claimed invention.” 35 U.S.C. § 102(a)(1);3 35 U.S.C. § 282(b)(2), (3);
`35 U.S.C. § 321(b).
`“A claim is anticipated only if each and every element as set forth in
`the claim is found, either expressly or inherently described, in a single prior
`art reference.” Verdegaal Bros. Inc., v. Union Oil Co., 814 F.2d 628, 631
`(Fed. Cir. 1987).
`
`
`2 The Katz Declaration was filed as Exhibit 2016 but is mislabeled
`“Exhibit 2015” in the footer of every page.
`3 We cite the post-AIA version of § 102.
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`PGR2020-00051
`Patent 10,338,063 B2
`B. Prior Art Status of Petitioner’s References
`For purposes of institution, we determined that Petitioner had shown
`sufficiently that the Gyro Washer, as shown in Exhibit 1004, was in public
`use before the effective filing date of the ’063 Patent and is prior art to
`the ’063 Patent under 35 U.S.C. § 102(a)(1). Inst. Dec. 11–13. We also
`determined that Petitioner had shown sufficiently that a Gyro Washer was
`commercially sold by Micronix before the effective filing date of the
`’063 Patent and is prior art to the ’063 Patent under 35 U.S.C. § 102(a)(1).
`Id. at 13. In the post-institution phase, Patent Owner does not challenge
`Petitioner’s showing of the prior art status of the Gyro Washer, except by
`arguing that Petitioner has not shown that the method of claims 12
`and 14–17 was in public use. PO Resp. 70–72.
`For purposes of resolving the parties’ dispute, we do not need to
`determine whether the Gyro Washer or the method performed when
`operating the Gyro Washer is prior art to the ’063 Patent. As discussed
`below, we determine that, even if the Gyro Washer and its method of
`operation are prior art to the ’063 Patent, Petitioner has not met its burden to
`show that the apparatus and method meet all limitations of the challenged
`claims.
`
`C. Level of Ordinary Skill in the Art
`Petitioner provides the following contention regarding a person of
`ordinary skill in the art (“POSA”):
`A POSA would have had at least a bachelor’s degree in
`mechanical engineering or a related field with some experience
`designing
`laboratory centrifuges and/or a post-graduate
`education in mechanical engineering or a related field with an
`understanding of fluid flow.
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`Patent 10,338,063 B2
`Pet. 16. Petitioner’s contention is supported by Prof. Slocum’s testimony.
`Ex. 1006 ¶ 52.
`Patent Owner contends that Petitioner’s definition of a POSA is
`incomplete. PO Resp. 13. According to Patent Owner, “the POSA would
`have been aware of the operational requirements of reaction vessel unit
`washing devices and methods used to process biochemical assays.” Id.
`at 15. In addition, Patent Owner contends that, “[w]hile the POSA would
`not need to be an expert in biochemical assays, the POSA would need to be
`aware of the sensitivities of biochemical assays to cross-contamination.” Id.
`Patent Owner’s contentions are supported by Dr. Katz’s testimony.
`Ex. 2031 ¶ 37.
`Petitioner does not oppose Patent Owner’s proposed additions to the
`knowledge of a POSA. See generally Pet. Reply. Prof. Slocum testifies that
`he does not believe that a POSA would require significant background in
`biochemical assays, but agrees with Dr. Katz that a POSA “would readily
`have had access to information making him or her ‘aware of the sensitivities
`of biochemical assays to cross-contamination’ through collaboration with
`colleagues or reading basic literature on the subject.” Ex. 1039 ¶ 138.
`We find that Patent Owner’s additions are supported by the
`’063 Patent. Patent Owner directs us to portions of the Specification that
`discuss immunoassays, magnetic bead assays, and cellular assays, as well as
`the need to avoid cross-contamination for these types of reactions. PO
`Resp. 14; Ex. 1001, 1:24–28, 3:43–45; 3:63–66, 4:25–32, 13:25–50, 15:52–
`16:2, 19:41–59. We find that these disclosures support Patent Owner’s
`contention that a POSA would have been aware of the operational
`requirements of reaction vessel unit washing devices, methods used to
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`process biochemical assays, and the sensitivities of biochemical assays to
`cross-contamination.
`For these reasons, we apply Petitioner’s definition of a POSA as
`modified by Patent Owner’s additions. Pet. 16; PO Resp. 15.4
`
`D. Claim Construction
`In a post-grant review, we apply the same claim construction standard
`as would be used by a district court to construe a claim in a civil action
`involving the validity or infringement of a patent. 37 C.F.R. § 42.200(b)
`(2021). Under that standard, claim terms are given their ordinary and
`customary meaning, as would have been understood by a person of ordinary
`skill in the art at the time of the invention, in light of the language of the
`claims, the specification, and the prosecution history of record. Id.; Phillips
`
`
`4 Patent Owner argues that Petitioner’s declarants, Mr. Yagi and
`Prof. Slocum, are unqualified to testify regarding cross-contamination. PO
`Sur-reply 10–12. In view of our resolution of Petitioner’s challenges, we do
`not need to reach this issue. In any event, Petitioner offers Mr. Yagi as a
`fact witness, not as an expert. See Pet. 5, 60 (describing Mr. Yagi’s
`testimony and referring to him as a “fact witness”). After reviewing his
`qualifications, we find that Prof. Slocum has sufficient technical expertise to
`be qualified to testify from the perspective of a POSA regarding the subject
`matter of the ’063 Patent. Ex. 1006 ¶¶ 2–9 (summary of professional
`background); Ex. 1007 (curriculum vitae). See Sundance, Inc. v. DeMonte
`Fabricating Ltd., 550 F.3d 1356, 1361–64 (Fed. Cir. 2008) (error to admit
`testimony of witness with no relevant technical expertise on issues such as
`obviousness, which requires analysis from the perspective of a POSA); see
`also SEB S.A. v. Montgomery Ward & Co., 594 F.3d 1360, 1373 (Fed. Cir.
`2010), aff’d sub nom. Glob.-Tech Appliances, Inc. v. SEB S.A., 563 U.S. 754
`(2011) (expert testimony admissible where testimony established an
`“adequate relationship” between witness’s experience and the claimed
`invention).
`
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`v. AWH Corp., 415 F.3d 1303, 1312–19 (Fed. Cir. 2005) (en banc); Thorner
`v. Sony Comput. Entm’t Am. LLC, 669 F.3d 1362, 1365–66 (Fed. Cir. 2012).
`Below we address several claim terms. For purposes of determining
`patentability of the challenged claims, it is not necessary to address the
`parties’ dispute about the meaning of “cylindrical inner surface.” We
`determine that no other claim term other than those discussed below requires
`express construction for purposes of resolving the parties’ patentability
`dispute. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803
`(Fed. Cir. 1999) (“[O]nly those terms need be construed that are in
`controversy, and only to the extent necessary to resolve the controversy.”);
`see also Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d
`1013, 1017 (Fed. Cir. 2017) (applying Vivid Techs. in the context of an AIA
`proceeding).
`
`1. “the expelled liquid on the inner surface of the housing”
`For purposes of the Institution Decision, we construed the term “the
`expelled liquid” as “at least the main part of the liquid expelled from the
`reaction vessel unit.” Inst. Dec. 20. Our construction was based on Patent
`Owner’s contention that the phrase “the expelled liquid on the inner surface
`of the housing” means “at least the main part of the liquid expelled from the
`reaction vessel unit onto the inner surface of the housing.” Id. at 17 (quoting
`Prelim. Resp. 15–16, 18). We rejected Petitioner’s contention that “the
`expelled liquid” means “at least some of the liquid expelled from the
`reaction vessel unit.” Id. (quoting Pet. 22).
`In the post-institution phase, Patent Owner contends that “at least the
`main part,” as used in our preliminary construction, would be understood by
`the POSA to mean “all or nearly all of the liquid expelled from the reaction
`
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`PGR2020-00051
`Patent 10,338,063 B2
`vessels onto the wall.” PO Resp. 21–22, 26. Petitioner disputes that
`contention (Pet. Reply 5–12) and argues that the proper construction requires
`that the wind drive “at least some of the expelled liquid” to the drain (id. at 4
`n.5, 12–13).
`After considering both parties’ arguments and evidence, we find that
`the intrinsic evidence favors Patent Owner’s proposed construction. In our
`view, both the claim language and the Specification support Patent Owner’s
`interpretation that “the expelled liquid on the inner surface of the housing”
`means “all or nearly all of the liquid expelled from the reaction vessel onto
`the inner surface of the housing.” PO Resp. 21–26; PO Sur-reply 2–9
`(Patent Owner’s arguments in support of a claim construction that requires
`that “all or nearly all” of the expelled liquid on the inner surface of the
`housing be driven by the wind to the drain).5
`We begin with the language of the claims. Claim 1 recites in pertinent
`
`part:
`
`[1c] a motor for rotating the rotor around a rotation axis in
`a first rotational direction to cause liquid from the reaction vessel
`to be expelled from the at least one opening onto the inner surface
`of the housing;
`[1d] wherein a gap is provided between the inner surface
`of the housing and the outmost surface of the rotor, a size of the
`gap being such that by rotating the rotor a wind is generated
`
`
`5 We construe the entire phrase “the expelled liquid on the inner surface of
`the housing” rather than just the phrase “the expelled liquid” because, as
`Patent Owner points out, some of the liquid may be expelled directly into the
`drain. PO Sur-reply 5. The claims recite that a wind is generated that drives
`“the expelled liquid on the inner surface of the housing” to the drain. Any
`liquid expelled directly to the drain when the rotor rotates does not need to
`be driven by the wind to the drain. Id.
`
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`which drives the expelled liquid on the inner surface of the
`housing to the drain.
`Ex. 1001, 24:5–13 (emphasis added; bracketed notations added to
`correspond with Petitioner’s identification of claim limitations, Pet. 14).
`Claim 12 recites in pertinent part:
`centrifuging the reaction vessel unit by rotating the rotor
`in a first rotational direction, wherein the centrifuging causes
`liquid in the reaction vessel unit to be expelled onto the inner
`surface of the housing, and wherein a size of the gap and a
`rotation speed of the rotor are such that centrifuging generates a
`wind which drives the expelled liquid on the inner surface of
`the housing to the drain.
`Id. at 25:4–11 (emphasis added).
`There is no dispute that “the expelled liquid on the inner surface of the
`housing” refers to liquid that is expelled from the reaction vessel onto the
`inner surface of the housing. Pet. 18, 20; PO Sur-reply 5. The block-quoted
`claim language supports this interpretation. Ex. 1001, 24:5–8, 25:5–7.
`The claims recite that, when the rotor rotates, a wind is generated
`“which drives the expelled liquid on the inner surface of the housing to the
`drain.” Ex. 1001, 24:11–13, 25:9–11. The parties dispute how much of the
`expelled liquid on the inner surface of the housing must be driven by the
`wind to the drain. Petitioner contends that “only some portion” must be
`driven to the drain. Pet. 19; Pet. Reply 12. Patent Owner, on the other hand,
`argues that “all or nearly all” of the expelled liquid on the inner surface of
`the housing must be driven to the drain. PO Resp. 21–26; PO Sur-reply 2–9.
`We agree with Patent Owner that its proposed construction stays true
`to the claim language. PO Sur-reply 5. As just discussed, “the expelled
`liquid on the inner surface of the housing” refers back to an earlier part of
`the claim that recites that rotating the rotor (referred to in claim 12 as
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`“centrifuging”) causes liquid to be expelled from the reaction vessel onto the
`inner surface of the housing. Ex. 1001, 24:5–8, 25:5–7. Claims 1 and 12
`recite “the expelled liquid” without any modifier, such as “at least some.” In
`our view, Patent Owner’s proposed construction is consistent with the claim
`language because the antecedent for “the expelled liquid” is the liquid that is
`expelled from the reaction vessel onto the inner surface of the housing, not
`merely some portion of that liquid.
`Nothing in the claim language suggests that “the expelled liquid on
`the inner surface of the housing” is divisible, with some of the liquid being
`driven by the wind to the drain and some of the liquid not being driven by
`the wind to the drain. For example, we see no support in the claim language
`for Petitioner’s argument that “the first expelled milliliter qualifies as ‘liquid
`. . . expelled,’ and the second milliliter also qualifies as ‘liquid . . . expelled,’
`and so on.” Pet. 20 (citing Ex. 1006 ¶ 65). Although “all or nearly all” is
`not expressly recited in the claim, neither is “some.” As between these two
`constructions, “all or nearly all” more closely aligns with the language and
`structure of claims 1 and 12, including the antecedent for “the expelled
`liquid on the inner surface of the housing,” which in our view refers to the
`undivided whole of the liquid.6
`Petitioner argues that claim limitation “[1c] does not specify an
`amount of liquid, and thus is satisfied when any portion of liquid in a
`
`
`6 In the Institution Decision, we stated that “the claim language supports any
`of three possible constructions for ‘the expelled liquid,’ i.e., all, some, or
`most of the liquid expelled from the reaction vessel unit.” Inst. Dec. 19.
`Upon consideration of the record now before us, we determine that our
`preliminary finding is incorrect to the extent it implies that the claim
`language supports a construction requiring that only some of the liquid on
`the inner surface of the housing be driven by the wind to the drain.
`
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`PGR2020-00051
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`reaction vessel is expelled onto the housing.” Pet. Reply 12. Petitioner’s
`argument is not helpful in construing the phrase “the expelled liquid on the
`inner surface of the housing” in claim limitation [1d] because it does not
`address how much of the expelled liquid on the inner surface of the housing
`must be driven by the wind to the drain. Petitioner’s follow-on argument
`about claim limitation [1d] is not persuasive because there is no support for
`construing “the expelled liquid” as referring “equally to each individual drop
`of liquid that is expelled onto the housing’s inner surface” (Pet. Reply 13)
`instead of “the expelled liquid” as a whole.
`We agree with Patent Owner that dependent claims 7 and 17 are
`consistent with construing claims 1 and 12 as requiring that “all or nearly
`all” of the expelled liquid on the inner surface of the housing be driven by
`the wind to the drain. PO Sur-reply 6–7. Claim 7 depends from claim 1 and
`recites that “a liquid film on the inner surface on a rear side of the drain with
`respect to the first rotational direction is driven into the drain by rotating the
`rotor with a second rotational direction.” Ex. 1001, 24:34–37. Claim 17
`depends from claim 12 and recites that “a liquid on the inner surface on the
`rear side of the drain with respect to the first rotational direction is driven
`into the drain by rotating the rotor in a second rotational direction.” Id.
`at 26:7–10. Dependent claims 7 and 17 demonstrate that independent
`claims 1 and 12 are broad enough to encompass an embodiment in which
`most, but not all, of the expelled liquid on the inner surface of the housing is
`driven by the wind to the drain after rotating the rotor in a first rotational
`direction. The parties agree that “a liquid” in claim 17 is the “residual
`liquid” discussed in the Specification. PO Sur-reply 7; Ex. 1039 ¶ 39;
`Ex. 1001, 3:41–43 (“Any residual liquid remaining in the housing after
`switching off the aspiration pump can be removed manually.”). We find that
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`“a liquid film” in claim 7 likewise refers to this residual liquid. A small
`amount of residual liquid remaining on the inner surface of the housing is
`not inconsistent with a requirement that “all or nearly all” of the expelled
`liquid on the inner surface of the housing must be driven to the drain.
`Next, we turn to the Specification. Both parties rely on the
`Specification as support for their proposed constructions, and in some cases,
`they offer competing interpretations of the same Specification passages.
`Pet. 19; PO Resp. 23–25; Pet. Reply 5–10; PO Sur-reply 2–4.
`For example, both parties rely on the following passage from the
`Specification:
`[A] gap is provided between the inner surface and the rotor so
`that by rotating the rotor a wind is generated which drives the
`expelled fluid on the inner surface to the drain wherein an
`aspiration pump is connected to the drain for discharging fluid.
`An aspiration pump connected to the drain of the centrifuge
`allows a faster and improved clearing of the housing. This is
`important for avoiding cross-contaminations based on sample
`liquid present on the walls and bottom of the housing of the
`centrifuge. By the connected aspiration pump the liquid
`discharged from the reaction vessel(s) is sucked immediately
`when the pump is switched on. The pump can either be running
`during the centrifugation or switched on at any point of time as
`desired. Any residual liquid remaining in the housing after
`switching off the aspiration pump can be removed manually.
`However, the main part will already be removed by the pump
`and thus, decreases the risk of any cross-contamination
`enormously.
`Ex. 1001, 3:29–45; see Pet. 19; Pet. Reply 7–8; PO Sur-reply 4.
`Petitioner relies on the above-quoted passage as support for its
`argument that “‘the expelled liquid’ that the ‘wind . . . drives . . . to the
`drain’ in limitation [1d] cannot refer to all of the liquid that is expelled from
`the microplate; it must refer to only some portion of the liquid that is
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`expelled from the microplate.” Pet. 19. We disagree. That some expelled
`liquid remains in the housing does not mean that only some of the expelled
`liquid needs to be driven to the drain. Instead, the Specification states that
`“the main part [of the liquid discharged from the reaction vessel(s)] will
`already be removed by the pump [i.e., through the drain] and thus, decreases
`the risk of any cross-contamination enormously.” Ex. 1001, 3:37–45. In our
`view, the Specification’s reference to “residual liquid remaining in the
`housing” (id. at 3:41–43) is consistent with a requirement that all or nearly
`all of the expelled liquid on the inner surface of the housing be driven to the
`drain.
`
`Petitioner interprets the above-quoted passage as teaching that a pump
`decreases the risk of cross-contamination,7 and the wind plays no role. Pet.
`Reply 7–8. We disagree. The Specification discusses both a wind and a
`pump and then states “[t]his is important for avoiding cross-contaminations
`based on sample liquid present on the walls and bottom of the housing of the
`centrifuge.” Ex. 1001, 3:29–37. In our view, “this” refers to both the wind
`and the pump.8 The wind helps to avoid cross-contamination by driving
`
`
`7 We accept Petitioner’s definition of “cross-contamination,” which is based
`on Dr. Nisson’s testimony that “[c]ross-contamination can occur when
`material from the wells of the microtiter plate is removed and some of the
`material gets into wells other than [the ones] they originated in.” Ex. 1040,
`23:16–22; Pet. Reply 6. The ’063 Patent discusses the need to avoid both
`“cross-contamination” and “contamination.” Ex. 1001, 3:35–37, 3:63–66,
`4:25–28, 15:61–16:2. We understand both of these terms as referring to the
`cross-contamination described in Dr. Nisson’s testimony.
`8 Petitioner relies on Dr. Nisson’s deposition testimony as support for its
`interpretation of the Specification, arguing that Dr. Nisson admitted that
`“this” refers to the pump. Pet. 7 (citing Ex. 1040, 92:1–93:8). To the extent
`the testimony supports Petitioner’s argument (Ex. 1040, 93:3–8), we find
`that Dr. Nisson’s testimony is inconsistent with the intrinsic evidence and
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`“liquid present on the walls” of the housing to the drain, and the pump helps