• Ebay Inc. / Alibaba.Com Hong Kong Ltd. et al. v. Global Equity Management (SA) Pty. Ltd.Rehearing granted
  PTAB · Oct 12, 2018 · IPR2016-01828 · APJ Kevin C Trock · IPR · Rehearing

  Rehearing was granted in part: review was instituted on all challenged claims and grounds, but claims 16 and 28 were not shown unpatentable because their scope could not be determined without speculation.

  RulingsRehearing decision

  • RehearingRehearing, grantedGranted in part

    “For the reasons explained below, we grant Patent Owner’s request for rehearing to the extent we (1) modify our Institution Decision to institute on all of the challenged claims, including claims 16 and 28, and all of the grounds presented in the Petition, including Ground 2; and (2) modify our Final Written Decision to include a determination with respect to claims 16 and 28. We deny, however, Patent Owner’s request for rehearing to the extent we decline to read claims 16 and 28 on the prior art.” slip op. at 2

  • PTAB / AIA Trials › Institution threshold (reasonable likelihood / more likely than not)InstitutedInstituted

    “In SAS, the Supreme Court held that a decision to institute under 35 U.S.C. § 314 may not institute on less than all claims challenged in the petition. SAS Inst., Inc., 1348 at 1359–60. In our Institution Decision, we determined that Petitioner demonstrated a reasonable likelihood that it would establish that at least one of the challenged claims of the U.S. Patent No. 8,650,591 B2 is unpatentable. Inst. Dec. 23. Because of the Supreme Court’s ruling in SAS, we now modify our Institution Decision to institute on all of the challenged claims, including claims 16 and 28, and on all of the grounds presented in the Petition, including Ground 2, and we determine, in this Decision on Patent Owner’s Motion for Rehearing, whether claims 16 and 28 have been shown, by a preponderance of the evidence, to be unpatentable.” slip op. at 4

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “If our unpatentability analysis requires “considerable speculation as to the meaning and assumptions as to the scope” of the claims, In re Steele, 305 F.2d 859, 862 (CCPA 1962), the differences between the claimed invention and the prior art cannot be ascertained. See id.; see also BlackBerry Corp. v. MobileMedia Ideas, LLC, Case IPR2013-00036, slip op. at 19–20 (PTAB Mar. 7, 2014) (Paper 65) (citing Steele, 305 F.2d at 862–63 for the proposition that “the prior art grounds of unpatentability must fall, pro forma, because they are based on speculative assumption[s] as to the meaning of the claims” and reasoning that “an obviousness determination based on less than all of the claimed elements is speculative as to the meaning or scope of the claims”). In other words, “[w]ithout ascertaining the proper claim scope, we cannot conduct a necessary factual inquiry for determining obviousness—ascertaining differences between the claimed subject matter and the prior art.” Id. at 20 (citing Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966)).” slip op. at 6

  • Prior constructionPrior construction adoptedDecided for patent owner

    “least one partition of said at least one secondary storage device through said secondary storage partitions window,” “means for manipulating said at least one cabinet record through said cabinet visible partition window,” and “means for modifying said at least one cabinet record through said cabinet visible partition window.” Ex. 101, 9:66–10:25. In related litigation, the district court found in its claim construction opinion that the ’400 patent does not provide structure corresponding clearly to the functions of these limitations. Ex. 1010, 49–61. We have reviewed and considered the district court’s analysis and findings and we concur with the district court’s conclusion. We are unable to discern structure in the ’400 patent that corresponds clearly to the functions recited in the “means for” limitations of claim 16. Claim 28 recites similarly “program code for configuring said at least one partition of said at least one secondary storage device through a secondary storage partitions window,” “program code for manipulating said virtual cabinet record through said cabinet visible partition window,” and “program code for means for modifying said at least one cabinet record through said cabinet visible partition window.” Ex. 1001, 10:65–11:29. The district court also found that the ’400 patent did not provide structure corresponding clearly to the function of these limitations. Ex. 1010, 49–61. We have reviewed and considered the district court’s analysis and findings and we concur with the district court’s conclusion. We are unable to discern structure in the ’400 patent that corresponds clearly to the functions recited in the “program code for” limitations of claim 28.” slip op. at 5

  Claim construction§ 103 obviousnesscites Graham
  Patents in suitUS 6,690,400
• SK Hynix Inc. / SK Hynix America Inc. et al. v. Netlist, Inc.All claims unpatentable
  PTAB · Jul 5, 2018 · IPR2017-00561 · APJ Bryan F Moore · IPR · Final written decision

  Claims 2–7 were held unpatentable as obvious over Averbuj and Tsern; trial as to claim 1 was terminated based on collateral estoppel.

  RulingsFinal written decision

  • PTAB / AIA Trials › §315(e) estoppelEstoppel appliesDecided for petitioner

    “Patent Owner asserts that “collateral estoppel does not apply to the application of the claim 1 limitations in assessing dependent claims 2–7.” Id. at 2. Patent Owner further asserts “[a] party seeking to apply collateral estoppel based on a prior action must show that (1) the identical issue was actually litigated; (2) the issue was actually decided in a final decision on the merits; (3) the issue was necessary to the final decision; and (4) the party being estopped was adequately represented in the prior action [i.e. “the United Access test”].” Id. at 2 (citing United Access Techs., LLC v. CenturyTel Broadband Services LLC, 778 F.3d 1327, 1331 (Fed. Cir. 2015)). We agree that this is the proper test to use to assess the applicability of collateral estoppel. Nevertheless, we note United Access applies collateral estoppel in a different context and suggests that issue preclusion can be applied in an obvoisness challenge, even if the final decision on the original issue was considered under an anticipation challenge. In particular, in United Access it was noted that “[i]ssue preclusion [traditionally called “collateral estoppel”3] applies to issues litigated in prior disputes . . . [and, thus, i]t thus makes no difference that the earlier no-damages-due-to-competition ruling arose in a case under the Truth in Negotiation Act and that this dispute arises under the False Claims Act and the common law.” United Access, 778 F.3d. at 726. The “issue” of whether Averbuj teaches the limitations of claim 1 is identical to the issue in and has been litigated in the ‘970 IPR which found that Averbuj anticipates the limitations of claim 1.” slip op. at 10

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “1475, 1480 (Fed. Cir. 1994). Only those terms that are in controversy need to be construed, and only to the extent necessary to resolve the controversy. Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999); Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., 868 F.3d 1013, 1017 (Fed. Cir. 2017).” slip op. at 16

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “the ‘434 Patent would have been someone with “a Bachelor’s degree in electrical engineering, computer engineering, or in a related field and at least one year of work experience relating to memory systems, and would be familiar with the design of memory devices, memory modules, and BIST.” Pet. 9 (citing Ex. 1003 ¶ 51). Patent Owner asserts through its declarant: [A Person of ordinary skill in the art at the time of the invention would have been] working on the design of memory devices, would have at least a Bachelor of Science degree in Electrical and/or Computer Engineering, and at least five years of industry experience designing memory devices and controllers. Alternatively, one of ordinary skill in the art would have a Master of Science degree in Electrical and/or Computer Engineering, and at least three years of industry experience designing memory devices and controllers. Also alternatively, one of ordinary skill in the art would have a Doctorate degree in Electrical and/or Computer Engineering, and have at least one year of industry experience designing memory devices and controllers. I agree with Petitioner’s expert that the memory industry requires a POSITA with industry experience. Ex. 2010 ¶¶ 32–33. 16 Neither party has argued that the difference between the parties’ articulated level of skill should change the analysis as to patentability. Therefore, we adopt Petitioner’s articulation of the level of skill, above, and acknowledge that, commensurate with that articulation of the level of skill, the level of ordinary skill in the art is also reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 16

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)UnpatentableNot shown unpatentableMixed

    “Pet. 41. In other words, Petitioner asserts that because a BIST unit can be incorporated into a chip mounted on a PCB and because memory module 12 is part of the BIST unit, memory unit 12 is mounted on a PCB. We disagree. Unlike claim 1, which simply requires the memory unit is “on” the PCB, claim 2 requires that the memory module be a “physically separate component” and “mounted” on the PCB. Petitioner has not shown sufficient support for its broad reading that a module which is a circuit embedded in a larger circuit included in a chip may be considered a physically separate component mounted on a PCB. Claims 3–7 depend from claim 2, and the Petition fails to provide additional prior art disclosures that cure the deficiency with respect to claim 2; that is, disclosure of separate components 22 mounted on a printed circuit board in Averbuj. Pet. 41–48. Thus, Petitioner has failed to establish, by a preponderance of the evidence, its assertion that claims 2–7 are anticipated by Averbuj.” slip op. at 22

  Patent outcomesUS 8,001,434 unpatentable
  Claim construction§ 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,001,434
• SK Hynix Inc. / SK Hynix America Inc. et al. v. Netlist, Inc.All claims unpatentable
  PTAB · Jul 5, 2018 · IPR2017-00577 · APJ Bryan F Moore · IPR · Final written decision

  Claims 1–3, 7, 8, and 10–12 are unpatentable as obvious over Halbert and Amidi; the other asserted grounds did not establish unpatentability.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Neither party has argued that the difference between the parties’ articulated level of skill should change the analysis as to patentability. Therefore, we adopt Petitioner’s articulation of the level of skill and acknowledge that the level of ordinary skill in the art is also reflected by the prior art of record. See Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. 10 Cir. 2001); In re GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995); In re Oelrich, 579 F.2d 86, 91 (CCPA 1978).” slip op. at 10

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)No construction neededOther

    “C. Claim Construction Analysis We determine that it is not necessary to provide an express interpretation of any term of the claims.” slip op. at 11

  • BurdenNot shown unpatentable

    “written to or read from simultaneously. Pet. 37–41. In particular, Petitioner asserts that Halbert’s directing of data, during a write operation, from the system memory data bus to registers 126 and 128 in successive clock cycles means that data being received by the memory devices corresponding to registers 126 and 128, respectively (e.g., ranks 140 and 142, respectively), occurs in successive clock cycles. Thus, according to Petitioner, “those memory devices associated with register 126 (i.e. Rank 140) receive data transmission from the system memory controller in the first clock cycle, but not in the second clock cycle . . . [and] those memory devices associated with register 128 (i.e., Rank 142) receive data transmissions from the system memory controller in the second clock cycle, but not in the first clock cycle.” Id. at 38. Therefore, according to Petitioner, Halbert does not, and cannot, write to the memory devices in ranks 140 and 142 simultaneously, because the memory devices in ranks 140 and 142 do not receive data concurrently. Id. In its Preliminary Response, Patent Owner asserts8 while data is sequentially latched onto registers 126 and 128, that data is then concurrently, not sequentially, written to memory device array 140/142—such operation is illustrated in Fig. 4, 8 Patent Owner chose not to request additional briefing to address this ground and arguments in the Preliminary Response are generally waived (Paper 8, 2–3), however, we acknowledge these arguments due to the unusual circumstance created by the Supreme Court’s decision in SAS. 15 above. Thus, all of Halbert’s memory devices are selected or enabled concurrently such that Halbert can write to all of its memory devices simultaneously. This is not, and is exactly counter to, the Petitioner’s assertions that the memory devices in ranks 140 and 142 receive—and thus, store—data sequentially. Prelim. Resp. 27–28. We agree. Petitioner has not explained how latching data to registers 126 and 128 is data transmission between a memory controller and a memory module when registers 126 and 128 are outside of the memory module. Moreover, Petitioner’s arguments and evidence with respect to claims 2, 3, 7, 8, and 10–12 do not cure this deficiency.” slip op. at 15

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundReasonable expectation foundUnpatentable

    “Based on Petitioner’s citations to specific prior art disclosures and supporting evidence, we are persuaded that Petitioner sets forth sufficient articulated reasoning with rational underpinning to support the legal conclusion that it would have been obvious to modify the teachings of Halbert with Amidi’s teachings to include rank select functionality. Pet. 64– 66. For example, Petitioner asserts: 19 To employ this chip select functionality of Amidi in the system of Halbert would have been only the arrangement old elements with each performing the same function it had been known to perform and yielding no more than one would expect from such an arrangement, i.e., the predictable result of operating each rank at desired times, and well within the level of ordinary skill to achieve. EX1003 ¶¶175-176. Moreover, a person of ordinary skill in the art would have been motivated to use the chip select functionality of Amidi in the system of Halbert to permit the use of lower density, and therefore cheaper and more readily available, memory in the system of Halbert, while using the existing address and data signal lines of Halbert. EX1019, ¶[0008]; see also id., ¶¶ [0002- 0012]; EX1003 ¶177. A skilled artisan would also have been motivated to include such prior art chip selection signals in Halbert in order to follow the traditional design of memory ranks including the use of traditional memory devices and the traditional address signals, as Halbert explains. EX1005, 3:55-57; EX1003 ¶178. Furthermore, Halbert suggests such a use by disclosing that “[m]any other variations on the illustrated embodiments are possible. For instance, . . . [t]he illustrated examples also show two ranks of memory, but other numbers of ranks are also possible.” EX1005, 9:20-26. Skilled artisans at the time would have understood that, in case the number of ranks is increased, chip/bank select signals would need to be used to activate some but not all of the ranks. See, e.g., EX1019 at FIGS. 5, 6A-6B (showing logic circuitry to generate chip select signals for” slip op. at 19

  Patent outcomesUS 8,516,185 unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 8,516,185
• Arista Networks, Inc. v. Cisco Systems, Inc.No claims unpatentable
  PTAB · May 25, 2017 · IPR2016-00306 · APJ Miriam L Quinn · IPR · Final written decision

  Claim 63 was not shown unpatentable because Spinney does not disclose performing the selecting and determining steps in parallel.

  RulingsFinal written decision

  • Expert testimonyPetitioner expert discountedDecided for patent owner

    “First, we give no credit to Dr. Chao’s opinion in this regard because it is not supported by Spinney. Specifically, we give no weight to Dr. Chao’s opinion that “Spinney makes clear that the CAM lookup and the hashing function (i.e., the forwarding lookup) take place at the same time.” Ex. 1002 ¶ 53. Instead, we find that the parallel operations in Spinney are confined to (1) applying the hash function to the 48-bit address and (2) performing a CAM lookup of the same 48-bit address. For example, Spinney discloses in Figure 8 that incoming address field 85 is subjected to hash function 86 to produce another 48-bit value. See id. at Fig. 8, 15:21−24; 16:16−19 (“The 48-bit destination address 61 from an incoming packet is simultaneously subjected to the hash function 86 and a CAM match” (emphasis added)), 16:44−46 (“this compare in the CAM is done in parallel with the hash function” (emphasis added)). The application of the hash function and the performance of the hash lookup are two different operations that produce different results. The hash function application produces a hashed 48-bit value, while the hash lookup results in pointing to an entry in the translation table that includes the gigaheader information, for processing the packet. See id. at Fig. 8 (identifying hash function 86 applied to input address 85, resulting in hashed address 89); 15:60−63. Spinney further discloses that the hash lookup is performed only if a CAM match is not found and, therefore, must occur after the CAM lookup is performed. Id. at 16:20–26 (“[I]f a CAM match is found in CAM 23, an index into the translation table 94 is immediately generated as indicated by the line 100. If not, the 16-bit field 88 of the hashed address 87 is used to index into the hash table 89 . . . .” (emphasis added)).” slip op. at 14

  • Novelty / Anticipation (§102) › Anticipation standard (single reference, every element)Not shown unpatentableNot shown unpatentable

    “is not supported by Spinney. Specifically, we give no weight to Dr. Chao’s opinion that “Spinney makes clear that the CAM lookup and the hashing function (i.e., the forwarding lookup) take place at the same time.” Ex. 1002 ¶ 53. Instead, we find that the parallel operations in Spinney are confined to (1) applying the hash function to the 48-bit address and (2) performing a CAM lookup of the same 48-bit address. For example, Spinney discloses in Figure 8 that incoming address field 85 is subjected to hash function 86 to produce another 48-bit value. See id. at Fig. 8, 15:21−24; 16:16−19 (“The 48-bit destination address 61 from an incoming packet is simultaneously subjected to the hash function 86 and a CAM match” (emphasis added)), 16:44−46 (“this compare in the CAM is done in parallel with the hash function” (emphasis added)). The application of the hash function and the performance of the hash lookup are two different operations that produce different results. The hash function application produces a hashed 48-bit value, while the hash lookup results in pointing to an entry in the translation table that includes the gigaheader information, for processing the packet. See id. at Fig. 8 (identifying hash function 86 applied to input address 85, resulting in hashed address 89); 15:60−63. Spinney further discloses that the hash lookup is performed only if a CAM match is not found and, therefore, must occur after the CAM lookup is performed. Id. at 16:20–26 (“[I]f a CAM match is found in CAM 23, an index into the translation table 94 is immediately generated as indicated by the line 100. If not, the 16-bit field 88 of the hashed address 87 is used to index into the hash table 89 . . . .” (emphasis added)).” slip op. at 14

  Patent outcomesUS 7,023,853 not shown unpatentable
  § 102 anticipation
  Patents in suitUS 7,023,853
• Varian Medical Systems, Inc. v. William Beaumont HospitalNo claims unpatentable
  PTAB · May 4, 2017 · IPR2016-00162 · APJ Michael W Kim · IPR · Final written decision

  Claims 1–14, 16–29, 33, and 35–38 were not held unpatentable because the strong evidence of industry praise and long-felt need, with other objective evidence, outweighed the obviousness showing.

  RulingsFinal written decision

  • Claim Construction › Threshold & procedure › Whether a term needs construction (O2 Micro)Other

    “its broadest reasonable construction in light of the specification of the patent in which it appears. 37 C.F.R. § 42.100(b); see also Cuozzo Speed Techs., LLC v. Lee, 136 S.Ct. 2131, 2142 (2016) (affirming that USPTO has statutory authority to construe claims according to 37 C.F.R. § 42.100(b)). Under the broadest reasonable construction standard, claim terms are generally given their ordinary and customary meaning, as would have been understood by one of ordinary skill in the art in the context of the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). For the purposes of this Decision, we determine that only the following claim terms need express interpretation. See 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.”). 7 A.L. Boyer, Laser “cross-hair” sidelight, Med. Phys., 5:58-60 (1978) (Ex. 1108, “Boyer”).” slip op. at 6

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner

    “dimensional information” appears facially to be co-extensive with any information relevant to three dimensions. We discern that “length, width, and depth” are just such information. We have considered Patent Owner’s above-cited portions of the ’502 Patent, but are unpersuaded that those portions narrow “three dimensional information” with sufficient “reasonable 8 In evaluating the assertions set forth in the Declaration of James Balter, Ph.D., in Support of Petitioner’s Reply (Ex. 1500), we considered Patent Owner’s Motion for Observations on the Cross-Examination of Dr. James Balter (Paper 48) and Petitioner’s Response to Patent Owner’s Motion for Observations on Cross-Examination (Paper 56). 9 In the Decision on Institution, we preliminarily agreed with Petitioner’s proposed construction of “three dimensional information.” Dec. 7–8. clarity, deliberateness, and precision” such that one of ordinary skill would have understood “three dimensional information” as co-extensive with Patent Owner’s proffered construction. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). For example, column 2, lines 42–48 and 51–55 certainly disclose that “volume” is desirable, but does not provide any equivalence between “three dimensional information” and “volume.” Indeed, column 2, lines 54–55 disclose “provide information regarding the location of soft-tissue target volumes,” indicating that “information” is a subset of “volume.” In another example, column 3, lines 40–43, mentions “three-dimensional (3- D) images,” which we agree would appear to require “volumetric” data; however, the claim limitation at issue is the broader term “three dimensional information.” In a further example, column 9, line 62, through column 10, line 5, clearly refers to “volumetric data,” but does not indicate its relation to “three dimensional information.” In yet another example, column 16, lines 43–45 and 58–62, do not recite “three dimensional information,” instead disclosing “3-D structure” and “3-D nature” in relation generally to “volumetric data,” but, again, not in a manner sufficient to indicate a particular relationship. Finally, in regard to assertions set forth in the Declaration of Dr. Hashemi, we discern some merit in his assertion that when reading the claim limitation “three dimensional information” in conjunction with another claim limitation “cone-beam computed tomography,” “a CBCT image is a volumetric image that provides the location, shape, and spatial orientation of the target volume in all directions, not just its length, width, and depth.” Ex. 2080 ¶ 85. The claim limitation at issue, however, reads “an image of said object, wherein said image contains at least three dimensional information of said object based on one rotation of said x-ray source around said object” (emphasis added). Accordingly, the claim limitation does not preclude an image having more information than “information concerning three dimensions of an object (such as length, width, and depth),” such as “a volumetric image of an object generated by reconstructing 2-D projection images.” Under Patent Owner’s construction, however, the image would be required to have such information. We are unpersuaded that such information is required under a proper construction of “three dimensional information” for the reasons set forth supra. We construe “three dimensional information” as “information concerning three dimensions of an object (such as length, width, and depth).”” slip op. at 7

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyDecided for patent owner

    “In the Institution Decision, we preliminary determined that “we are not persuaded that the term ‘computer’ fails to recite sufficiently definite structure. As a result, we decline to construe this limitation as a means-plusfunction limitation in accordance with § 112 ¶ 6.” Dec. 10. In its Response, Patent Owner agreed with the Board’s preliminary determination. PO Resp. 11. Petitioner did not address this construction in its Reply. See generally Pet. Reply 1–4. After considering our preliminary determination anew, in light a complete trial record, we remain unpersuaded that the term “computer” fails to recite sufficiently definite structure. Accordingly, we decline to construe this limitation as a means-plus-function limitation in accordance with § 112 ¶ 6.” slip op. at 10

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Dr. Balter, Petitioner’s expert, proffers that a hypothetical person of ordinary skill in the art, with respect to and at the time of the’502 patent, would have the following qualifications: “a medical physicist with a Ph.D. (or similar advanced degree) in physics, medical physics, or a related field, and two or more years of experience in radiation oncology physics and image processing/computer programming related to radiation oncology applications.” Ex. 1102 ¶ 13. Dr. Hashemi, Patent Owner’s expert, essentially agrees, with the only major differences to the above being that an M.S. is acceptable in lieu of a Ph.D, and that three years of experience is preferred. Ex. 2080 ¶ 17. Nominally, we accept Petitioner’s proffered level of ordinary skill in the art based on Dr. Balter’s more complete explanation. We note, however, that neither party has explained substantively any significance that the difference in the proffered levels of ordinary skill in the art would have in the obviousness analysis. See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966); Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he level of skill in the art is a prism or lens through which a judge, jury, or the Board views the prior art and the claimed invention.”); Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991) (“The importance of resolving the level of ordinary skill in the art lies in the necessity of maintaining objectivity in the obviousness inquiry.”). To that end, we note that the prior art itself often reflects an appropriate skill level. See Okajima, 261 F.3d at 1355.” slip op. at 10

  Patent outcomesUS 6,842,502 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 6,842,502
• Varian Medical Systems, Inc. v. William Beaumont HospitalNo claims unpatentable
  PTAB · May 4, 2017 · IPR2016-00160 · APJ Matthew R Clements · IPR · Final written decision

  Claims 1–14, 16–29, 33, and 35–38 were not held unpatentable because Petitioner failed to show the Jaffray references were prior art or that the asserted combination rendered the claims obvious.

  RulingsFinal written decision

  • Disclosure Requirements (§112) › Written description (Ariad)Entitled to earlier dateDecided for patent owner

    “Having considered the arguments and evidence, we agree with Patent Owner that the ’590 Application provides sufficient written description support for “said computer receives said image of said object and based on said image sends a signal to said radiation source that controls said path of said radiation source.” In particular, we credit the testimony of Dr. Hashemi that a person of ordinary skill in the art would have understood from the ’590 Application that components of the disclosed system were computer-controlled based upon, e.g., the depiction of an Elekta SL-20 in 9 Both the burden of production and the burden of persuasion. Figure 3 of the ’590 Application and from the depiction of an electronic portal imaging device. (Ex. 2080 ¶¶ 109–116, 125–132). Petitioner’s arguments are not persuasive because they are based upon a construction of the disputed limitation that excludes human intervention. We have construed that limitation, however, to encompass a person or user operating the computer to perform the recited control functions. In post-hearing briefing, both parties agree that this is the proper construction. Papers 80, 81. As a result, even if we assume, as Petitioner contends in Reply, that a person of ordinary skill in the art reading the ’590 Application would have understood that “the step of controlling the path of the beam based on image data was performed by a human operator, not a computer acting autonomously” (Pet. Reply 9) and that “[t]he computer elements connected to table control . . . are all operated in response to commands received from a human operator, and none are tied to table movements specifically based on image data” (id.), it would not show a lack of support for the disputed limitation, because the disputed limitation does not exclude human intervention. Accordingly, we determine that Petitioner has not shown sufficiently,” slip op. at 18

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedNot shown unpatentable

    “Having considered the arguments and evidence, we agree with Patent Owner that the ’590 Application provides sufficient written description support for “said computer receives said image of said object and based on said image sends a signal to said radiation source that controls said path of said radiation source.” In particular, we credit the testimony of Dr. Hashemi that a person of ordinary skill in the art would have understood from the ’590 Application that components of the disclosed system were computer-controlled based upon, e.g., the depiction of an Elekta SL-20 in 9 Both the burden of production and the burden of persuasion. Figure 3 of the ’590 Application and from the depiction of an electronic portal imaging device. (Ex. 2080 ¶¶ 109–116, 125–132). Petitioner’s arguments are not persuasive because they are based upon a construction of the disputed limitation that excludes human intervention. We have construed that limitation, however, to encompass a person or user operating the computer to perform the recited control functions. In post-hearing briefing, both parties agree that this is the proper construction. Papers 80, 81. As a result, even if we assume, as Petitioner contends in Reply, that a person of ordinary skill in the art reading the ’590 Application would have understood that “the step of controlling the path of the beam based on image data was performed by a human operator, not a computer acting autonomously” (Pet. Reply 9) and that “[t]he computer elements connected to table control . . . are all operated in response to commands received from a human operator, and none are tied to table movements specifically based on image data” (id.), it would not show a lack of support for the disputed limitation, because the disputed limitation does not exclude human intervention. Accordingly, we determine that Petitioner has not shown sufficiently, on this record, that both Jaffray 1999 SPIE and Jaffray 1999 JRO are prior art to independent claim 1, and the challenged claims that depend therefrom, under 35 U.S.C. § 102(b).” slip op. at 18

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Patents / published applications (effective date, provisional support)Reference not prior artNot shown unpatentable

    “Having considered the parties arguments and evidence regarding “[t]he content and nature of the printed publication, as well as the circumstances surrounding its publication” (Katz, 687 F.2d at 455), we are not persuaded that Petitioner has met its burden of persuasion by showing sufficiently that the portions of Jaffray 1999 SPIE and Jaffray 1999 JRO on which it relies are the work “others.” Unlike in Katz, where the question was “the sufficiency of applicant’s showing to establish that the subject disclosure was his original work, and his alone” (687 F.2d at 455), the question before us is the sufficiency of Petitioner’s showing to establish that the subject disclosure was the work of the non-inventor coauthors of Jaffray 1999 SPIE and Jaffray 1999 JRO. See Dynamic Drinkware, 800 F.3d at 1378 (“In an inter partes review, the burden of persuasion is on the 10 Both the burden of production and the burden of persuasion. 11 At oral argument, counsel for Petitioner indicated that, in his view, it does not matter who has the burden of production. Tr. 20:9, 20:16–17. petitioner to prove ‘unpatentability by a preponderance of the evidence,’ 35 U.S.C. § 316(e), and that burden never shifts to the patentee.”); In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1373 (Fed. Cir. 2016) (“In the context of the present case, however, the notion of burden-shifting is inapposite because the patentee’s position is that the patent challenger failed to meet its burden of proving obviousness.”); see also Duncan Parking Techs., Inc. v. IPS Group Inc., Case IPR2016-00067, slip op. at 8–13 (PTAB Mar. 27, 2017) (Paper 29). Patent Owner presents testimony of Dr. Jaffray and Mr. Drake that the subject matter relied upon by Petitioner was not the work of the non-inventor coauthors, and after considering all relevant arguments and evidence, we are unpersuaded by Petitioner’s assertions that this testimony is unreliable. Dr. Jaffray testifies, for example, that “[t]he JRO article and the SPIE article disclose work done at the direction of me and Dr. Wong in support of the joint research conducted by the two of us.” Ex. 2077 ¶ 2. Dr. Jaffray further testifies that “with the exception of Dr. Siewerdsen coming up with the pre-reconstruction image processing for the SPIE article, the [non-inventor] co-authors did not come up with the ideas for the systems described in those articles.” Id. ¶ 6. Dr. Jaffray describes the contributions of the co-authors as follows:” slip op. at 22

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “D. The Challenged Claims – Obviousness over Jaffray 1999 SPIE, Jaffray 1999 JRO, Adler, and Depp Petitioner asserts that a combination of Jaffray 1999 SPIE, Jaffray 1999 JRO, Adler, and Depp renders obvious claims 1–14, 16–29, 33, and 35–38. Pet. 18–58. Petitioner relies solely upon Jaffray 1999 SPIE and Jaffray 1999 JRO for several limitations of claim 1, including, for example, “a cone-beam computed tomography system comprising: an x-ray source that emits an x-ray beam in a cone-beam form towards said object,” and “a flat-panel imager receiving x-rays after they pass through the object, said imager providing an image of said object.” Pet. 29–31. As discussed above, however, we not persuaded that Jaffray 1999 SPIE and Jaffray 1999 JRO are prior art to claims 1–14, 16–29, 33, and 35–38. Moreover, Petitioner does not contend that Adler or Depp teach these limitations. As a result, we are not persuaded that Petitioner has met its burden of showing, by a preponderance of the evidence, that claims 1–14, 16–29, 33, and 35–38 are obvious over a combination of Jaffray 1999 SPIE, Jaffray 1999 JRO, Adler, and Depp.” slip op. at 31

  Patent outcomesUS 6,842,502 not shown unpatentable
  § 102 anticipation§ 103 obviousness§ 112 disclosurecites Graham
  Patents in suitUS 6,842,502
• Varian Medical Systems, Inc. v. William Beaumont HospitalNo claims unpatentable
  PTAB · May 4, 2017 · IPR2016-00163 · APJ Matthew R Clements · IPR · Final written decision

  Claims 43–46, 48–55, 57, 59–66, and 68 were not held unpatentable because Petitioner did not establish that the Jaffray references were prior art.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “ordinary skill in the art, with respect to and at the time of the’502 patent, would have the following qualifications: “a medical physicist with a Ph.D. (or similar advanced degree) in physics, medical physics, or a related field, and two or more years of experience in radiation oncology physics and image processing/computer programming related to radiation oncology applications.” Ex. 1202 ¶ 13. Dr. Hashemi, Patent Owner’s expert, essentially agrees, with the only major differences to the above being that an M.S. is acceptable in lieu of a Ph.D., and that three years of experience is preferred. Ex. 2080 ¶ 17. Nominally, we accept Petitioner’s proffered level because it is based on Dr. Balter’s more complete explanation. We note, however, that neither party has explained substantively any significance that the difference in the proffered levels of ordinary skill in the art would play in the obviousness analysis. See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966); Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he level of skill in the art is a prism or lens through which a judge, jury, or the Board views the prior art and the claimed invention.”); Ryko Mfg. Co. v. Nu- Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991) (“The importance of resolving the level of ordinary skill in the art lies in the necessity of maintaining objectivity in the obviousness inquiry.”). To that end, we note that the prior art itself often reflects an appropriate skill level. See Okajima, 261 F.3d at 1355.” slip op. at 12

  • Disclosure Requirements (§112) › Written description (Ariad)Written description adequateDecided for patent owner

    “Owner that the ’590 Application provides sufficient written description support for “controlling [said path of / a radiation therapy treatment plan involving] said radiation source based on said image.” In particular, we credit the testimony of Dr. Hashemi that a person of ordinary skill in the art would have understood from the ’590 Application that components of the disclosed system were computer-controlled based upon, e.g., the depiction of an Elekta SL-20 in Figure 3 of the ’590 Application and from the depiction of an electronic portal imaging device. (Ex. 2080 ¶¶ 109–116, 125–132). Petitioner’s arguments are not persuasive because, even assuming that controlling the source path and controlling a radiation therapy treatment plan are “an entirely different class of control step” from controlling patient position (Pet. Reply 8–9), Petitioner has not explained why the portions of the ’590 Application relied upon by Patent Owner do not disclose controlling the source path or controlling a radiation therapy treatment plan.” slip op. at 19

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedNot shown unpatentable

    “Owner that the ’590 Application provides sufficient written description support for “controlling [said path of / a radiation therapy treatment plan involving] said radiation source based on said image.” In particular, we credit the testimony of Dr. Hashemi that a person of ordinary skill in the art would have understood from the ’590 Application that components of the disclosed system were computer-controlled based upon, e.g., the depiction of an Elekta SL-20 in Figure 3 of the ’590 Application and from the depiction of an electronic portal imaging device. (Ex. 2080 ¶¶ 109–116, 125–132). Petitioner’s arguments are not persuasive because, even assuming that controlling the source path and controlling a radiation therapy treatment plan are “an entirely different class of control step” from controlling patient position (Pet. Reply 8–9), Petitioner has not explained why the portions of the ’590 Application relied upon by Patent Owner do not disclose controlling the source path or controlling a radiation therapy treatment plan.” slip op. at 19

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Applicant-admitted prior artReference not prior artNot shown unpatentable

    “[t]he content and nature of the printed publication, as well as the circumstances surrounding its publication” (Katz, 687 F.2d at 455), we are not persuaded that Petitioner has met its burden of persuasion by showing sufficiently that the portions of Jaffray 1999 SPIE and Jaffray 1999 JRO on which it relies are the work “others.” Unlike in Katz, where the question was “the sufficiency of applicant’s showing to establish that the subject disclosure was his original work, and his alone” (687 F.2d at 455), the question before us is the sufficiency of Petitioner’s showing to establish that the subject disclosure was the work of the non-inventor coauthors of Jaffray 13 Both the burden of production and the burden of persuasion. 14 At oral argument, counsel for Petitioner indicated that, in his view, it does not matter who has the burden. Tr. 20:9, 20:16–17. 1999 SPIE and Jaffray 1999 JRO. See Dynamic Drinkware, 800 F.3d at 1378 (“In an inter partes review, the burden of persuasion is on the petitioner to prove ‘unpatentability by a preponderance of the evidence,’ 35 U.S.C. § 316(e), and that burden never shifts to the patentee.”); In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1373 (Fed. Cir. 2016) (“In the context of the present case, however, the notion of burden-shifting is inapposite because the patentee’s position is that the patent challenger failed to meet its burden of proving obviousness.”); see also Duncan Parking Techs., Inc. v. IPS Group Inc., Case IPR2016-00067, slip op. at 8–13 (PTAB Mar. 27, 2017) (Paper 29). slip op. at 23

  Patent outcomesUS 6,842,502 not shown unpatentable
  § 102 anticipation§ 103 obviousness§ 112 disclosurecites Graham
  Patents in suitUS 6,842,502
• Varian Medical Systems, Inc. v. William Beaumont HospitalNo claims unpatentable
  PTAB · May 4, 2017 · IPR2016-00171 · APJ Kalyan K Deshpande · IPR · Final written decision

  Claims 14–19 were not held unpatentable: the Jaffray-based grounds failed because the references were not shown to be prior art, and the Cho-based grounds were outweighed by objective indicia.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Dr. Balter, Petitioner’s expert, proffers that a hypothetical person of ordinary skill in the art, with respect to and at the time of the’765 Patent, would have the following qualifications: “a medical physicist with a Ph.D. 14 Petitioner further cites to papers and exhibits filed in IPR2016-00169. Varian Med. Sys., Inc. v. William Beaumont Hosp., IPR2016-00169, Paper 68 (citing IPR2016-00169: Ex. 1500 ¶¶ 36–38; Ex. 1502, 120:14– 121:11; Ex. 2080 ¶¶ 61‒65, 108, 109, 126‒130). (or similar advanced degree) in physics, medical physics, or a related field, and two or more years of experience in radiation oncology physics and image processing/computer programming related to radiation oncology applications.” Ex. 1202 ¶ 13. Dr. Hashemi, Patent Owner’s expert, essentially agrees, with the only major differences to the above being that an M.S. is acceptable in lieu of a Ph.D., and that three years of experience is preferred. Ex. 2080 ¶ 17. Nominally, we accept Petitioner’s proffered level of ordinary skill in the art based on Dr. Balter more complete explanation. We note, however, that neither party has explained substantively any significance that the difference in the proffered levels of ordinary skill in the art would have in the obviousness analysis. See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966); Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T] he level of skill in the art is a prism or lens through which a judge, jury, or the Board views the prior art and the claimed invention.”); Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991) (“The importance of resolving the level of ordinary skill in the art lies in the necessity of maintaining objectivity in the obviousness inquiry.”). To that end, we note that the prior art itself often reflects an appropriate skill level. See Okajima, 261 F.3d at 1355.” slip op. at 13

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportReference not prior artNot shown unpatentable

    “evidence, we determine that Petitioner has not shown sufficiently, on this record, that both Jaffray 1999 SPIE and Jaffray 1999 JRO are prior art to independent claims 14 and 17, and the challenged claims that depend therefrom, under 35 U.S.C. § 102(b) for the same reasons we set forth in our 16 We recognize that the arguments and evidence argued by both Petitioner and Patent Owner in IPR2016-00169 are not identical to the arguments and evidence advanced here. Although the arguments and evidence set forth here have been reduced from those set forth in IPR2016-00169, presumptively in order to comply with word count limits, we understand the general thrust of the arguments and evidence in this proceeding and IPR2016-00169 to be the same. analysis of claims 1‒13 and 20‒31 of the ’765 patent in IPR2016-00169. Varian Med. Sys., Inc. v. William Beaumont Hosp., IPR2016-00169, Paper 79, 13‒21. We also determine that Petitioner has not met its burden of showing sufficiently that both Jaffray 1999 SPIE and Jaffray 1999 JRO are prior art to independent claims 14 and 17, and the challenged claims that depend therefrom, under 35 U.S.C. § 102(a) for the same reasons we set forth in our analysis of claims 1‒13 and 20‒31 of the ’765 patent in IPR2016-00169. Varian Med. Sys., Inc. v. William Beaumont Hosp., IPR2016-00169, Paper 79, 21‒32.” slip op. at 17

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

    “on Yan to disclose reevaluating and reoptimizing a radiation treatment plan. Pet. 42 (citing Ex. 2010, 11). Petitioner relies on Adler/Depp to meet the claim limitation of “substantially at a time.” Id. at 33‒34, 55. Patent Owner’s arguments are unpersuasive because they are directed to each individual reference’s failure to disclose the claim limitations, rather than to the combination of prior art disclosures. See In re Merck & Co. Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). Although we recognize that the modifying of the radiation therapy treatment plan cannot simply be divorced from the modification occurring “substantially at a time,” Patent Owner’s argument does not rebut sufficiently Petitioner’s argument that a person with ordinary skill in the art would have combined Yan’s modification of the treatment plan such that it occurs “substantially at a time,” as the systems of Adler/Depp. As argued by Petitioner, a person with ordinary skill in the art would have been motivated in order to improving the accuracy and efficacy of radiotherapy through image-guided means. Pet. 44. Furthermore, Patent Owner’s argument does not set forth persuasive evidence why a person of ordinary skill in the art, reading Yan in combination with Adler/Depp, would not have known to modify a treatment plan “substantially at a time” of receiving 3-D images in order to improve accuracy and efficacy, as asserted by Petitioner, and would have had to perform the modification of the treatment plan off-line. As such, we are persuaded by Petitioner that a person of ordinary skill in the art would have combined Yan with Adler/Depp.” slip op. at 30

  • Obviousness (§103) › Objective indicia / secondary considerationsObjective indicia outweighedNot shown unpatentable

    “In light of Patent Owner’s arguments and Petitioner’s reply, we determine that Patent Owner has proffered (1) very strong evidence of industry praise, (2) very strong evidence of long-felt need, (3) moderately strong evidence of commercial success, and (4) moderately strong evidence of copying of the invention set forth in independent claims 14 and 17 for the same reasons we set forth in IPR2016-00170. See Varian Med. Sys., Inc. v. William Beaumont Hosp., IPR2016-00170, Paper 69, 33‒69. Claims 15‒16 and 18‒19 ultimately depend from independent claims 14 and 17, and we determine that a similar weighing for each of claims 15‒16 and 18‒19 results in the same conclusion. Accordingly, for these reasons, we determine that Petitioner has not met its burden of showing that claims 14–19 are obvious. 11. Conclusion For the foregoing reasons, we are unpersuaded that Petitioner has shown, by a preponderance of the evidence, that claims 14–16 are obvious in view of the combination of Cho, Antonuk, Jaffray 1997, Adler, and Depp and that claims 17–19 are obvious in view of the combination of Cho, Antonuk, Jaffray 1997, Adler, Depp, and Yan.” slip op. at 33

  Patent outcomesUS 7,471,765 not shown unpatentable
  § 102 anticipation§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,471,765
• Varian Medical Systems, Inc. v. William Beaumont HospitalNo claims unpatentable
  PTAB · May 4, 2017 · IPR2016-00170 · APJ Kalyan K Deshpande · IPR · Final written decision

  Claims 1–13 and 20–31 were not held unpatentable because the strong evidence of industry praise and long-felt need, with supporting evidence of commercial success and copying, outweighed the obviousness showing.

  RulingsFinal written decision

  • Skill levelSkill level petitioner adoptedDecided for petitioner

    “Dr. Balter, Petitioner’s expert, proffers that a hypothetical person of ordinary skill in the art, with respect to and at the time of the’765 Patent, would have the following qualifications: “a medical physicist with a Ph.D. (or similar advanced degree) in physics, medical physics, or a related field, and two or more years of experience in radiation oncology physics and image processing/computer programming related to radiation oncology applications.” Ex. 1102 ¶ 13. Dr. Hashemi, Patent Owner’s expert, essentially agrees, with the only major differences to the above being that an M.S. is acceptable in lieu of a Ph.D., and that three years of experience is preferred. Ex. 2080 ¶ 17. Nominally, we accept Petitioner’s proffered level of ordinary skill in the art based on Dr. Balter more complete explanation. We note, however, that neither party has explained substantively any significance that the difference in the proffered levels of ordinary skill in the art would have in the obviousness analysis. See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966); Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001) (“[T]he level of skill in the art is a prism or lens through which a judge, jury, or the Board views the prior art and the claimed invention.”); Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991) (“The importance of resolving the level of ordinary skill in the art lies in the necessity of maintaining objectivity in the obviousness inquiry.”). To that end, we note that the prior art itself often reflects an appropriate skill level. See Okajima, 261 F.3d at 1355.” slip op. at 12

  • Claim Construction › Functional claiming / §112(f) means-plus-function › Whether §112(f) applies (Williamson, nonce words)§112(f) does not applyNot shown unpatentable

    “In our Decision on Institution, we were not persuaded that the terms “computer” (claim 1), “controller” (claim 7), “structure” (claim 20), and “support table” (claim 26) fail to recite sufficiently definite structure, and, therefore, we declined to construe these terms as means-plus-function limitations in accordance with 35 U.S.C. § 112 ¶ 6. Dec. 10‒12. Neither Patent Owner nor Petitioner provide any more argument or evidence to disturb our interpretation of these terms. See PO Resp. 12. Accordingly, we do not construe these terms as means-plus-function limitations under 35 U.S.C. § 112 ¶ 6. See SAS Institute, Inc. v. ComplementSoft, LLC., 825 F.3d 1341, 1351 (Fed. Cir. 2016) (The Board may not change a claim interpretation from the institution decision where neither party anticipated that “already-interpreted terms were actually moving targets.”).” slip op. at 6

  • Claim Construction › Intrinsic evidence (Phillips canons) › Plain and ordinary meaning to a POSITATerm construed petitioner constructionDecided for petitioner

    “We begin first with the claim language, and note that “three- dimensional information” appears facially to be co-extensive with any information relevant to three-dimensions. We discern that “length, width, 6 In evaluating the assertions set forth in the Declaration of James Balter Ph.D. in Support of Petitioner’ Reply (Ex. 1500), we considered Patent Owner’s Motion for Observations on the Cross-Examination of Dr. James Balter (Paper 48) and Petitioner’s Response to Patent Owner’s Motion for Observations on Cross-Examination (Paper 56). 7 In the Decision on Institution, we preliminarily agreed with Petitioner’s proposed construction of “three-dimensional information.” Dec. 9–10. and depth” are just such information. We have considered Patent Owner’s above-cited portions of the ’765 patent, but are unpersuaded that those portions narrow “three-dimensional information” with sufficient “reasonable clarity, deliberateness, and precision” such that one of ordinary skill would have understood “three-dimensional information” as co-extensive with Patent Owner’s proffered construction. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). For example, column 2, lines 44‒56 certainly disclose that “volume” is desirable, but does not provide any equivalence between “threedimensional information” and “volume.” Indeed, column 2, lines 55–56 disclose “provide information regarding the location of soft-tissue target volumes,” indicating that “information” is a subset of “volume.” In another example, column 3, lines 41–56, mentions “three-dimensional (3-D) images,” which we agree would appear to require “volumetric data;” however, the claim limitation at issue is the broader term “three-dimensional information.” In a further example, column 9, line 54‒64, clearly refers to “volumetric data,” but does not indicate its relation to “three-dimensional information.” In yet another example, column 16, lines 23–25 and 38–42, do not recite “three-dimensional information,” instead disclosing “3-D structure” and “3-D nature” in relation generally to “volumetric data,” but, again, not in a manner sufficient to indicate a particular relationship. Finally, in regards to assertions set forth in the Declaration of Dr. Hashemi, we discern some merit in his assertion that when reading the claim limitation “three-dimensional information” in conjunction with another claim limitation “cone-beam computed tomography,” “a CBCT image is a volumetric image that provides the location, shape, and spatial orientation of the target volume in all directions, not just its length, width, and depth.” Ex. 2080 ¶ 85. Furthermore, the claim limitation does not preclude an image having more information than “three-dimensional information concerning said object” (such as length, width, and depth), “based on a plurality of two-dimensional projection images.” Under Patent Owner’s construction, however, the image would be required to have such information. We are unpersuaded that such information is required under a proper construction of “three-dimensional information” for the reasons set forth supra. We construe “three-dimensional information” as “information” slip op. at 8

  • Obviousness (§103) › Motivation to combine / reasonable expectation of successMotivation foundDecided for petitioner

    “We are unpersuaded for several reasons. Primarily, we are unpersuaded because a fundamental assumption made by Patent Owner is that the patient must remain unrestrained. Patent Owner makes this assumption based on the assertion that “the primary goal of the Adler/Depp systems is to permit a patient to be relatively unrestrained during the radiotherapy procedure.” PO Resp. 33. We have reviewed Patent Owner’s supporting evidence, and are unpersuaded that the evidence supports Patent Owner’s assertion that “the primary goal of the Adler/Depp systems is to permit a patient to be relatively unrestrained during the radiotherapy procedure.” For example, Patent Owner cites to certain paragraphs of Dr. Hashemi’s Declaration, which in turn cite to certain portions of Depp. Ex. 2080 ¶¶ 117, 133, 136 (citing Ex. 1104, 11:66–12:23, Fig. 9). We have reviewed those portions of Depp, and find that while they do disclose that target location and treatment periods are on the order of seconds, they do not mention anything about “the primary goal of the Adler/Depp systems is to permit a patient to be relatively unrestrained during the radiotherapy procedure.”11 Accordingly, absent such an evidentiary foundation, we do not find credible Dr. Hashemi’s assertions concerning this matter. Even without explicit analysis by Patent Owner, we logically understand the connection between longer image acquisition and processing times, and the higher likelihood of interim patient movement. Absent the aforementioned “primary goal,” however, we are unclear as to why the converse of that goal would not be correct, i.e., that one of ordinary skill would have resolved the timing consideration by restraining the patient. Indeed, in opposition, Petitioner asserts, and we agree, that “POSA would understand that in the majority of radiotherapy treatment settings, patients are in fact restrained to some degree.” Pet. Reply 7‒8 (citing Ex. 1500 ¶¶ 33–35; Ex. 2080 ¶¶ 54–55; Ex. 1502, 142:23–143:19). In particular, we are persuaded by the consistency of Dr. Balter’s and Dr. Hashemi’s testimony that molds were used in 2000 to minimize unwanted patient motion during treatment. Ex. 1500 ¶ 35; Ex. 2080 ¶ 55.” slip op. at 23

  Patent outcomesUS 7,471,765 not shown unpatentable
  Claim construction§ 103 obviousnesscites KSR · Graham
  Patents in suitUS 7,471,765
• Varian Medical Systems, Inc. v. William Beaumont HospitalNo claims unpatentable
  PTAB · May 4, 2017 · IPR2016-00169 · APJ Kalyan K Deshpande · IPR · Final written decision

  Claims 1–13 and 20–31 were not held unpatentable under § 103 because the petitioner did not establish that Jaffray 1999 SPIE and Jaffray 1999 JRO were prior art.

  RulingsFinal written decision

  • Disclosure Requirements (§112) › Written description (Ariad)Entitled to earlier dateDecided for patent owner

    “Having considered the arguments and evidence, we agree with Patent Owner that the ’590 Application provides sufficient written description support for “wherein said receiving said x-rays by said flat panel imager is performed substantially at a time of occurrence of said controlling said path of said beam of radiation through said object.” As an initial matter, we understand that Petitioner acknowledges that the ’590 Application supports the limitation “substantially at a time,” and arguments raised towards this limitation were originally presented as arguments towards indefiniteness.” slip op. at 19

  • Novelty / Anticipation (§102) › Priority / effective filing date / continuation supportPriority date awardedNot shown unpatentable

    “1. Principles of Law Petitioner has the burden of persuasion to prove unpatentability by a preponderance of the evidence. Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1379 (Fed. Cir. 2015). Petitioner also has the initial burden of production to show that a reference is prior art to certain claims under a relevant section of 35 U.S.C. § 102. Id. Once Petitioner has met that initial burden, the burden of production shifts to Patent Owner to argue or produce evidence that the asserted reference is not prior art to certain claims, for example, because those claims are entitled to the benefit of priority of an earlier-filed application. Id. at 1380. Once Patent Owner has met that burden of production, the burden is on Petitioner to show that the claims at issue are not entitled to the benefit of priority of the earlier filed application. Id.” slip op. at 14

  • Novelty / Anticipation (§102) › Prior-art status of a reference › Printed publication / public accessibilityReference not prior artNot shown unpatentable

    “Having considered the parties arguments and evidence regarding, we are not persuaded that Petitioner has met its burden of persuasion by showing sufficiently that the portions of Jaffray 1999 SPIE and Jaffray 1999 JRO on which it relies are the work “others.” Unlike in Katz, where the 10 Both the burden of production and the burden of persuasion. 11 At oral argument, counsel for Petitioner indicated that, in his view, it does not matter who has the burden of production. Tr. 20:9, 20:16–17. question was “the sufficiency of applicant’s showing to establish that the subject disclosure was his original work, and his alone” (687 F.2d at 455), the question before us is the sufficiency of Petitioner’s showing to establish that the subject disclosure was the work of the non-inventor coauthors of Jaffray 1999 SPIE and Jaffray 1999 JRO. See Dynamic Drinkware, 800 F.3d at 1378 (“In an inter partes review, the burden of persuasion is on the petitioner to prove ‘unpatentability by a preponderance of the evidence,’ 35 U.S.C. § 316(e), and that burden never shifts to the patentee.”); In re Magnum Oil Tools Int’l, Ltd., 829 F.3d 1364, 1373 (Fed. Cir. 2016) (“In the context of the present case, however, the notion of burden-shifting is inapposite because the patentee’s position is that the patent challenger failed to meet its burden of proving obviousness.”); see also Duncan Parking Techs., Inc. v. IPS Group Inc., Case IPR2016-00067, slip op. at 8–13 (PTAB Mar. 27, 2017) (Paper 29). Patent Owner presents testimony of Dr. Jaffray and Mr. Drake that the subject matter relied upon by Petitioner was not the work of the non-inventor coauthors, and after considering all relevant arguments and evidence, we are unpersuaded by Petitioner’s assertions that this testimony is unreliable. Dr. Jaffray testifies, for example, that “[t]he JRO article and the SPIE article disclose work done at the direction of me and Dr. Wong in support of the joint research conducted by the two of us.” Ex. 2077 ¶ 2. Dr. Jaffray further testifies that “with the exception of Dr. Siewerdsen coming up with the pre-reconstruction image processing for the SPIE article, the [non-inventor] co-authors did not come up with the ideas for the systems described in those articles.” Id. ¶ 6. Dr. Jaffray describes the contributions of the co-authors as follows:” slip op. at 23

  • Obviousness (§103) › Graham factors (scope of art, differences, level of skill)Not shown unpatentableNot shown unpatentable

    “1999 JRO, Adler, and Depp renders obvious claims 1–13 and 20‒31. Pet. 28–59. Petitioner relies solely upon Jaffray 1999 SPIE and Jaffray 1999 JRO for several limitations of independent claims 1, 7, 20 and 26. For example, claim 1 recites “a cone-beam computed tomography system comprising: an x-ray source that moves about said object and emits toward said object from multiple positions around said object x-ray beams in a cone-beam form” and “a flat-panel imager positioned to receive x-rays after at least a portion of said x-ray beams pass through said object, said imager providing an image that contains three-dimensional information concerning said object based on a plurality of two-dimensional projection images.” Petitioner relies solely on Jaffray 1999 SPIE and Jaffray 1999 JRO to meet these claim limitations. See Pet. 36‒38 (citing Ex. 1005, 17, 25; Ex. 1006, 9; Ex. 1002 ¶¶ 82‒84). Independent claims 7, 20, and 26 recite substantially similar limitations that Petitioner again solely relies on Jaffray 1999 SPIE and Jaffray 1999 JRO as disclosing these limitations. As discussed above, however, we not persuaded that Jaffray 1999 SPIE and Jaffray 1999 JRO are prior art to claims 1–13 and 20‒31. Moreover, Petitioner does not contend that Adler or Depp teach these limitations. As a result, we are not persuaded that Petitioner has met its burden of showing, by a preponderance of the evidence, that claims 1–13 and 20–31 are obvious over a combination of Jaffray 1999 SPIE, Jaffray 1999 JRO, Adler, and Depp.” slip op. at 32

  Patent outcomesUS 7,471,765 not shown unpatentable
  Claim construction§ 102 anticipation§ 103 obviousness§ 112 disclosurecites KSR · Graham
  Patents in suitUS 7,471,765

Holdings, summaries, rulings, issues, outcomes, winners and claim constructions shown for a decision were generated by a large language model reading the opinion. They are a guide to the decision, not the decision. Confirm every one against the court's own text before relying on it. Outcomes read from the patent owner’s side. Party names are extracted from the decision and are missing on about 900 short Director denials and scans, which carry the trial number instead.