EXH IBIT 2010
`
`EXHIBIT 2010
`
`

`
`Trials@uspto.gov
`Tel: 571-272-7822
`
`
`
`
`Paper 9
`Entered: March 5, 2014
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_______________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_______________
`
`CARESTREAM HEALTH, INC.
`Petitioner
`
`v.
`
`SMARTPLATES, LLC
`Patent Owner
`_______________
`
`Case IPR2013-00600
`Patent 8,374,461
`_______________
`
`
`
`Before TREVOR M. JEFFERSON, SCOTT E. KAMHOLZ,
`and DAVID C. McKONE, Administrative Patent Judges.
`
`McKONE, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
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`
`
`
`
`
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`
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`Patent Owner Exhibit 2010
`Petition for IPR Review of Patent No. 6,012,103
`Page 1
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`

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`Case IPR2013-00600
`Patent 8,374,461
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`I. INTRODUCTION
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`A. Background
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`Carestream Health, Inc. (“Petitioner”) filed a Petition (Paper 4, “Pet.”) to
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`institute an inter partes review of claims 13-23 and 27-31 of U.S. Patent 8,374,461
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`(Ex. 1001, “the ’461 patent”). See 35 U.S.C. § 311. Smartplates, LLC (“Patent
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`Owner”) did not file a preliminary response.
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`The standard for instituting an inter partes review is set forth in 35 U.S.C.
`
`§ 314(a), which provides as follows:
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`THRESHOLD.—The Director may not authorize an inter
`partes review to be instituted unless the Director
`determines that the information presented in the petition
`filed under section 311 and any response filed under
`section 313 shows that there is a reasonable likelihood
`that the petitioner would prevail with respect to at least 1
`of the claims challenged in the petition.
`
`Upon consideration of the petition, we conclude that Petitioner has
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`established a reasonable likelihood that it would prevail with respect to claims 13-
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`23 and 27-31 of the ’461 patent. Accordingly, we institute an inter partes review
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`of claims 13-23 and 27-31 of the ’461 patent.
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`
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`B. Related Matters
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`Patent Owner has sued Petitioner for infringement of the ’461 patent in
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`Smart Plates, LLC v. Carestream Health, Inc., No. 2:13-cv-00540 (E.D. La.), filed
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`on March 22, 2013. Pet. 1; Paper 5 at 1.
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`Petitioner also filed a petition for Inter Partes Review of claims 1-12 and
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`24-26 of the ’461 patent, IPR2013-00599, on September 20, 2013. Pet. 1; Paper 5
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`at 1. A decision on that petition is being entered simultaneously with this decision.
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` 2
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`Patent Owner Exhibit 2010
`Petition for IPR Review of Patent No. 6,012,103
`Page 2
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`Case IPR2013-00600
`Patent 8,374,461
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`C. References Relied Upon
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`Petitioner relies upon the following prior art references:
`
`Ex. 1003 Robar
`
`Ex. 1004 Haug
`
`Ex. 1005 Buytaert
`
`Ex. 1006 Crucs
`
`Ex. 1007
`
`
`Taskinen
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`
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`
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`
`
`
`US 6,826,313 B2
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`US 7,095,034 B2
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`US 6,359,628 B1
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`
`
`
`
`
`
`Nov. 30, 2004
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`Aug. 22, 2006
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`
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`Mar. 19, 2002
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`US 2009/0212107 A1 Aug. 27, 2009
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`Jan. 26, 2012
`US 2012/0019369 A1
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`
`
`(filed Mar. 22, 2010)
`
`APA
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`Prior art allegedly admitted in the ’461 patent
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`
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`D. The Asserted Grounds
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`Petitioner contends that the challenged claims are unpatentable based on the
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`following specific grounds (Pet. 3):
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`References
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`Basis
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`Claims challenged
`
`Robar
`
`Robar
`
`Robar and APA
`
`§ 102(b)
`
`13-17, 19, 22, 23, 28-30
`
`§ 103(a)
`
`§ 103(a)
`
`18
`
`27
`
`Robar and Crucs
`
`§ 103(a)
`
`14-16, 23
`
`Robar and Haug
`
`§ 103(a)
`
`14-18, 20, 21, 27-31
`
`Robar and Buytaert
`
`§ 103(a)
`
`17, 18, 27-31
`
`Taskinen
`
`Taskinen
`
`§ 102(e)
`
`13-16, 19-23, 28-30
`
`§ 103(a)
`
`18
`
`Taskinen and APA
`
`§ 103(a)
`
`17, 27
`
` 3
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`Patent Owner Exhibit 2010
`Petition for IPR Review of Patent No. 6,012,103
`Page 3
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`Case IPR2013-00600
`Patent 8,374,461
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`Taskinen and Haug
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`§ 103(a)
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`Taskinen and Buytaert
`
`§ 103(a)
`
`18
`
`31
`
`Taskinen and Crucs
`
`§ 103(a)
`
`14-16, 23
`
`Robar and Taskinen
`
`§ 103(a)
`
`14-16, 19-21
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`For the reasons described below, we institute an inter partes review of all
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`challenged claims (13-23 and 27-31) based on the following grounds:
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`(1) Claims 13, 15-17, 19, 22, 23, 28, and 29 under 35 U.S.C. § 102(b) for
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`anticipation by Robar;
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`(2) Claim 18 under 35 U.S.C. § 103(a) for obviousness over Robar;
`
`(3) Claim 27 under 35 U.S.C. § 103(a) for obviousness over Robar and
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`APA;
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`(4) Claims 14, 20, 21, 30, and 31 under 35 U.S.C. § 103(a) for obviousness
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`over Robar and Haug;
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`(5) Claims 13, 15, 16, 19-23, 28, and 29 under 35 U.S.C. § 102(e) for
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`anticipation by Taskinen;
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`(6) Claim 18 under 35 U.S.C. § 103(a) for obviousness over Taskinen;
`
`(7) Claims 17 and 27 under 35 U.S.C. § 103(a) for obviousness over
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`Taskinen and APA;
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`(8) Claim 31 under 35 U.S.C. § 103(a) for obviousness over Taskinen and
`
`Buytaert; and
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`(9) Claim 14 under 35 U.S.C. § 103(a) for obviousness over Taskinen and
`
` 4
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`
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`Crucs.
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`Patent Owner Exhibit 2010
`Petition for IPR Review of Patent No. 6,012,103
`Page 4
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`Case IPR2013-00600
`Patent 8,374,461
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`E. The ’461 Patent
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`The ’461 patent generally relates to processing intra-oral X-ray images in
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`dentistry. Ex. 1001, col. 1, ll. 13-21; col. 5, ll. 32-34. Intra-oral X-ray images can
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`be captured by exposing intra-oral sensors, such as X-ray sensitive film or
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`phosphor storage plates (“PSP”) to X-rays. Id. at 13-21. A scanning apparatus,
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`such as a laser scanner, extracts the captured images from the sensors, converting
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`the images to digital data for transmission, viewing, storage, or other computer
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`processing. Id., col. 1, ll. 22-30; col. 7, ll. 55-57; col. 8, ll. 7-9. In the field of
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`dentistry, a typical full-mouth examination of a patient can include twenty separate
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`X-ray images, each of which looks similar to the rest, making them difficult and
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`time-intensive to organize and track manually. Id., col. 1, ll. 39-53.
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`According to the ’461 patent, each scannable medium (i.e., sensor) is
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`encoded with one or more machine-readable coded identifiers, such as a bar code,
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`that can be read by the scanning apparatus. Id., col. 7, ll. 57-61; col. 8, ll. 17-21.
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`For example, a plurality of scannable media can include a “same standard encoded
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`identifier” that specifies a set of images that are to be grouped together. Id., col. 7,
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`ll. 63-65. A scannable medium also can include an identifier that identifies which
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`of a set of images the medium corresponds to and how the image should be
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`oriented or rotated. Id., col. 7, l. 65-col. 8, l. 2.
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`
`
`Claim 13, reproduced below, is illustrative of the claimed subject matter:
`
`13. A system to automatically process and orient
`dental radiographic images, said system comprising:
`
`a)
`
`a set of scannable image media encoded with
`identifiers
`regarding
`image
`location
`and
`orientation;
`
`b)
`
`a scanning apparatus with the ability to read the
`scannable image media, produce a set of digital
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` 5
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`Patent Owner Exhibit 2010
`Petition for IPR Review of Patent No. 6,012,103
`Page 5
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`c)
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`data images, and transmit the set of digital data
`images to a processing system; and
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`a processing system with the ability to determine
`an image location for each digital data image
`within the first set of digital data images; to
`ascertain whether any digital data image in the set
`of digital data images needs to be properly
`oriented; and to automatically and properly orient
`any digital data image in the set of digital images
`ascertained to need proper orientation.
`
`
`
`II. ANALYSIS
`
`A. Claim Construction
`
`We determine the meaning of the claims as the first step of our
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`analysis. The Board interprets claims using the broadest reasonable
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`construction. See 37 C.F.R. § 100(b); Office Patent Trial Practice Guide, 77 Fed.
`
`Reg. 48,756, 48,766 (Aug. 14, 2012). Claim terms generally are given their
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`ordinary and customary meaning, as would be understood by one of ordinary skill
`
`in the art in the context of the entire disclosure. See In re Translogic Tech., Inc.,
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`504 F.3d 1249, 1257 (Fed. Cir. 2007).
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`
`
`1. “a set”
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`There are two instances of “a set” within claim 13: “a set of scannable image
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`media” and “a set of digital data images” produced by reading the scannable image
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`media. Claim 23 similarly recites two instances of “a set.” Petitioner contends
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`that “a set,” as recited in claims 13 and 23, should be construed to mean “one or
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`more,” citing to Figure 1 of the ’461 patent. Pet. 6. Figure 1 shows example visual
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`identifiers that can be applied to scannable image media (e.g., PSPs) to indicate
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` 6
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`Patent Owner Exhibit 2010
`Petition for IPR Review of Patent No. 6,012,103
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`which viewing template a set of PSPs corresponds to. Ex. 1001, col. 7, ll. 6-12.
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`For example, a “master” PSP coded with a color red and a visual identifier
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`“AFMX” corresponds to the first position of a set corresponding to an “Adult
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`FMX” viewing template. Id., Fig. 1; col. 7, ll. 20-22. Figure 3 shows examples of
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`how additional PSPs within the set would be encoded. Id., Fig. 3; col. 7, ll. 23-42.
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`Petitioner argues that Figure 1 shows some sets with only one plate. Pet. 6. For
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`example, Set G, corresponding to a “SingleShot-H” template, includes only one
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`plate (PSP). Ex. 1001, Figure 1.
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`We have found no definition of “a set” in the ’461 patent. The ordinary
`
`meaning of “set,” however, is “[a] group of things of the same kind that belong
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`together and are so used.” THE AMERICAN HERITAGE COLLEGE DICTIONARY 1269
`
`(4th ed. 2004) (Ex. 3001). The patent’s description of sets also suggests that
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`members of a set belong together. For example, the ’461 patent explains:
`
`In a specific example, a set of PSPs are provided, each of which
`contain a coded identifier (such as one or more alpha numeric
`characters and/ or a bar-code) that is associated with (a) an image set;
`(b) an image location within the specific set; and/or (c) a specific
`orientation for that image when used within this set. Each set of PSPs
`represents specific dental x-ray common image sets (i.e. full mouth
`sets, horizontal bitewing sets, vertical bitewing sets, etc.). In practical
`use, a dental technician/practitioner would select an appropriate plate
`set based on the set of images desired, and then select a PSP from that
`set based on the specific image to be obtained.
`
`Ex. 1001, col. 5, l. 58-col. 6, l. 1 (emphasis added). Here, a set of digital images is
`
`described as including specific image locations and orientations corresponding to a
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`type of set commonly used by dentists. For example, each member of a set could
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`be a specific, pre-determined location of a horizontal bitewing set. A set of
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`scannable image media (e.g., PSPs) is selected based on the desired set of digital
`
`images. For example, if a dentist intends to perform a full mouth examination of a
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` 7
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`Patent Owner Exhibit 2010
`Petition for IPR Review of Patent No. 6,012,103
`Page 7
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`patient, he or she would choose a set of PSPs properly encoded to associate the
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`resulting digital images to a full mouth set. This is consistent with Figures 1 and 3,
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`which show example identifiers associating sets of PSPs with image sets
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`commonly used by dentists. See also Ex. 1001, col. 7, ll. 20-42. In this way, each
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`digital image in a set belongs to that set. For example, the patent describes
`
`meeting a need for identifiers that “indicate to the dental technician/practitioner the
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`proper plate set and plate to be used to obtain a specific image or set of images of
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`desired oral locations.” Id., col. 2, ll. 6-12.
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`
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`In Petitioner’s construction, however, the members of a set can be wholly
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`arbitrary. Thus, in light of the specification, Petitioner’s construction is too broad.
`
`For purposes of this decision, we conclude that “a set” is one or more items that
`
`belong together. Thus, “a set of scannable image media” is one or more scannable
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`image media that belong together and “a set of digital data images” is one or more
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`digital data images that belong together.
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`
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`2. “image location”
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`Petitioner contends that “image location” as recited in claims 13 and 23,
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`should be construed to mean “location of an image within a set of images.” Pet. 6
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`(citing Ex. 1001, col. 3, ll. 15-16; col. 5, l. 61). In light of the forgoing discussion
`
`of the construction of “a set,” as well as Petitioner’s citations, we adopt Petitioner’s
`
`proposed construction, for purposes of this decision.
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`
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`3. “identifier”
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`Petitioner contends that “identifier,” as recited in claim 13, should be
`
`construed to mean “a thing that identifies something,” citing a dictionary definition
`
`of “identifier.” Pet. 6-7. Petitioner argues, based on the doctrine of claim
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` 8
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`Patent Owner Exhibit 2010
`Petition for IPR Review of Patent No. 6,012,103
`Page 8
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`differentiation, that “identifier” must be broader than “a visual and/or machine-
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`recognizable identification,” as recited in claim 15, which depends from claim 1.
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`Id.
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`Consistent with petitioner’s proposed construction, the patent describes
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`identifiers in a non-limiting fashion, for example:
`
`The method/ system provides identifiers for human assistance in plate
`set and individual plate selection that does not exist today, as well as
`machine-readable identifiers enabling an included or attached image
`management process or system to perform automatic “image set”
`identification and display of the proper/associated image viewing
`template, automatic image placement within the displayed template,
`and automatic image orientation within the specified location if
`required.
`
`Ex. 1001, col. 5, ll. 34-42 (emphasis added). In light of the specification and
`
`claim language, we agree that Petitioner’s proposed construction is broad, but
`
`reasonable, and therefore adopt this proposal for purposes of this decision.
`
`
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`4. “same standard identifier”
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`Petitioner contends that “same standard identifier,” as recited in claim 14,
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`should be construed to mean “anything which identifies a given image media as
`
`being a member of a set of image media, including without limitation anything
`
`visually recognizable, machine-readable, or encoded.” Pet. 7-8. Petitioner argues
`
`that the term “same standard identifier” is not used in the specification of the ’461
`
`patent; rather, the patent describes a “same standard recognizable identifier” and a
`
`“same standard encoded identifier.” Pet. 7-8 (citing Ex. 1001, col. 6, ll. 20-27;
`
`col. 7, ll. 57-65).
`
`The ’461 patent describes the “same standard recognizable identifier” as an
`
`identifier encoded onto the scannable image media (the PSPs) that visually
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`Patent Owner Exhibit 2010
`Petition for IPR Review of Patent No. 6,012,103
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`indicates (e.g., by color or radiolucent image) the image set with which all of the
`
`images are to be grouped. Ex. 1001, col. 6, ll. 20-27. The same identifier is
`
`encoded onto each of the media in a set. For example, as shown in Figures 1 and
`
`3, each plate (image medium) of an “Adult FMX” set is encoded using the color
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`identifier “Red.” Id., col. 7, ll. 6-10, 20-35. Thus, in this example, each image
`
`medium has the “same” identifier (“Red”) and that same identifier groups the
`
`media together.
`
`Similarly, the ’461 patent describes a “same standard encoded identifier” as
`
`a machine-readable identifier encoded on each of a plurality of media that is read
`
`by the scanning apparatus and that specifies a set of images to be grouped together.
`
`Id., col. 7, ll. 57-65. We view the use of the terms “same standard recognizable
`
`identifier” and a “same standard encoded identifier” as two examples of “same
`
`standard identifier,” reflecting the alternative nature of the described identifiers,
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`which, as we note above, can be visual or machine readable. Ex. 1001, col. 5,
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`ll. 34-42. In both cases, the specification describes the identifiers as the “same,”
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`which indicates that the identifier is identical on each medium.
`
`The ’461 patent explains the difference between a same standard identifier,
`
`which identifies a set to which the images belong (and “group[s] together” those
`
`image media, as recited in claim 14), and other identifiers that give information
`
`about the position and orientation of an image within a set:
`
`[1] A first plurality of scannable image media may have a same
`standard encoded identifier to specify a set of images to be grouped
`together. [2] A second encoded identifier on each of the scannable
`image media in the first plurality of scannable image media may be
`used to identify the particular image within the image set as well as
`the proper rotation of the image.
`
`Ex. 1001, col. 7, l. 63-col. 8, l. 2.
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`Patent Owner Exhibit 2010
`Petition for IPR Review of Patent No. 6,012,103
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`For purposes of this decision, we conclude that a same standard identifier is
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`an identifier that appears identically on each medium of a set of scannable image
`
`media. Petitioner’s proposal that the construction include “anything which
`
`identifies a given image media as being a member of a set of image media” is
`
`redundant to the claim language “to group together each scannable image medium
`
`in the set of scannable image media,” already recited in claim 14. Petitioner’s
`
`proposal that the construction state “including without limitation anything visually
`
`recognizable, machine-readable, or encoded” is unnecessary in light of our
`
`constructions of “a set” and “identifier.”
`
`
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`5. “associate”
`
`Petitioner proposes construing “associate,” recited in claims 14 and 23, in
`
`accordance with its broadest reasonable meaning. Pet. 8-9. However, Petitioner
`
`does not state what the broadest reasonable meaning is. Id.
`
`The ordinary meaning of “associate” is “[t]o connect or join together;
`
`combine.” THE AMERICAN HERITAGE COLLEGE DICTIONARY 86 (4th ed. 2004)
`
`(Ex. 3001). The ’461 patent uses “associate” in accordance with this ordinary
`
`meaning. See, e.g., Ex. 1001, col. 1, ll. 26-30 (digitized images viewed
`
`individually or along with other associated images within a template); col. 2, ll. 27-
`
`28 (identifiers enabling images to be associated automatically with an image set or
`
`template); col. 5, ll. 38-40 (identify image set and display associated viewing
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`template); col. 5, ll. 59-61 (coded identifier associated with an image set); col. 6,
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`ll. 4-6 (processing system that associates a PSP’s coded image with a template);
`
`col. 7, ll. 61-63 (“The encoded identifier is associated with a particular image set,
`
`image position, and/ or image rotation position.”). Accordingly, for purposes of
`
`this decision, we construe “associate” to mean “to connect or join together.”
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`Petition for IPR Review of Patent No. 6,012,103
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`6. “graphical user interface”
`
`Claim 22 recites a “graphical user interface.” Petitioner proposes construing
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`“graphical user interface” to mean “anything that displays an image, including, but
`
`not limited to, a monitor.” Pet. 9 (citing Ex. 1001, col. 2, ll. 41-43; col. 10, ll. 46-
`
`49). Petitioner points to the ’461 patent’s identification of a “monitor” as an
`
`example of a graphical user interface: “a browser or network interface is
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`incorporated into the computing system to allow the user to view the processed
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`image data in a graphical user interface device, for example, a monitor.” Pet. 9
`
`(quoting Ex. 1001, col. 10, ll. 46-49). For purposes of this decision, a “graphical
`
`user interface” is reasonably broad enough to include a monitor. Petitioner,
`
`however, does not explain persuasively why a “graphical user interface” should be
`
`so broad as to encompass “anything that displays an image.”
`
`
`
`7. “means for transferring”
`
`Claim 30 recites “means for transferring digital image data from the
`
`scanning apparatus to the computer system.” Here, claim 30 recites an element in
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`“means-plus-function” format. Petitioner does not propose a construction for
`
`“means for transferring.”
`
`“An element in a claim for a combination may be expressed as a means . . .
`
`for performing a specified function without the recital of structure, material, or acts
`
`in support thereof, and such claim shall be construed to cover the corresponding
`
`structure, material, or acts described in the specification and equivalents thereof.”
`
`35 U.S.C. § 112 ¶ 6. We construe such a limitation by determining what the
`
`claimed function is and identifying the structure or materials disclosed in the
`
`specification that correspond to the means for performing that function.
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`Petition for IPR Review of Patent No. 6,012,103
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`See Kemco Sales, Inc. v. Control Papers Co., Inc., 208 F.3d 1352, 1360 (Fed. Cir.
`
`2000).
`
`The recited function of the “means for transferring” is “transferring digital
`
`image data from the scanning apparatus to the computer system.” The ’461 patent
`
`describes the following structure corresponding to the recited function:
`
`Communication devices such as wireless interfaces, cable modems,
`satellite links, microwave relays, cable relays, fiber optic relays, and
`traditional telephonic modems can transfer digital image data from a
`scanning apparatus to a computing system via a network. Networks
`available for transmission of clinical data include, but are not limited
`to, local area networks, intranets and the open internet. A browser
`interface can be incorporated into communications software to view
`the transmitted data.
`
`Ex. 1001, col. 10, ll. 37-45. Accordingly, for purposes of this decision, we
`
`construe “means for transferring” to be wireless interfaces, cable modems, satellite
`
`links, microwave relays, cable relays, fiber optic relays, and traditional telephonic
`
`modems, and equivalents thereof.
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`
`
`
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`B. Asserted Grounds of Unpatentability
`
`1. Anticipation by Robar
`
`Petitioner contends that Robar anticipates claims 13-17, 19, 22, 23, and 28-
`
`30. Pet. 12-19.
`
`Robar describes a technique for creating a volumetric data set representing a
`
`three-dimensional (3D) x-ray distribution produced by radiation sources such as
`
`those of a radiosurgery system. Ex. 1003, Abstract; col. 3, ll. 2-7. The technique
`
`exposes a plurality of two-dimensional (2D) sensors (e.g., X-ray film) positioned
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`in fixed orientations (e.g., parallel, spaced apart sheets of film) and scanning those
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`sensors to create digitized images. Id., col. 3, ll. 7-12; col. 3, ll. 15-18. Before the
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`sensors are scanned, they are provided with “fiducial marks” that identify an order
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`and sequence of the sensors. Id., col. 3, ll. 13-15. For example, the fiducial marks
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`can be provided by exposing selected locations on the films (e.g., outside the
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`measurement volume) to radiation (e.g., light), mechanically notching the edges of
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`the films, or marking the films with ink or stickers. Id., col. 3, ll. 24-26; col. 9,
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`ll. 11-15. The fiducial marks also can identify the orientation of the films within a
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`set of films. Id., col. 3, ll. 22-24. The digitized images, with the fiducial marks,
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`are processed by a computer, which locates the fiducial marks and, from the marks,
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`identifies the sequence of the set of images and the orientation of individual
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`images. Id., col. 3, ll. 28-31. If images are oriented incorrectly, the computer
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`rotates or flips those images to orient them correctly. Id., col. 3, ll. 31-35. The 3D
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`dose distribution can be displayed on a monitor and the series of images can be
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`exported in a standard file format. Id., col. 7, ll. 53-67.
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`Petitioner argues that Robar discloses all limitations of claims 13-17, 19, 22,
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`23, and 28-30 in the claimed arrangement. Pet. 12-14, 16-19. In particular,
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`Petitioner argues that Robar’s fiducial marks are “identifiers” and points to Robar’s
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`description of using the fiducial marks to identify a sequence of digitized images
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`and apply rotation and flip transformations to orient the images based on the
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`fiducial marks as a disclosure of claim 13. Pet. 12-14 (citing Ex. 1003, col. 3, ll. 7-
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`35). Petitioner further argues that Robar’s monitor is a “graphical user interface.”
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`Pet. 17. Upon consideration of Petitioner’s arguments and evidence, we determine
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`that Petitioner has shown a reasonable likelihood that it will prevail on claims 13,
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`15-17, 19, 22, 23, 28, and 29 as anticipated by Robar.
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`Nevertheless, we are not persuaded that Petitioner will prevail as to claims
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`14 and 30. Claim 14 depends from claim 13 and further recites:
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`wherein the set of scannable image media is also encoded with a same
`standard identifier to group together each scannable image medium in
`the set of scannable image media; and wherein the processing system
`further comprises the ability to associate the set of digital data images
`with the set of scannable image media based upon the same standard
`identifier.
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`Petitioner argues that the fiducial mark depicted in Robar’s Figure 4 is a “same
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`standard identifier,” as recited in claim 14. Pet. 14-15. Specifically, Petitioner
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`(Pet. 15) points to Robar’s disclosure that “FIG. 4 shows a film 12 having an edge
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`34 along which is located a fiducial mark 18. Fiducial mark 18 is an area of
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`increased optical density. Each film 12 has a fiducial mark 18 located at a
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`different position in the range 36 which occupies one half of side 34.” Ex. 1003,
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`col. 8, ll. 50-54. Petitioner argues that such fiducial marks “group together each
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`scannable image medium in the set of scannable image media.” Pet. 14. Petitioner
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`also points to Robar’s description of fiducial marks as “identifying an order and
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`sequence of the sensors.” Id. at 14-15 (quoting Ex. 1003, col. 3, ll. 7-35).
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`Although Petitioner has identified indicia that indicate where in a sequence
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`of images each image should be positioned, Petitioner has not shown persuasively
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`that fiducial marks “group together” members of a set of sensors, as recited in
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`claim 14. In other words, Robar’s fiducial mark might indicate that an image on a
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`sensor is the fifth image of a set, for example, but does not indicate which set the
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`image on the sensor belongs to. Thus, Petitioner has not shown a reasonable
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`likelihood of prevailing as to claim 14.
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`Regarding claim 30, Petitioner identifies column 6, lines 11-16, of Robar as
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`disclosing a “means for transferring.” Pet. 19. We are not persuaded that this
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`portion of Robar discloses any of the structures identified in the ’461 patent as
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`performing the transferring function, or equivalents thereof. Rather, Robar merely
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`discloses that digitized images are provided to a computer, without providing any
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`details as to the structure that facilitates are providing. Ex. 1003, col. 6, ll. 11-16.
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`Thus, Petitioner has not shown a reasonable likelihood of prevailing as to claim 30.
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`In sum, Petitioner has shown a reasonable likelihood that it will prevail as to
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`claims 13, 15-17, 19, 22, 23, 28, and 29 as anticipated by Robar, but not as to
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`claims 14 and 30.
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`2. Obviousness over Robar
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`Petitioner argues that claim 18 is obvious over Robar. Pet. 20.
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`Claim 18 depends from claim 13 and recites “wherein the processing system
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`is located within the scanning apparatus.” As Petitioner acknowledges, Robar
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`describes a scanning apparatus providing digitized images to a separate computer
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`for processing. Pet. 20. Petitioner argues, however, that it would have been a
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`matter of common sense to combine a computer and scanner into a single unit and
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`that the ’461 patent does not describe any special result from combining such
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`components. Pet. 20. On the present record, we agree that claim 18 “‘simply
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`arranges old elements with each performing the same function it had been known
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`to perform’ and yields no more than one would expect from such an arrangement.”
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`KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 417 (2007) (quoting Sakraida v. Ag
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`Pro, Inc., 425 U.S. 273, 282 (1976)). Accordingly, we are persuaded that there is a
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`reasonable likelihood that Petitioner will prevail in showing that claim 18 would
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`have been obvious over Robar.
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`3. Obviousness over Robar and APA
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`Petitioner contends that claim 27 would have been obvious over Robar in
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`light of admissions as to the scope and content of the prior art made in the
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`specification of the ’461 patent (APA). Pet. 20-21.
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`Claim 27 depends from claim 13 and recites “wherein the scannable image
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`media is a photostimulable phosphor plate and the scanning apparatus is a
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`photostimulable phosphor plate reader.” Petitioner concedes that Robar does not
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`disclose the use of PSPs and PSP readers. Pet. 21. Indeed, Robar describes
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`sensors comprising X-ray sensitive film. See, e.g., Ex. 1003, Abstract. Petitioner
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`argues that the inventors admit in the specification of the ’461 patent that creating
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`digital images from PSPs was known in the art. Pet. 21. As Petitioner notes, the
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`’461 patent explains that “[w]hen taking intra-oral images of patients, images are
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`often captured on media such as radiographic film or photostimulable phosphor
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`plates (also known as Phosphor Storage Plates or PSPs), which are then placed into
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`a scanning apparatus to digitally extract the images from the media.” Ex. 1001,
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`col. 1, ll. 22-26. On this record, we are persuaded that PSPs were known
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`alternatives to X-ray films and that Robar’s technique of digitizing X-ray films and
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`processing the X-ray images predictably could have been applied to PSPs. Thus,
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`Petitioner has shown a reasonable likelihood of prevailing as to claim 27 as
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`obvious over Robar and APA.
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`4. Obviousness over Robar and Haug
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`Petitioner contends that claims 14, 20, 21, 30, and 31 would have been
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`obvious over Robar and Haug. Pet. 26-32, 34.
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`Haug describes a system for processing an image carrier to extract X-ray
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`information. Ex. 1004, col. 4, ll. 13-23. The image carrier comprises a cassette
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`with an image plate inside. Id., col. 4, ll. 18-23. The cassette, the image plate, or
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`both can be provided with an integrated circuit (IC) that includes a memory. Id.,
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`col. 4, ll. 24-32. The IC can store various data, including a patient identification
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`code, which allows the patient represented by the X-ray to be identified
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`unambiguously. Id., col. 6-23. A read out device that digitizes the plates also
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`includes a write-read device that reads information from the IC. Id., col. 6, ll. 24-
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`29. A reproduction device further processes and reproduces (e.g., displays or
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`prints) the image data. Id., col. 6, ll. 45-51. Haug also describes applying a
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`visually readable mark (e.g., text such as “301-6KBQMF0001-20030702-1-1-0-
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`1000-l000-123”) to the outside of the cassette. Ex. 1004, col. 7, l. 62-col. 8, l. 15).
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`The visually readable mark contains some of the information stored in the IC and
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`can be used as a backup to the IC or to load the information onto a new IC if the
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`first IC becomes damaged. Id., col. 7, l. 64-col. 8, l. 4; col. 8, ll. 16-22.
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`Regarding claim 14, Petitioner argues that Haug’s patient identification code
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`is a same standard identifier. Pet. 29-30. Petitioner further argues that including a
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`patient identification code on each image associated with a patient in Robar would
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`have yielded a predictable result that each medium in a set of image media would
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`have been traceable to a single set of images associated with that patient. Pet. 26.
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`We are persuaded, on the present record, that a patient identifier code applied as
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`part of Robar’s fiducial marks would have been an identifier that would have been
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`the same on all scannable image media of a particular set (i.e., the set o