UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Thermo Fisher Scientific Inc
`
`Petitioner
`
`V
`
`BioRad Laboratories Inc
`Patent Owner
`
`IPR201700055
`US Patent No 8236504
`
`Exhibit 2003
`
`DECLARATION OF DEAN P NEIKIRK PHD IN SUPPORT OF
`PATENT OWNERS RESPONSE TO PETITION
`FOR INTER PARTES REVIEW
`
`BioRad Exhibit 2003
`IPR201700055
`Page 1 of 34
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`
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`Thermo Fisher Scientific Inc
`
`Petitioner
`
`V
`
`BioRad Laboratories Inc
`Patent Owner
`
`IPR201700055
`US Patent No 8236504
`
`Exhibit 2003
`
`DECLARATION OF DEAN P NEIKIRK PHD IN SUPPORT OF
`PATENT OWNERS RESPONSE TO PETITION
`FOR INTER PARTES REVIEW
`
`BioRad Exhibit 2003
`IPR201700055
`Page 1 of 34
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`
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`Declaration of Dean P Neikirk PhD
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`Case IPR201700055 for
`US Patent No 8236504
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`TABLE OF CONTENTS
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`I
`
`II
`
`III
`
`IV THE 504 PATENT CLAIMS ARE NOT OBVIOUS OVER
`
`A A POSA Would Not Have Selected Pantoliano As A
`
`1
`
`TFS And Dr Mathies Ignore That Miller Was Filed Before
`Pantoliano And Has Less Disclosure Of Optics Components
`
`INTRODUCTION1A Engagement1B
`Patents Awarded3D
`Other Awards5E
`Industry Experience8G Professional Society Involvement9H
`Background And Qualifications2C
`Research And Teaching Experience6F
`PATENT PRINCIPLES11
`Basis Of My Opinions And Materials Considered9
`PROPOSED CLAIM CONSTRUCTION13
`Primary Reference15B
`PANTOLIANO MILLER AND GAMBINI14
`Than Pantoliano192
`There Was No Motivation To Combine18
`And Reengineer Pantoliano20
`Obvious245
`CONCLUSION32
`Function As Intended In The Combination22
`There Was No Reasonable Expectation Of Success28
`POSAs Including Dr Mathies Actually Developed 26
`
`TFS And Dr Mathies Ignore The Work Necessary To Gut
`
`TFS And Dr Mathies Ignore That Pantoliano Would Not
`
`The Seven Year Time Gap From Pantoliano To The 504
`Patent Demonstrates That The 504 Invention Was Not
`
`TFS And Dr Mathies Arguments Ignore Apparatuses
`
`3
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`4
`
`C
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`V
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`BioRad Exhibit 2003
`IPR201700055
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`
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`Declaration of Dean P Neikirk PhD
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`I Dean P Neikirk PhD hereby declare
`
`I
`
`INTRODUCTION
`
`Case IPR201700055 for
`US Patent No 8236504
`
`1
`
`I am over the age of twenty one 21 and am competent to make this
`
`Declaration
`
`I reside at 6604 Aubumhill St Austin TX 78723
`
`2
`
`I am an independent consultant in technologies related to among
`
`other things sensor systems including those used for biochemical sensing
`
`3
`
`I understand that the Patent Trial and Appeal Board has granted
`
`Thermo Fisher Scientific Incs TFS petition to institute the above captioned inter
`partes review IPR of claims 13 611 1317 1920 and 22 of United States
`
`Patent No 8236504 the 504 patent on obviousness grounds
`A
`
`Engagement
`
`4
`
`I have been retained by counsel for BioRad Laboratories Inc
`
`BioRad in the above captioned IPR matter as an independent technical expert
`through the agency Teklicon Inc 96 N 3rd Street Suite 301 San Jose
`
`CA 95112
`
`5
`
`As part of this engagement
`
`I have been retained to review and
`
`evaluate specific claims of the 504 patent
`
`In particular I have been asked to
`
`provide my opinion regarding the meaning of certain claim terms as well as
`in the art POSA in the subject matter of the
`
`whether a person of ordinary skill
`
`claims would find them obvious over certain publications I expect
`
`to testify
`
`1
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`
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`Declaration of Dean P Neikirk PhD
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`Case IPR201700055 for
`US Patent No 8236504
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`regarding the matters set forth in this declaration if asked to do so
`
`6
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`I am being compensated on an hourly basis for my work performed in
`
`connection with this case I have received no additional compensation for my
`
`work in this case and my compensation does not depend upon the contents of this
`
`report any testimony I may provide or the ultimate outcome of the case
`
`B
`
`7
`
`Background And Qualifications
`
`I received a Bachelor of Science degree from Oklahoma State
`
`University in physics and mathematics in 1979
`
`8
`
`Following my undergraduate studies I attended the California
`
`Institute of Technology where I earned a Masters degree and Doctorate degree in
`
`applied physics in 1981 and 1984 respectively
`
`9
`
`Each of my academic degrees involved significant studies in sensors
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`optical systems solid state physics semiconductor devices electrical engineering
`
`electronic systems electromagnetics radio frequency systems and antennas For
`
`example courses relating to these fields that I took include two years of study in
`
`electromagnetics and optics one year of study in solid state and semiconductor
`
`physics as well as four years of graduate research in electronic devices antenna
`
`design antenna fabrication and optical systems My PhD thesis was on the
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`design and fabrication of high frequency electromagnetic detectors and quasi
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`optical
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`imaging antenna arrays including research on integrated circuit fabrication
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`2
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`Declaration of Dean P Neikirk PhD
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`Case IPR201700055 for
`US Patent No 8236504
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`antennas sensors and packaging I designed and fabricated the first monolithic
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`integrated circuit imaging antenna array for use at wavelengths in the far infrared
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`sometimes referred to as the terahertz region of the electromagnetic spectrum
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`For this work on the first high resolution focal plane array for use at wavelengths
`
`between 01 mm and 1 mm I was awarded the 1984 Marconi
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`International
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`Fellowship Young Scientist Award for contributions to the development of
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`millimeter wave integrated circuits especially in the area of detectors and imaging
`
`arrays
`
`C Patents Awarded
`
`10
`
`Through my work on sensors electronic systems and innovations in
`
`other related fields I have been named an inventor on 17 US patents These are
`
`summarized in my curriculum vitae Ex 2004
`11 My issued patents include for example US Patent No 5408107
`
`titled Semiconductor Device Apparatus Having Multiple Current Voltage Curves
`
`and Zero Bias Memory This patent
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`is directed to a semiconductor device that
`
`can be switched between current voltage curve settings at higher positive or
`
`negative voltages and can be read at lower voltages As another example US
`
`Patent No 9291586 titled Passive Wireless SelfResonant Sensor relates to a
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`sensor for detecting materials including a substrate a passivation layer formed on
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`the substrate a high surface area material disposed on the passivation layer and a
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`3
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`Declaration of Dean P Neikirk PhD
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`Case IPR201700055 for
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`selfresonant structure that includes a planar spiral
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`inductor and a plurality of
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`planar interdigitated capacitor electrodes disposed within the passivation layer
`
`12
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`Many of my patents are related to sensor arrays used for chemical
`
`testing including biomedical
`
`testing These include for example US Patent
`
`6589779 General signaling protocol
`
`for chemical receptors in immobilized
`
`matrices US Patent 6602702 Detection system based on an analyte reactive
`
`particle US Patent 7316899 Portable sensor array system and US Patent
`
`8105849 Integration of fluids and reagents into selfcontained cartridges
`
`containing sensor elements These patents resulted from research by my group
`
`and my collaborators into new sensor arrays with the capability to use optical
`
`effects in multiwell platforms to perform multianalyte chemical analysis Early
`
`work in that area is discussed in one of my publications Solution Based Analysis
`
`of Multiple Analytes by a Sensor Array Toward the Development of an
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`Electronic Tongue Journal of the American Chemical Society vol 120 July
`
`1998 pp 64296430 authored by John J Lavigne Steve Savoy Marvin B
`
`Clevenger Jason E Richie Bridget McDoniel SeungJin Yoo Eric V Anslyn
`
`John T McDevitt Jason B Shear and Dean Neikirk This sensor array
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`technology has also been used for DNA analysis as discussed in the publication
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`DNA hybridization and discrimination of single nucleotide mismatches using
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`chip based microbead arrays Analytical Chemistry v 75 n 18 Sep 15 2003
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`4
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`p 47324739 authored by Mehnaaz Ali Romy Kirby Adrian Goodey Marc
`
`Rodriguez Andrew Ellington Dean Neikirk and John McDevitt
`
`13
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`Two companies have been founded based on technology developed
`
`and patented by my research group and collaborators in the area of chemical
`
`sensing arrays In both cases the technology was developed at The University of
`
`Texas at Austin and licensed to startups In one case LabNow Inc received
`
`$14 million in first round venture investment for its point of care diagnostic
`
`system from the Soros Group Austin Ventures and other investors to develop the
`
`companys technology and to launch its initial product CD4NowTM a point of
`
`care diagnostic tool for HIVAIDS patients
`
`D
`
`Other Awards
`
`14 My work as a professor of electrical engineering and my scholarship
`
`in various fields relating to sensors and electronic systems have been recognized
`
`through several awards I have received over the years As noted in my curriculum
`
`vitae Ex 2004 these include the Marconi
`
`International Fellowship Young
`
`Scientist Award the Engineering Foundation Faculty Award from the University
`
`of Texas at Austin the General Motors Foundation Centennial Teaching
`
`Fellowship the IBM Corporation Faculty Development Award the National
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`Science Foundation Presidential Young Investigator the Lockheed Martin
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`5
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`Declaration of Dean P Neikirk PhD
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`Case IPR201700055 for
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`Aeronautics Company Award for Excellence in Engineering Teaching and various
`
`other academic awards
`
`E
`
`Research And Teaching Experience
`
`15 My work as a professor began in 1984 when I joined the University
`
`of Texas at Austin as an assistant professor
`
`In 1988 I became an associate
`
`professor and in 1992 became a full professor Today I continue to be a full
`
`professor at the University of Texas
`
`16
`
`Over the years I have taught a variety of electrical engineering
`
`courses at the University These include Integrated Circuit Fabrication VLSI
`
`Fabrication Techniques Ultra Large Scale Integrated Circuit Fabrication
`
`Techniques Integrated Circuit Nanomanufacturing
`
`Techniques Electromagnetics
`
`in Packaging Simulation Methods in CADVLSI Micro Electromechanical
`
`Systems Electromagnetic Engineering and Microwave and Radio Frequency
`
`Engineering I have also taught several continuing education courses in these
`
`fields
`
`17
`
`I currently conduct
`
`research with students and research scientists in
`
`the Microelectromagnetics Research Group in the Microelectronics Research
`
`Center at The University of Texas at Austin My research areas include the
`
`fabrication and modeling of electromagnetic micro machined sensors and
`
`actuators I am also involved in research relating to integrated circuit processing
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`6
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`Declaration of Dean P Neikirk PhD
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`Case IPR201700055 for
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`and the high frequency properties of transmission lines Over the years I
`
`conducted research in the area of wireless sensors for identifying failing bridges
`
`and improving the safety of new bridges I have also conducted research in the
`
`areas of electromagnetics and acoustics manufacturing systems engineering and
`
`solidstate electronics
`
`18
`
`For over ten years I served as the Graduate Advisor of the Department
`
`of Electrical and Computer Engineering at the University of Texas at Austin as
`
`well as serving for over five years as an Associate Chairman of the Electrical and
`
`Computer Engineering Department at The University of Texas at Austin In
`
`addition to my current position as a professor in the Electrical and Computer
`
`Engineering Department at The University of Texas at Austin I am also an
`
`Associate Dean of Graduate Studies at The University of Texas at Austin
`
`19
`
`I have also devoted a significant portion of my time at the University
`
`to contributing to various technical journals and other publications My work has
`
`been included in 92 referenced archival journal publications 165 referenced
`
`conference proceedings and 24 published abstracts I have also contributed to
`
`book chapters and technical reports relating to various electrical engineering
`
`topics My publications have addressed technologies such as chemical sensors
`
`integrated circuits for antenna arrays determining conductor
`
`loss in transmission
`
`lines devices for farinfrared detection multilayer interconnection lines for high
`
`7
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`Declaration of Dean P Neikirk PhD
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`Case IPR201700055 for
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`speed digital
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`integrated circuits RF oscillator circuits memoryswitching double
`
`barrier quantum well diodes circuits RF and infrared detection circuits and other
`
`topics related to sensors and optical systems
`
`20
`
`More information on my research and teaching experience and my
`
`contribution to technical publications is included in my curriculum vitae Ex
`
`2004
`
`F
`
`Industry Experience
`
`21 While the majority of my professional experience in electrical
`
`engineering has involved research and teaching I have also provided technical
`
`consulting to numerous companies and been involved in academic industry
`
`partnerships For example I have provided consulting to Teltech Resource
`
`Network Ardex Inc EP Hamilton Associates Burnett Company
`
`Microelectronics
`
`and Computer Technology Corporation and Baker Hughes
`
`In
`
`addition my work on electrochemical
`
`sensors was selected as a
`
`commercialization venture between the University of Texas and LabNow Inc
`
`Further my work together with a graduate student relating to actuator stacked
`
`microbolometer arrays for multispectral
`
`infrared detection was selected for
`
`sponsorship by Coventor Inc a company that provides software tools for
`
`developing microelectromechanical systems microfluidics and semiconductor
`
`process applications
`
`8
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`Declaration of Dean P Neikirk PhD
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`Case IPR201700055 for
`US Patent No 8236504
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`G Professional Society Involvement
`
`22
`
`I have been a Senior Member of the Institute of Electrical and
`
`Electronics Engineers IEEE for more than fifteen years From March 1991 to
`
`October 1994 I served as an Associate Editor for the IEEE publication called
`
`IEEE Transactions on Education I also served as a member of the Editorial
`
`Board on the IEEE Transactions on Microwave Theory and Techniques
`
`in the
`
`19902000 timeframe
`
`23
`
`A detailed description of my professional qualifications including a
`
`listing of my specialtiesexpertise and professional activities is contained in my
`
`curriculum vitae Ex 2004
`H
`
`Basis Of My Opinions And Materials Considered
`
`24
`
`In forming my opinions I have relied upon my education knowledge
`
`and experience with chemical sensor systems and components that can be used in
`
`devices capable of performing realtime PCR I also have relied upon my
`
`education knowledge and experience with optical design electronic design and
`
`thermal cycling as they relate to realtime PCR in general
`
`25
`
`For this work I reviewed and considered the following materials
`
`the 504 patent Ex 1001 including its specification and claims
`
`9
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`Declaration of Dean P Neikirk PhD
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`Case IPR201700055 for
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`the prosecution history of US Patent Application No 12827521
`
`the 521 application ie the prosecution history of the 504 patent
`
`Ex 1004
`
`the Petition for IPR of the 504 patent
`
`filed by TFS on October 14
`
`2016 the Petition cited herein as Pet
`
`the Declaration of Richard Mathies PhD the Mathies
`
`Declaration that accompanied the Petition Ex 1002
`
`US Patent No 6303322 Pantoliano Ex 1005
`US Patent No 5528050 Miller Ex 1006
`
`International Patent Application Publication No WO 9960381
`
`Gambini Ex 1007
`
`The translation of Japanese Patent Application Publ No P2001
`
`242081A Iwasaki Ex 1009
`
`BioRads Preliminary Response to the Petition filed January 19
`2017 Paper No 7
`
`the Patent Trial and Appeal Boards decision to institute Inter Partes
`Review of the 504 patent the Board Decision Paper No 8
`
`entered April 3 2017 and
`
`the transcript of the May 24 2017 deposition of Dr Mathies
`
`Mathies Tr Ex 2005
`
`10
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`Declaration of Dean P Neikirk PhD
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`II
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`PATENT PRINCIPLES
`
`Case IPR201700055 for
`US Patent No 8236504
`
`26
`
`I am a professor of engineering by trade and the opinions I express in
`
`this declaration involve the application of my engineering knowledge and
`
`experience to the evaluation of the claims of the 504 patent and the impact of
`
`certain prior art on the 504 patent
`
`I am not a lawyer and have not been trained in
`
`the law of patents Therefore I have requested the attorneys from Jones Day who
`
`represent BioRad to provide me with guidance as to the applicable patent
`
`law in
`
`this matter The paragraphs below express my understanding of how I must apply
`
`current legal principles related to patent claim construction and validity to my
`
`analysis
`
`27
`
`It
`
`is my understanding that when interpreting the claims of the
`
`504 patent
`
`I must do so from the perspective of one of ordinary skill
`
`in the art at
`
`the relevant priority date My understanding is that the earliest claimed priority
`
`date of the 504 patent
`
`is May 8 2003 I generally agree with the characterization
`
`of a POSA in the field of the 504 patent
`
`that is set forth in paragraph 14 of the
`
`Mathies Declaration Ex 1002 Unlike Dr Mathies and me a POSA as defined
`
`by Dr Mathies and TFS does not possess an advanced degree in engineering or a
`
`related field Instead a POSA only has an undergraduate degree Pet 23 Ex
`
`1002 ¶14 Further in contrast
`
`to the many years of industry and academic
`
`experience that Dr Mathies and I both have a POSA as defined by Dr Mathies
`
`11
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`Declaration of Dean P Neikirk PhD
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`Case IPR201700055 for
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`and TFS only has about one years worth of experience in the design or
`
`manufacture of biological analysis analytical
`
`instruments Pet 3 Ex 10021114
`
`28
`
`It
`
`is my understanding that in determining whether a patent claim
`
`under post grant review before the United States Patent and Trademark Office
`
`PTO is obvious in view of prior art the PTO must construe the claim by giving
`
`the claim its broadest
`
`reasonable interpretation consistent with the specification as
`
`the claim terms and specification would be understood by a POSA It
`
`is my
`
`understanding that the broadest
`
`reasonable interpretation is the plain meaning ie
`
`the ordinary and customary meaning given to the term by a POSA at the time of
`
`the invention taking into account whatever guidance may be provided by the
`
`specification of the patent
`
`It also is my understanding that the prosecution history
`
`of a patent can be used as guidance when construing claims
`
`29
`
`For the purposes of this review I have construed each claim term in
`
`accordance with its plain meaning ie its ordinary and customary meaning under
`
`the required broadest
`
`reasonable interpretation in light of the specification of the
`
`504 patent and prosecution history
`
`30
`
`I understand that a claim is unpatentable under 35 USC § 103 if the
`
`claimed subject matter as a whole would have been obvious to a POSA at the time
`
`of the invention which I have been instructed to treat at present as May 8 2003 I
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`also understand that an obviousness analysis takes into account
`
`the scope and
`
`12
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`Declaration of Dean P Neikirk PhD
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`Case IPR201700055 for
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`content of the prior art the differences between the claimed subject matter and the
`
`prior art and the level of ordinary skill
`
`in the art at the time of the invention
`
`III
`
`PROPOSED CLAIM CONSTRUCTION
`
`31
`
`In another
`
`IPR filed by TFS against
`
`the 504 patent IPR201700054
`
`I prepared a Declaration containing among other things a proposed construction
`
`for several terms recited in the 504 patent claims Specifically I construed the
`terms 1 heating element 2 heater and 3 sample wells The term
`
`heating element is recited in independent claim 1 of the 504 patent while
`
`independent claim 13 recites the term heater Both claims 1 and 13 also recite the
`
`term sample wells
`
`32
`
`To arrive at my proposed construction I considered the plain
`
`language of the 504 patent claims and reviewed the 504 patent specification and
`
`prosecution history of the 521 application which issued as the 504 patent
`
`33
`
`As stated in my counterpart Declaration my opinion is that the
`
`broadest
`
`reasonable interpretation of heating element and heater in view of the
`
`specification and prosecution history of the 504 patent corresponds to the lid
`
`heaters of the 504 patent specification ie a separate plate or block that provides
`
`heat
`
`is positioned between the sample block and detection module and allows the
`
`detection module to optically communicate with sample wells in the sample
`
`block The basis for my opinion and explanation of why the construction of
`
`13
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`Declaration of Dean P Neikirk PhD
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`Case IPR201700055 for
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`heating element and heater put forth by TFS in its IPR201700054 Petition is
`
`not correct is set out in detail in my IPR201700054 Declaration
`
`34
`
`As also stated in my counterpart Declaration my opinion is that the
`
`broadest
`
`reasonable interpretation of sample wells are depressions open on one
`
`end and closed on the opposite end into which a reaction vessel can be placed
`
`The basis for my opinion and explanation of why the construction of sample
`
`wells put forth by TFS in its IPR201700054 Petition is not correct is set out in
`
`detail in my IPR201700054 Declaration
`
`IV THE 504 PATENT CLAIMS ARE NOT OBVIOUS OVER
`PANTOLIANO MILLER AND GAMBINI
`
`35
`
`Ground 1 of TFS Petition
`
`which I understand is the only one of
`
`TFS five grounds that was instituted
`
`alleges that claims 13 611 1317 19 20
`
`and 22 of the 504 patent are obvious over the combination of Pantoliano Miller
`
`and Gambini
`
`In identical paragraphs TFS and Dr Mathies argue that Pantoliano
`
`discloses apparatuses that possess all but two predictable features of claims 1
`
`and 13 of the 504 patent 1 inhead placement of the light generator and
`light detector and 2 a lid heater with optical holes Pet 18 Ex 1002 ¶48
`
`They further argue that Miller and Gambini respectively teach the missing
`
`features Id
`
`36
`
`As I understand it even if TFS and its expert are correct that each
`
`feature of claim 1 and 13 was independently known in the art before BioRad first
`
`14
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`Declaration of Dean P Neikirk PhD
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`Case IPR201700055 for
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`filed the 504 patent disclosure in May 2003 the 504 patent
`
`invention still would
`
`not be obvious
`
`Instead I understand that to prove obviousness TFS is required to
`
`demonstrate that i it would have been obvious to a POSA to select
`references eg a POSA would not select a reference that teaches away from the
`
`these three
`
`504 invention ii
`
`the subject matter of the 504 patent claims as a whole would
`
`have been obvious to a POSA from these three references iii
`
`a POSA would
`
`have had motivation to combine the references in the first
`
`instance and iv a
`
`POSA reasonably would have expected to be successful
`
`in doing so In my
`
`opinion TFS has not met these criteria Therefore it
`
`is my opinion that none of
`
`the claims challenged in ground 1 would have been obvious to a POSA in view of
`
`the art relied on by TFS
`
`A A POSA Would Not Have Selected Pantoliano As A Primary
`Reference
`
`37
`
`TFS primary reference Pantoliano is directed to thermal shift assays
`
`Ex 1005 5711 According to Pantoliano its assays result in rapid high
`
`throughput
`
`screening of samples Ex 1005 294445 Pantoliano describes at
`
`least two types of optics systems used with at least two types of apparatuses that
`
`can do the rapid high throughput screening one optics system that screens
`
`samples simultaneously and another that screens 96 samples in under one
`
`minute Ex 1005 21319 3512 Pantoliano generally states toward the end of
`
`its disclosure that its apparatuses can be used to perform thermal cycling steps
`
`15
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`Declaration of Dean P Neikirk PhD
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`Case IPR201700055 for
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`Id 425859 As I describe below neither of the optics systems described by
`
`Pantoliano meet the requirements of the 504 patent claims In addition at the time
`
`of the 504 invention a POSA would not have interpreted the physical apparatuses
`
`described by Pantoliano as an appropriate starting point to develop a fluorescence
`
`detection apparatus or thermal cycler apparatus as defined in the 504 patent
`
`claims
`
`38
`
`The optics system and apparatus proposed by Pantoliano for
`
`simultaneous detection of spectral emission
`
`from all samples uses a stationary
`
`CCD camera to detect sample emissions and stationary light source Ex 1005
`
`3423352 Fig 30 The camera and light source are not disclosed as being within
`
`a common module nor located in any particular proximity eg in close proximity
`
`to one another Id Fig 30 TFS expert described several shortcomings of the
`
`type of brightfield illumination represented by Pantolianos CCD camera Ex
`
`2005 Mathies Tr 159915 According to Dr Mathies the CCD video system
`
`causes all of the sample wells to fluoresce at the same time because the wells are
`
`all
`
`illuminated at the same time Id at Tr 1591520 Again according to TFS
`expert that leads to the following deficiencies 1 weak excitation light intensity
`2 decrease in signaltonoise ratio and 3 too much scattered and stray light
`
`that tends to produce a lot of background flare and background signal Id at
`
`Tr 159211604
`
`16
`
`BioRad Exhibit 2003
`IPR201700055
`Page 18 of 34
`
`
`
`Declaration of Dean P Neikirk PhD
`
`Case IPR201700055 for
`US Patent No 8236504
`
`39
`
`Pantolianos optics system that scans 96 samples in under one
`
`minute does so with a fiber optic probe attached to a movable armature Ex
`
`1005 21326 35735 38103917 Figs 29 31 33 The probe is attached to
`
`two fiber optic cables one linked to a non movable light source and the other to a
`
`non movable detector both in separate offboard housings Ex 1005 352032
`
`Figs 29 31 33 One of Pantolianos main fiber optic probe based apparatuses is a
`
`complicated sixplate rotating carousel configuration Ex 1005 Fig 33 3810
`
`3936
`
`40
`
`In addition Pantoliano discloses multiple different apparatus types
`
`each requiring various different components including different optics systems
`
`motors movement means heat conducting blocks electrical connections and
`
`sample plate capacity Ex 1005 3313665 38103936 Figs 2931 33
`
`41
`
`In my opinion at the time of the 504 invention it would not have been
`
`obvious to a POSA with the comparatively low level of education experience and
`
`skill
`
`that TFS and Dr Mathies have assigned to have selected Pantoliano from
`
`among the prior art to use as a primary reference Moreover in view of the
`
`multiple optics systems and physical apparatuses disclosed in Pantoliano it would
`
`not have been obvious to a POSA to have selected the discrete portions of the
`
`Pantoliano disclosure to the exclusion of the other optics systems and physical
`
`apparatuses disclosed in Pantoliano that TFS and its expert selected to use as a
`
`17
`
`BioRad Exhibit 2003
`IPR201700055
`Page 19 of 34
`
`
`
`Declaration of Dean P Neikirk PhD
`
`Case IPR201700055 for
`US Patent No 8236504
`
`starting point to develop the claimed 504 patent
`
`invention In particular a POSA
`
`would not have known where to begin with respect
`
`to modifying Pantolianos
`
`apparatuses in the manner TFS and Dr Mathies argue due to the numerous various
`
`components and several different
`
`types of unrelated apparatuses they would have
`
`been faced with Even if a POSA did attempt to completely gut and re engineer
`
`one of Pantolianos apparatuses they would not have had the level of skill
`
`to
`
`determine which apparatus to use as a starting point let alone the ability to
`
`successfully introduce all of the numerous changes to the Pantoliano apparatus that
`
`would accompany addition of an optics head like Millers movable
`sourcedetector module and a platen like Gambinis See Section IVB2
`
`infra
`
`B
`
`42
`
`There Was No Motivation To Combine
`
`Even assuming that it would have been obvious to a POSA to have
`
`selected Pantoliano as a starting point I understand that when determining whether
`
`a given combination of references renders a patent claim obvious a preliminary
`
`question is whether a POSA at the time of the invention had a reason to combine
`
`the prior art elements in the way the claimed invention does That
`
`is was a POSA
`
`motivated to combine the prior art references that allegedly make a claim obvious
`
`In my opinion TFS has failed to adequately explain why a POSA had motivation
`
`to combine The lack of a sufficient explanation is not surprising to me however
`
`18
`
`BioRad Exhibit 2003
`IPR201700055
`Page 20 of 34
`
`
`
`Declaration of Dean P Neikirk PhD
`
`Case IPR201700055 for
`US Patent No 8236504
`
`because the facts demonstrate that a POSA did not have had the requisite
`
`motivation as discussed further below
`
`1
`
`TFS And Dr Mathies Ignore That Miller Was Filed Before
`Pantoliano And Has Less Disclosure Of Optics Components
`Than Pantoliano
`
`43
`
`In identical words TFS and Dr Mathies argue that in Pantolianos
`
`1997 thermocycler the light source and light detector were too big to fit
`
`inside
`
`the optics head itself making inhead placement undesirable since the optics head
`
`would be slowed down by the high mass of such large components Pet 1819
`
`Ex 10021149 emphasis has been added They further argue that Miller was
`
`published in 2000
`
`after Pantoliano
`
`and was evidence of new light sources
`
`and new light detectors that were smaller and more powerful
`
`than the light
`
`sources and light detectors that were available to the inventors of Pantoliano Pet
`
`19 Ex 1002 ¶ 49 These arguments are made to support TFS and Dr Mathies
`
`contention that once Miller was available in the art a POSA would have had both
`
`the motivation and the ability to modify Pantoliano by replacing its optics system
`
`either its CCDbased system or fiber optic probe based system with an optics
`
`head like Millers Id
`
`44
`
`These arguments turn on fundamental misapprehensions of when
`
`Miller was available to a POSA what Miller actually discloses and what a POSA
`
`would have taken from Miller As an initial point Miller was filed before
`
`19
`
`BioRad Exhibit 2003
`IPR201700055
`Page 21 of 34
`
`
`
`Declaration of Dean P Neikirk PhD
`
`Case IPR201700055 for
`US Patent No 8236504
`
`Pantoliano in 1995 not in 2000 Further Miller does not disclose any new light
`
`sources or light detectors let alone new smaller and more powerful
`
`light sources
`
`and light detectors In fact Pantoliano discloses more light sourcesdetectors than
`
`Miller Miller also does not require the detector
`
`to be in the same movable module
`
`as the light source Just as is done in Pantoliano Miller illustrates the use of fiber
`
`optics to connect a separate detector
`
`to the movable head Ex 1006 Figs 5 6 9
`
`41621 A POSA would not have seen Miller as suggesting the use of flexible
`
`fiber optics to be a disadvantage and thus would have seen no compelling reason
`
`to move the detector and source into a single movable module since Miller in fact
`
`shows them as separate In view of these facts Miller would not have changed a
`
`POSAs prevailing view that in Pantolianos thermocycler the light source and
`
`light detector were too big to fit
`
`inside the optics head itself making inhead
`
`placement undesirable Pet 1819 Ex 10021149 If it was undesirable in
`
`Pantolianos 1997 thermocycler
`
`to use an optics head then it follows that doing
`
`so a year earlier in 1996 also was undesirable Id
`
`2
`
`TFS And Dr Mathies Ignore The Work Necessary To Gut
`And Re engineer Pantoliano
`
`45
`
`TFS and Dr Mathies both fail
`
`to recognize that a POSA with the skill
`
`level they have assigned would not have been able to completely gut and re
`
`engineer Pantoliano in the manner alleged with any reasonable expectation of
`
`success and thus would not have been motivated to use Pantoliano as a starting
`
`20
`
`BioRad Exhibit 2003
`IPR201700055
`Page 22 of 34
`
`
`
`Declaration of Dean P Neikirk PhD
`
`Case IPR201700055 for
`US Patent No 8236504
`
`reference in the first place Specifically adding Millers unified optics head
`
`with both source and detector
`
`in one movable module and then adding Gambinis
`
`platen to Pantoliano as well would not have been simply remedial as TFS and
`
`Dr Mathies argue Pet 21 Ex 10021151 Ex 2005 Mathies Tr 1571215
`
`46
`
`To the contrary a POSA setting out to redesign and re engineer one
`
`of the disclosed systems of Pantoliano to incorporate a movable module containing
`
`both source and detector would have encountered many significant problems
`
`Placing both source and detector
`
`in the movable module would have required
`
`redesign and complete reconstruction of the optical system of Pantoliano Miller
`
`provides no direct advice on how to do this In fact as discussed above Miller
`
`itself acknowledges
`
`that it wo
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