`571-272-7822
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` Paper No. 8
`Entered: March 17, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`THERMO FISHER SCIENTIFIC INC.,
`Petitioner,
`
`v.
`
`BIO-RAD LABORATORIES, INC.,
`Patent Owner.
`____________
`
`Case IPR2017-00054
`Patent 8,236,504 B2
`____________
`
`Before SHERIDAN K. SNEDDEN, ZHENYU YANG, and
`CHRISTOPHER G. PAULRAJ, Administrative Patent Judges.
`
`YANG, Administrative Patent Judge.
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`Agilent Exhibit 1249
`Page 1 of 17
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`IPR2017-00054
`Patent 8,236,504 B2
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`
`INTRODUCTION
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`Thermo Fisher Scientific Inc. (“Petitioner”) filed a Petition for an
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`inter partes review of claims 1–3, 6–11, 13–17, and 19–22 of U.S. Patent
`
`No. 8,236,504 B2 (“the ’504 patent,” Ex. 1001). Paper 3 (“Pet.”). Bio-Rad
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`Laboratories, Inc. (“Patent Owner”) timely filed a Preliminary Response.
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`Paper 7 (“Prelim. Resp.”). We review the Petition under 35 U.S.C. § 314.
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`For the reasons provided below, we determine Petitioner has satisfied
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`the threshold requirement set forth in 35 U.S.C. § 314(a). Because
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`Petitioner has established a reasonable likelihood that it would prevail in
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`showing the unpatentability of claims 1–3, 6–11, 13–17, and 19–22, we
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`institute an inter partes review of the challenged claims.
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`Related Proceedings
`
`According to the parties, Patent Owner has asserted the ’504 patent
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`against Petitioner in Bio-Rad Labs, Inc. v. Thermo Fisher Scientific Inc.,
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`Case No. 16-358 (D. Del.). Pet. 47; Paper 5, 2.
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`Petitioner has concurrently filed IPR2017-00055, challenging the
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`same claims of the ’504 patent based on different prior art. Pet. 47; Paper 5,
`
`2.
`
`The ’504 Patent
`
`The ’504 patent “relates in general to fluorescence detection systems
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`and in particular to a fluorescence detection system having a movable
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`excitation/detection module for use with a thermal cycler.” Ex. 1001, 1:21–
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`24.
`
`The ’504 patent states that both thermal cyclers and fluorometers for
`
`use with fluorescent-labeled samples were known in the art. Id. at 1:25–64.
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`2
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`Agilent Exhibit 1249
`Page 2 of 17
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`IPR2017-00054
`Patent 8,236,504 B2
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`It also acknowledges the teachings in prior art of an integrated optical reader
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`with a thermal cycler. Id. at 2:1–4. According to the ’504 patent,
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`then-“[e]xisting fluorometers suffer from various drawbacks,” and the ’504
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`patent discloses “an improved fluorometer for a thermal cycler that
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`overcomes these disadvantages.” Id. at 2:11, 54–55.
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`Illustrative Claims
`
`Among the challenged claims, claims 1 and 13 are independent. They
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`are reproduced below (emphases and brackets added):
`
`1. A fluorescence detection apparatus for analyzing samples
`located in a plurality of wells in a thermal cycler, the apparatus
`comprising:
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`[a] a support structure attachable to the thermal cycler;
`
`[b] a shuttle movably mounted on the support structure; and
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`[c] a detection module attached to the shuttle, the detection
`module including:
`
`[c1] a housing having an opening oriented toward the
`plurality of wells;
`
`[c2] an excitation light generator disposed within the
`housing; and
`
`[c3] an emission light detector disposed within the
`housing,
`
`wherein, when the support structure is attached to the thermal
`cycler, a heating element is disposed between the detection
`module and the sample wells and the shuttle is movable to
`position the detection module in optical communication
`with different wells of the plurality of wells through a
`plurality of openings extending through the heating
`element.
`
`
`
`
`
`3
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`Agilent Exhibit 1249
`Page 3 of 17
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`IPR2017-00054
`Patent 8,236,504 B2
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`13.
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`A thermal cycler apparatus comprising:
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`[a] a thermal cycler having an exterior housing and a plurality
`of sample wells for holding reaction vessels;
`
`[b] a heater to prevent condensation from forming on a
`surface of the reaction vessels when the reaction vessels
`are in the sample wells, the heater having a plurality of
`transparent portions to permit optical communication with
`each of the plurality sample wells;
`
`[c] a support structure disposed inside the exterior housing on
`an opposite side of the heater from the sample wells;
`
`[d] a shuttle movably mounted on the support structure; and
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`[e] a detection module attached to the shuttle, the detection
`module including:
`
`a module housing having an opening that is oriented
`toward the plurality of sample wells when the thermal
`cycler is in an operating state;
`
`an excitation light generator disposed entirely within the
`module housing; and
`
`an emission light detector disposed entirely within the
`module housing;
`
`wherein, when the thermal cycler is in the operating state, the
`shuttle is movable to position the detection module in
`optical communication with different sample wells of the
`plurality of sample wells through the transparent portions
`of the heater.
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`
`
`
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`4
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`Agilent Exhibit 1249
`Page 4 of 17
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`IPR2017-00054
`Patent 8,236,504 B2
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`Asserted Grounds of Unpatentability
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`Petitioner asserts the following grounds of unpatentability:
`
`Claim(s)
`1–3, 6–11, 13–17, 19, 20, 22
`21
`1–3, 6, 7, 9, 13, 14, 16, 19–22
`8, 10, 15
`11, 17
`
`Basis
`§ 102(b)
`§ 103
`§ 103
`§ 103
`§ 103
`
`Reference(s)
`Kordunsky1
`Kordunsky and Li2
`Li
`Li and Heffelfinger3
`Li and Miller4
`
`In support of its patentability challenge, Petitioner relies on the
`
`Declaration of Dr. Richard Mathies. Ex. 1002.
`
`ANALYSIS
`
`Claim Construction
`
`In an inter partes review, the Board interprets a claim term in an
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`unexpired patent according to its broadest reasonable construction in light of
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`the specification of the patent in which it appears. 37 C.F.R. § 42.100(b);
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`Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016). Under
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`that standard, and absent any special definitions, we assign claim terms their
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`ordinary and customary meaning, as would be understood by one of ordinary
`
`skill in the art at the time of the invention, in the context of the entire patent
`
`disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`
`
`
`1 Kordunsky, et al., International Publication No. WO 2004/104547 A2,
`published December 2, 2004 (Ex. 1009).
`2 Certified Translation of Li, et al., Chinese Publication No. CN1379236A,
`published November 13, 2002 (Ex. 1006).
`3 Heffelfinger, et al., U.S. Patent No. 6,043,506, issued March 28, 2000
` (Ex. 1015).
`4 Miller, et al., U.S. Patent No. 5,528,050, issued June 18, 1996 (Ex. 1029).
`5
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`Agilent Exhibit 1249
`Page 5 of 17
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`IPR2017-00054
`Patent 8,236,504 B2
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`2007). Any special definitions for claim terms must be set forth with
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`reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d
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`1475, 1480 (Fed. Cir. 1994).
`
`The parties seek the construction of “heating element” as recited in
`
`claim 1, or “heater” as recited in claim 13. Pet. 4–5; Prelim. Resp. 6–9.
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`Claim 1 recites that the “heating element is disposed between the detection
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`module and the sample wells.” Similarly, claim 13 requires the detection
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`module be positioned “in optical communication with different sample wells
`
`of the plurality of sample wells through the transparent portions of the
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`heater.” The parties agree that, for purpose of this proceeding, these two
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`terms should be “treated as equivalent.” Pet. 4; see also Prelim. Resp. 6
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`(proposing the same construction for the two terms).
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`Petitioner asserts the ’504 patent discloses a sample unit and a lid
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`heater, both of which have the heating function. Pet. 4; see also Ex. 1001,
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`4:59 (“Sample unit 202 also includes heating elements”); id. at 5:1–3 (“Lid
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`heater 204 has . . . electronically controlled heating elements”). The parties
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`agree that, the lid heater is, and the sample unit is not, the claimed “heating
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`element”/“heater.” Pet. 5, 7–8; Prelim. Resp. 8–9. They, however, dispute
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`whether a “heating element”/“heater” is limited to the lid heater disclosed in
`
`the ’504 patent—Petitioner argues that it should not (Pet. 4–5); Patent
`
`Owner contends it should (Prelim. Resp. 6–9). At this stage, we find
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`Petitioner’s argument more persuasive.
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`Petitioner argues that in the ’504 patent, “the lid heater is invariably
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`depicted as being directly on top of the sample unit.” Pet. 9. Patent Owner
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`contends that “[t]he specification nowhere mandates that lid heaters of the
`
`6
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`Agilent Exhibit 1249
`Page 6 of 17
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`IPR2017-00054
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`disclosed apparatuses be ‘on top of’ sample tubes that are placed in the
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`sample units of the apparatuses.” Prelim. Resp. 18. We are not persuaded.
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`In the ’504 patent, the lid heater “is coupled to” the lid. Ex. 1001, 5:3–4.
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`The ’504 patent discloses, and Patent Owner acknowledges, that the lid is
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`placed “on the sample unit.” Id. at 5:8–9. Patent Owner does not present
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`persuasive evidence, and we do not find any, to show that the lid heater in
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`the ’504 patent is anywhere other than above the sample wells.
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`Petitioner then points to claim 21, which depends from claim 13 and
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`further recites that “the detection module is positioned such that the opening
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`is below the plurality of sample wells.” According to Petitioner, “[a]rtisans
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`would have understood that an optics head [i.e., detection module] placed
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`below sample wells as required by claim 21 could not view the wells
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`‘through’ the lid heater, which is only described as necessarily placed on top
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`of the wells.” Id. at 5 (citing Ex. 1002 ¶ 24). We find this argument
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`persuasive.
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`Thus, based on the current record, we determine that the “heating
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`element”/“heater” recited in the challenged claims is not limited to the lid
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`heater disclosed in the ’504 patent. This determination as to the scope of
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`“heating element”/“heater” is sufficient for purposes of this Decision, and
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`we need not further address the terms at this time.
`
`On this record and for purposes of this Decision, we see no need to
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`construe any other term expressly. See Wellman, Inc. v. Eastman Chem.
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`Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (stating that claim terms need
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`only be construed to the extent necessary to resolve the controversy).
`
`7
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`Agilent Exhibit 1249
`Page 7 of 17
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`IPR2017-00054
`Patent 8,236,504 B2
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`Priority Date
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`The ’504 patent issued from application number 12/827,521 (“the
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`’521 application), which was filed on June 30, 2010. Ex. 1001, (21), (22). It
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`also claims priority to 11/555,642 (“the ’642 application), which was filed
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`on November 1, 2006, and 10/431,708, which was filed on May 8, 2003. Id.
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`at (63).
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`Petitioner asserts that the challenged claims are not entitled to priority
`
`before June 30, 2010. Pet. 6–14. According to Petitioner, the ’642
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`application fails to provide written description support for the “heating
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`element”/“heater.” Id. at 7–11. Based on the current record, and because we
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`determine the “heating element”/“heater” is not limited to the lid heater, we
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`agree with Petitioner.
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`Claims are entitled to the benefit of the filing date of an earlier filed
`
`application only if the disclosure of the earlier application provides written
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`support for those claims, as required by 35 U.S.C. § 112. In re Chu, 66 F.3d
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`292, 297 (Fed. Cir. 1995). To satisfy the written description requirement,
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`the prior application must convey with reasonable clarity to those skilled in
`
`the art that, as of the earlier filing date, the inventor was in possession of the
`
`invention. Vas–Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir.
`
`1991).
`
`According to Patent Owner, the disclosures in the ’642 application are
`
`identical to those in the challenged ’504 patent. Prelim. Resp. 11. We note,
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`however, independent claims 1 and 13 were amended during prosecution of
`
`the ’521 application to add the recitation to “heating element” and “heater,”
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`respectively, to overcome obviousness rejections. Ex. 1004, 22–30.
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`8
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`Agilent Exhibit 1249
`Page 8 of 17
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`IPR2017-00054
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`Petitioner asserts that the ’642 application only discloses a lid heater,
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`“which is a single narrow example of the generic heating element/heater
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`recited in the claims.” Pet. 8. As explained above, we determine that the
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`“heating element”/“heater” recited in the challenged claims is not limited to
`
`the lid heater disclosed in the ’504 patent. Supra at 7. Patent Owner does
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`not point to any portion of the ’642 application that describes a “heating
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`element”/“heater” other than a lid heater. Thus, based on the current record,
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`we are persuaded that the description of the lid heater “does not provide
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`commensurate support” for the “heating element”/“heater” recited in the
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`challenged claims. See Pet. 7; see also Gentry Gallery, Inc. v. Berkline
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`Corp., 134 F.3d 1473, 1479 (1998) (holding the disclosure of a console as
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`the only possible location for the controls does not support claims in which
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`the location of the controls is other than on the console).
`
`We acknowledge that the ’642 application states that “the
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`fluorescence detection assembly described herein may be adapted for use
`
`with a wide variety of thermal cycler systems and may interrogate sample
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`wells from any direction (e.g., above or below) in accordance with the
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`design of a particular instrument.” Ex. 1007 ¶ 80 (emphasis added).
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`Although a heater other than a lid heater might have been obvious in view of
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`this disclosure, entitlement to a priority date, “does not extend to subject
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`matter which is not disclosed, but would be obvious over what is expressly
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`disclosed.” In re Huston, 308 F.3d 1267, 1277 (Fed. Cir. 2002) (quoting
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`Lockwood v. Am. Airlines Inc., 107 F.3d 1565, 1571–72 (Fed. Cir. 1997)).
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`In analyzing written description support:
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`9
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`Agilent Exhibit 1249
`Page 9 of 17
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`IPR2017-00054
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`While the meaning of terms, phrases, or diagrams in a disclosure
`is to be explained or interpreted from the vantage point of one
`skilled in the art, all the limitations must appear in the
`specification. The question is not whether a claimed invention is
`an obvious variant of that which is disclosed in the specification.
`Rather, a prior application itself must describe an invention, and
`do so in sufficient detail that one skilled in the art can clearly
`conclude that the inventor invented the claimed invention as of
`the filing date sought.
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`PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1306 (Fed. Cir.
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`2008) (citing Lockwood, 107 F.3d at 1572).
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`In sum, based on the current record, we conclude that the ’642
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`application does not provide adequate written description support for the
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`“heating element”/“heater” recited in the challenged claims. As a result, at
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`this time, we find the challenged claims are not entitled to the priority of the
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`’642 application filing date.5 Instead, for purposes of this Decision, the
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`priority date of the challenged claims is June 30, 2010, the actual filing date
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`of the ’521 application, which issued as the ’504 patent.
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`Anticipation by Kordunsky
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`Petitioner argues that claims 1–3, 6–11, 13–17, 19, 20, and 22 are
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`anticipated by Kordunsky. Pet. 15–23. Because, on the present record, we
`
`
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`5 Petitioner also contends that the ’642 application does not provide adequate
`written description support for a heating element with “a plurality of
`openings extending through” it, as recited in claim 1, or a “heater having a
`plurality of transparent portions to permit optical communication” with each
`well, as recited in claim 13. Pet. 11–14. We need not address this argument
`because we conclude the ’642 application does not provide adequate written
`description support for “heating element”/“heater.”
`10
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`Agilent Exhibit 1249
`Page 10 of 17
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`have determined that the priority date of the challenged claims is June 30,
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`2010, Kordunsky (published on December 2, 2004) qualifies as prior art
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`under 35 U.S.C. § 102(b).
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`Patent Owner states that Kordunsky is a member of the ’504 patent
`
`family with a disclosure identical to the ’504 patent. Prelim. Resp. 11; see
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`also Pet. 15 (stating the disclosures of Kordunsky and the challenged ’504
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`patent are “substantially identical”). Petitioner provides claim charts,
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`matching each limitation of the challenged claims with the disclosures of
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`Kordunsky. Id. at 16–23. Patent Owner does not dispute these
`
`representations. After reviewing Petitioner’s claim charts, we are persuaded
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`that Kordunsky discloses each and every limitation of the challenged claims.
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`We, therefore, adopt the claim charts as our own and concludes that
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`Petitioner has established a reasonable likelihood that it would prevail in
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`showing that claims 1–3, 6–11, 13–17, 19, 20, and 22 are anticipated by
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`Kordunsky.
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`Obviousness over Li
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`Petitioner argues that claims 1–3, 6, 7, 9, 13, 14, 16, and 19–22 would
`
`have been obvious over Li. Pet. 25–44. Based on the current record, we
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`determine Petitioner has established a reasonable likelihood that it would
`
`prevail in this assertion.
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`Because, on the present record, we have determined that the priority
`
`date of the challenged claims is June 30, 2010, Li (published on November
`
`13, 2002 (Ex. 1006, [43])) qualifies as prior art under 35 U.S.C. § 102(b). Li
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`also qualifies as prior art under 35 U.S.C. § 102(a) even if the challenged
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`11
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`Agilent Exhibit 1249
`Page 11 of 17
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`claims can claim priority to May 8, 2004, the earliest possible priority date
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`shown on the face of the ’504 patent.
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`Petitioner asserts that Li teaches or suggests each elements of claims
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`1–3, 6, 7, 9, 13, 14, 16, and 19–22. Pet. 25–44. For example, regarding
`
`claim 1, Petitioner refers to Li for teaching a “fluorescence quantitative PCR
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`analyzing system” that is a thermal cycler comprising a thermal cycling unit,
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`which has “a row of wells,” as the preamble requires. Id. at 27 (citing
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`Ex. 1006, Abstract, claim 1). For limitations [a] and [b], Petitioner contends
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`that Li teaches “a shuttle in the form of a ‘belt capable of moving back and
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`forth,’ movably mounted on a support in the form of a shaft bearing ‘a
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`stepper motor.’” Id. at 28 (citing Ex. 1006, claim 1, 3:10, 6:15–27, 8:16–
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`17). Petitioner acknowledges that “Li does not literally mention that its
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`support is attached to the rest of the cycler.” Id. According to Petitioner,
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`however, an ordinary artisan would have understood “this attachment was
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`obvious” because “the shaft should be attached to the cycler to work
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`effectively as a support for a moving head.” Id. (citing Ex. 1002 ¶ 63).
`
`Petitioner argues that Li teaches “a fluorescence detection unit,” with
`
`its housing fixed on the belt, as limitation [c] requires. According to
`
`Petitioner, the detection unit in Li has a housing with an opening in the form
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`of a hole. Id. at 29 (citing Ex. 1006, 3:17–18, 8:19–20). Petitioner asserts
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`that because Li’s detection unit is located below the cycling block and the
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`hole is “provided on top of the housing,” the hole is oriented towards the
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`sample wells above it, as limitation [c1] requires. Id. (citing Ex. 1006,
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`Fig. 3, 8:16–20, 8:28–9:1). In addition, Petitioner contends that the
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`detection unit in Li includes an excitation light source as a generator and a
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`12
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`Agilent Exhibit 1249
`Page 12 of 17
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`photomultiplier tube as detector, as limitations [c2] and [c3] require. Id. at
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`29–30 (citing Ex. 1006, Fig. 3, 8:16–9:7).
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`Patent Owner does not dispute that Li teaches or suggests each of the
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`above-discussed limitations. After reviewing the record, we are satisfied
`
`that Petitioner has made a sufficient showing regarding these limitations.
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`Petitioner argues that Li also teaches or suggests the wherein clause of
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`claim 1. Pet. 30–32. Specifically, Petitioner contends that the cycling block
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`in Li is the recited “heating element.” Id. at 30–31. According to Petitioner,
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`in Li, the “row of wells” are on the top of the cycling block, and the
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`detection unit is located below the cycling block. Id. at 31 (citing Ex. 1006,
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`6:15–27; Ex. 1002 ¶ 68). Thus, Petitioner asserts the cycling block, which
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`can heat the samples (id. at 30), is the “heating element . . . disposed
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`between the detection module and the sample wells,” as required in the
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`wherein clause (id. at 31).
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`Patent Owner does not address Petitioner’s argument. Instead, Patent
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`Owner asserts that the “heated lid” in Li is not the same as, and there was no
`
`reason to modify it into, the “lid heater” in the challenged ’504 patent.
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`Prelim. Resp. 23–25. Patent Owner’s assertion is inapposite because
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`Petitioner refers to the cycling block in Li, and not the “heated lid,” as
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`teaching the “heating element” recited in claim 1. See Pet. 30–31.
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`Petitioner also contends that Li renders independent claim 13 obvious.
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`Pet. 36–39. All but one limitations of claim 13 are similar to those of claim
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`1. The only limitation that was not present in claim 1 is “a heater to prevent
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`condensation from forming on a surface of the reaction vessels when the
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`reaction vessels are in the sample wells.” Petitioner argues that cyclers in
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`13
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`Agilent Exhibit 1249
`Page 13 of 17
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`general, and Li’s cycling block in particular, would “heat the sides of the
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`sample tubes right up to the tube caps in order to prevent condensation onto
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`the sides of the tubes during such heating.” Id. at 37 (citing Ex. 1002 ¶ 80;
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`Ex. 1006, Figure 3; Ex. 1027 ¶¶ 7, 50, 63). Patent Owner does not dispute
`
`this. After reviewing the record, we find Petitioner’s argument addressing
`
`this issue persuasive.
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`In sum, based on the current record, we conclude that Petitioner has
`
`established a reasonable likelihood of prevailing on its assertion that claims
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`1 and 13 are unpatentable as obvious over Li. After considering Petitioner’s
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`arguments and evidence with respect to claims 2, 3, 6, 7, 9, 14, 16, and 19–
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`22 (Pet. 40–44), which Patent Owner does not address separately, we
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`determine that Petitioner has made a sufficient showing as to those claims,
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`as well.6
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`Obviousness over Li and Heffelfinger or Miller
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`Petitioner contends that (1) claims 8, 10, and 15 would have been
`
`obvious over Li and Heffelfinger (Pet. 44–46); and (2) claims 11 and 17
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`would have been obvious over Li and Miller (id. at 46). Based on the
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`current record, we determine Petitioner has established a reasonable
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`likelihood that it would prevail in these assertions.
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`Heffelfinger teaches an apparatus capable of measuring quantities of
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`biological or other types of samples that have been labeled using, for
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`
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`6 Petitioner also challenges claim 21 as obvious over Li and Kordunsky. Pet.
`24–25. In view of our institution of an inter partes review of claim 21 on
`another ground (i.e., obviousness over Li), we deny institution on this
`additional ground. See 37 C.F.R. § 42.108(a)–(b).
`14
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`Agilent Exhibit 1249
`Page 14 of 17
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`example, fluorescence. Ex. 1015, 2:61–64. Petitioner refers to Heffelfinger
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`for teaching a modular design for a detection system is advantageous
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`because a module can be “easily and quickly replaced” when needed. Pet.
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`45 (citing Ex. 1015, 8:24–29). According to Petitioner, in Heffelfinger, the
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`detection module, which is in the form of a scan head, is coupled to the
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`shuttle, which is form of a scan head mount, as claim 8 requires. Id. (citing
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`Ex. 1015, 9:30–31, 10:32–34). In addition, Petitioner asserts that
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`Heffelfinger teaches two stepper motors move the shuttle in two dimensions,
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`as claims 10 and 15 require. Id. at 45–46 (citing Ex. 1015, 9:27–40, 9:54–
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`56).
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`Miller teaches a movable compact scan head having multiple scanning
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`modalities so that the scan head supports two or more optical systems within
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`a small space. Ex. 1029, 1:53–56. Specifically, Petitioner argues that Miller
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`teaches a dual-head configuration, as claims 11 and 17 require. Pet. 46
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`(citing Ex. 1029, Figs. 1–4). According to Petitioner, the two-headed
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`module in Miller has the advantage to monitor two different wavelengths
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`simultaneously, and thus, allows multiplexed analysis. Id. (citing Ex. 1029,
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`1:64–2:1).
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`Patent Owner does not dispute that Heffelfinger teaches the additional
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`limitations recited in claims 8, 10, and 15, and that Miller teaches the
`
`additional limitation recited in claims 11 and 17. Instead, Patent Owner
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`contends that neither Heffelfinger nor Miller teaches a lid heater. Prelim.
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`Resp. 27, 29. Patent Owner also repeats the argument that there was no
`
`reason to modify the “heated lid” in Li into the “lid heater” in the challenged
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`’504 patent. Id. at 27–29.
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`15
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`Agilent Exhibit 1249
`Page 15 of 17
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`IPR2017-00054
`Patent 8,236,504 B2
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`As explained above, based on the current record, we conclude
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`Petitioner has made a sufficient showing that Li teaches “heating
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`element”/“heater” (in the form of the cycling block), as recited in the
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`challenged claims. Thus, it is irrelevant whether Heffelfinger or Miller
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`teaches a lid heater. Similarly, it is unnecessary to modify the “heated lid”
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`in Li into the “lid heater” in the challenged ’504 patent.
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`In sum, based on the current record, we conclude that Petitioner has
`
`established a reasonable likelihood of prevailing on its assertions that claims
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`8, 10, and 15 would have been obvious over Li and Heffelfinger, and claims
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`11 and 17 would have been obvious over Li and Miller.
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`CONCLUSION
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`For the foregoing reasons, we find that Petitioner has offered
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`sufficient evidence to institute an inter partes review. The information
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`presented in the Petition and accompanying evidence establishes a
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`reasonable likelihood that Petitioner would prevail in showing the
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`unpatentability of claims 1–3, 6–11, 13–17, and 19–22 of the ’504 patent.
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`At this stage of the proceeding, the Board has not made a final
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`determination as to the construction of any claim term or the patentability of
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`any challenged claim.
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`Accordingly, it is
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`ORDER
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`ORDERED that pursuant to 35 U.S.C. § 314, an inter partes review is
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`hereby instituted on the following grounds:
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`1. claims 1–3, 6–11, 13–17, 19, 20, and 22 as anticipated by
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`Kordunsky;
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`16
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`Agilent Exhibit 1249
`Page 16 of 17
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`IPR2017-00054
`Patent 8,236,504 B2
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`2. claims 1–3, 6, 7, 9, 13, 14, 16, and 19–22 as obvious over Li;
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`3. claims 8, 10, and 15 as obvious over Li and Heffelfinger; and
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`4. claims 11 and 17 as over Li and Miller;
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`FURTHER ORDERED that no other ground of unpatentability is
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`authorized in this inter partes review; and
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`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(a), inter
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`partes review of the ’504 patent is hereby instituted commencing on the
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`entry date of this Order, and pursuant to 35 U.S.C. § 314(c) and 37 C.F.R.
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`§ 42.4, notice is hereby given of the institution of a trial.
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`PETITIONER:
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`Steven Rocci
`rocci@woodcock.com
`
`Henrick Parker
`parker@woodcock.com
`
`
`PATENT OWNER:
`
`Craig Summers
`2css@knobbe.com
`
`Brenton R. Babcock
`2brb@knobbe.com
`
`David G. Jankowski
`2dgj@knobbe.com
`
`
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`17
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`Agilent Exhibit 1249
`Page 17 of 17
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