throbber
Trials@uspto.gov
`571-272-7822
`
` 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
`
`

`

`IPR2017-00054
`Patent 8,236,504 B2
`
`
`INTRODUCTION
`
`Thermo Fisher Scientific Inc. (“Petitioner”) filed a Petition for an
`
`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
`
`Laboratories, Inc. (“Patent Owner”) timely filed a Preliminary Response.
`
`Paper 7 (“Prelim. Resp.”). We review the Petition under 35 U.S.C. § 314.
`
`For the reasons provided below, we determine Petitioner has satisfied
`
`the threshold requirement set forth in 35 U.S.C. § 314(a). Because
`
`Petitioner has established a reasonable likelihood that it would prevail in
`
`showing the unpatentability of claims 1–3, 6–11, 13–17, and 19–22, we
`
`institute an inter partes review of the challenged claims.
`
`Related Proceedings
`
`According to the parties, Patent Owner has asserted the ’504 patent
`
`against Petitioner in Bio-Rad Labs, Inc. v. Thermo Fisher Scientific Inc.,
`
`Case No. 16-358 (D. Del.). Pet. 47; Paper 5, 2.
`
`Petitioner has concurrently filed IPR2017-00055, challenging the
`
`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
`
`and in particular to a fluorescence detection system having a movable
`
`excitation/detection module for use with a thermal cycler.” Ex. 1001, 1:21–
`
`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.
`
`2
`
`
`
`
`
`Agilent Exhibit 1249
`Page 2 of 17
`
`

`

`IPR2017-00054
`Patent 8,236,504 B2
`
`It also acknowledges the teachings in prior art of an integrated optical reader
`
`with a thermal cycler. Id. at 2:1–4. According to the ’504 patent,
`
`then-“[e]xisting fluorometers suffer from various drawbacks,” and the ’504
`
`patent discloses “an improved fluorometer for a thermal cycler that
`
`overcomes these disadvantages.” Id. at 2:11, 54–55.
`
`Illustrative Claims
`
`Among the challenged claims, claims 1 and 13 are independent. They
`
`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:
`
`[a] a support structure attachable to the thermal cycler;
`
`[b] a shuttle movably mounted on the support structure; and
`
`[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
`
`
`
`
`
`Agilent Exhibit 1249
`Page 3 of 17
`
`

`

`IPR2017-00054
`Patent 8,236,504 B2
`
`
`13.
`
`A thermal cycler apparatus comprising:
`
`[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
`
`[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.
`
`
`
`
`
`4
`
`
`
`
`
`Agilent Exhibit 1249
`Page 4 of 17
`
`

`

`IPR2017-00054
`Patent 8,236,504 B2
`
`
`Asserted Grounds of Unpatentability
`
`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
`
`unexpired patent according to its broadest reasonable construction in light of
`
`the specification of the patent in which it appears. 37 C.F.R. § 42.100(b);
`
`Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016). Under
`
`that standard, and absent any special definitions, we assign claim terms their
`
`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
`
`
`
`
`
`Agilent Exhibit 1249
`Page 5 of 17
`
`

`

`IPR2017-00054
`Patent 8,236,504 B2
`
`2007). Any special definitions for claim terms must be set forth with
`
`reasonable clarity, deliberateness, and precision. In re Paulsen, 30 F.3d
`
`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.
`
`Claim 1 recites that the “heating element is disposed between the detection
`
`module and the sample wells.” Similarly, claim 13 requires the detection
`
`module be positioned “in optical communication with different sample wells
`
`of the plurality of sample wells through the transparent portions of the
`
`heater.” The parties agree that, for purpose of this proceeding, these two
`
`terms should be “treated as equivalent.” Pet. 4; see also Prelim. Resp. 6
`
`(proposing the same construction for the two terms).
`
`Petitioner asserts the ’504 patent discloses a sample unit and a lid
`
`heater, both of which have the heating function. Pet. 4; see also Ex. 1001,
`
`4:59 (“Sample unit 202 also includes heating elements”); id. at 5:1–3 (“Lid
`
`heater 204 has . . . electronically controlled heating elements”). The parties
`
`agree that, the lid heater is, and the sample unit is not, the claimed “heating
`
`element”/“heater.” Pet. 5, 7–8; Prelim. Resp. 8–9. They, however, dispute
`
`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
`
`Petitioner’s argument more persuasive.
`
`Petitioner argues that in the ’504 patent, “the lid heater is invariably
`
`depicted as being directly on top of the sample unit.” Pet. 9. Patent Owner
`
`contends that “[t]he specification nowhere mandates that lid heaters of the
`
`6
`
`
`
`
`
`Agilent Exhibit 1249
`Page 6 of 17
`
`

`

`IPR2017-00054
`Patent 8,236,504 B2
`
`disclosed apparatuses be ‘on top of’ sample tubes that are placed in the
`
`sample units of the apparatuses.” Prelim. Resp. 18. We are not persuaded.
`
`In the ’504 patent, the lid heater “is coupled to” the lid. Ex. 1001, 5:3–4.
`
`The ’504 patent discloses, and Patent Owner acknowledges, that the lid is
`
`placed “on the sample unit.” Id. at 5:8–9. Patent Owner does not present
`
`persuasive evidence, and we do not find any, to show that the lid heater in
`
`the ’504 patent is anywhere other than above the sample wells.
`
`Petitioner then points to claim 21, which depends from claim 13 and
`
`further recites that “the detection module is positioned such that the opening
`
`is below the plurality of sample wells.” According to Petitioner, “[a]rtisans
`
`would have understood that an optics head [i.e., detection module] placed
`
`below sample wells as required by claim 21 could not view the wells
`
`‘through’ the lid heater, which is only described as necessarily placed on top
`
`of the wells.” Id. at 5 (citing Ex. 1002 ¶ 24). We find this argument
`
`persuasive.
`
`Thus, based on the current record, we determine that the “heating
`
`element”/“heater” recited in the challenged claims is not limited to the lid
`
`heater disclosed in the ’504 patent. This determination as to the scope of
`
`“heating element”/“heater” is sufficient for purposes of this Decision, and
`
`we need not further address the terms at this time.
`
`On this record and for purposes of this Decision, we see no need to
`
`construe any other term expressly. See Wellman, Inc. v. Eastman Chem.
`
`Co., 642 F.3d 1355, 1361 (Fed. Cir. 2011) (stating that claim terms need
`
`only be construed to the extent necessary to resolve the controversy).
`
`7
`
`
`
`
`
`Agilent Exhibit 1249
`Page 7 of 17
`
`

`

`IPR2017-00054
`Patent 8,236,504 B2
`
`
`Priority Date
`
`The ’504 patent issued from application number 12/827,521 (“the
`
`’521 application), which was filed on June 30, 2010. Ex. 1001, (21), (22). It
`
`also claims priority to 11/555,642 (“the ’642 application), which was filed
`
`on November 1, 2006, and 10/431,708, which was filed on May 8, 2003. Id.
`
`at (63).
`
`Petitioner asserts that the challenged claims are not entitled to priority
`
`before June 30, 2010. Pet. 6–14. According to Petitioner, the ’642
`
`application fails to provide written description support for the “heating
`
`element”/“heater.” Id. at 7–11. Based on the current record, and because we
`
`determine the “heating element”/“heater” is not limited to the lid heater, we
`
`agree with Petitioner.
`
`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
`
`support for those claims, as required by 35 U.S.C. § 112. In re Chu, 66 F.3d
`
`292, 297 (Fed. Cir. 1995). To satisfy the written description requirement,
`
`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,
`
`however, independent claims 1 and 13 were amended during prosecution of
`
`the ’521 application to add the recitation to “heating element” and “heater,”
`
`respectively, to overcome obviousness rejections. Ex. 1004, 22–30.
`
`8
`
`
`
`
`
`Agilent Exhibit 1249
`Page 8 of 17
`
`

`

`IPR2017-00054
`Patent 8,236,504 B2
`
`
`Petitioner asserts that the ’642 application only discloses a lid heater,
`
`“which is a single narrow example of the generic heating element/heater
`
`recited in the claims.” Pet. 8. As explained above, we determine that the
`
`“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
`
`not point to any portion of the ’642 application that describes a “heating
`
`element”/“heater” other than a lid heater. Thus, based on the current record,
`
`we are persuaded that the description of the lid heater “does not provide
`
`commensurate support” for the “heating element”/“heater” recited in the
`
`challenged claims. See Pet. 7; see also Gentry Gallery, Inc. v. Berkline
`
`Corp., 134 F.3d 1473, 1479 (1998) (holding the disclosure of a console as
`
`the only possible location for the controls does not support claims in which
`
`the location of the controls is other than on the console).
`
`We acknowledge that the ’642 application states that “the
`
`fluorescence detection assembly described herein may be adapted for use
`
`with a wide variety of thermal cycler systems and may interrogate sample
`
`wells from any direction (e.g., above or below) in accordance with the
`
`design of a particular instrument.” Ex. 1007 ¶ 80 (emphasis added).
`
`Although a heater other than a lid heater might have been obvious in view of
`
`this disclosure, entitlement to a priority date, “does not extend to subject
`
`matter which is not disclosed, but would be obvious over what is expressly
`
`disclosed.” In re Huston, 308 F.3d 1267, 1277 (Fed. Cir. 2002) (quoting
`
`Lockwood v. Am. Airlines Inc., 107 F.3d 1565, 1571–72 (Fed. Cir. 1997)).
`
`In analyzing written description support:
`
`9
`
`
`
`
`
`Agilent Exhibit 1249
`Page 9 of 17
`
`

`

`IPR2017-00054
`Patent 8,236,504 B2
`
`
`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.
`
`PowerOasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1306 (Fed. Cir.
`
`2008) (citing Lockwood, 107 F.3d at 1572).
`
`In sum, based on the current record, we conclude that the ’642
`
`application does not provide adequate written description support for the
`
`“heating element”/“heater” recited in the challenged claims. As a result, at
`
`this time, we find the challenged claims are not entitled to the priority of the
`
`’642 application filing date.5 Instead, for purposes of this Decision, the
`
`priority date of the challenged claims is June 30, 2010, the actual filing date
`
`of the ’521 application, which issued as the ’504 patent.
`
`Anticipation by Kordunsky
`
`Petitioner argues that claims 1–3, 6–11, 13–17, 19, 20, and 22 are
`
`anticipated by Kordunsky. Pet. 15–23. Because, on the present record, we
`
`
`
`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
`
`
`
`
`
`Agilent Exhibit 1249
`Page 10 of 17
`
`

`

`IPR2017-00054
`Patent 8,236,504 B2
`
`have determined that the priority date of the challenged claims is June 30,
`
`2010, Kordunsky (published on December 2, 2004) qualifies as prior art
`
`under 35 U.S.C. § 102(b).
`
`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
`
`also Pet. 15 (stating the disclosures of Kordunsky and the challenged ’504
`
`patent are “substantially identical”). Petitioner provides claim charts,
`
`matching each limitation of the challenged claims with the disclosures of
`
`Kordunsky. Id. at 16–23. Patent Owner does not dispute these
`
`representations. After reviewing Petitioner’s claim charts, we are persuaded
`
`that Kordunsky discloses each and every limitation of the challenged claims.
`
`We, therefore, adopt the claim charts as our own and concludes that
`
`Petitioner has established a reasonable likelihood that it would prevail in
`
`showing that claims 1–3, 6–11, 13–17, 19, 20, and 22 are anticipated by
`
`Kordunsky.
`
`Obviousness over Li
`
`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
`
`determine Petitioner has established a reasonable likelihood that it would
`
`prevail in this assertion.
`
`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
`
`also qualifies as prior art under 35 U.S.C. § 102(a) even if the challenged
`
`11
`
`
`
`
`
`Agilent Exhibit 1249
`Page 11 of 17
`
`

`

`IPR2017-00054
`Patent 8,236,504 B2
`
`claims can claim priority to May 8, 2004, the earliest possible priority date
`
`shown on the face of the ’504 patent.
`
`Petitioner asserts that Li teaches or suggests each elements of claims
`
`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
`
`analyzing system” that is a thermal cycler comprising a thermal cycling unit,
`
`which has “a row of wells,” as the preamble requires. Id. at 27 (citing
`
`Ex. 1006, Abstract, claim 1). For limitations [a] and [b], Petitioner contends
`
`that Li teaches “a shuttle in the form of a ‘belt capable of moving back and
`
`forth,’ movably mounted on a support in the form of a shaft bearing ‘a
`
`stepper motor.’” Id. at 28 (citing Ex. 1006, claim 1, 3:10, 6:15–27, 8:16–
`
`17). Petitioner acknowledges that “Li does not literally mention that its
`
`support is attached to the rest of the cycler.” Id. According to Petitioner,
`
`however, an ordinary artisan would have understood “this attachment was
`
`obvious” because “the shaft should be attached to the cycler to work
`
`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
`
`of a hole. Id. at 29 (citing Ex. 1006, 3:17–18, 8:19–20). Petitioner asserts
`
`that because Li’s detection unit is located below the cycling block and the
`
`hole is “provided on top of the housing,” the hole is oriented towards the
`
`sample wells above it, as limitation [c1] requires. Id. (citing Ex. 1006,
`
`Fig. 3, 8:16–20, 8:28–9:1). In addition, Petitioner contends that the
`
`detection unit in Li includes an excitation light source as a generator and a
`
`12
`
`
`
`
`
`Agilent Exhibit 1249
`Page 12 of 17
`
`

`

`IPR2017-00054
`Patent 8,236,504 B2
`
`photomultiplier tube as detector, as limitations [c2] and [c3] require. Id. at
`
`29–30 (citing Ex. 1006, Fig. 3, 8:16–9:7).
`
`Patent Owner does not dispute that Li teaches or suggests each of the
`
`above-discussed limitations. After reviewing the record, we are satisfied
`
`that Petitioner has made a sufficient showing regarding these limitations.
`
`Petitioner argues that Li also teaches or suggests the wherein clause of
`
`claim 1. Pet. 30–32. Specifically, Petitioner contends that the cycling block
`
`in Li is the recited “heating element.” Id. at 30–31. According to Petitioner,
`
`in Li, the “row of wells” are on the top of the cycling block, and the
`
`detection unit is located below the cycling block. Id. at 31 (citing Ex. 1006,
`
`6:15–27; Ex. 1002 ¶ 68). Thus, Petitioner asserts the cycling block, which
`
`can heat the samples (id. at 30), is the “heating element . . . disposed
`
`between the detection module and the sample wells,” as required in the
`
`wherein clause (id. at 31).
`
`Patent Owner does not address Petitioner’s argument. Instead, Patent
`
`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.
`
`Prelim. Resp. 23–25. Patent Owner’s assertion is inapposite because
`
`Petitioner refers to the cycling block in Li, and not the “heated lid,” as
`
`teaching the “heating element” recited in claim 1. See Pet. 30–31.
`
`Petitioner also contends that Li renders independent claim 13 obvious.
`
`Pet. 36–39. All but one limitations of claim 13 are similar to those of claim
`
`1. The only limitation that was not present in claim 1 is “a heater to prevent
`
`condensation from forming on a surface of the reaction vessels when the
`
`reaction vessels are in the sample wells.” Petitioner argues that cyclers in
`
`13
`
`
`
`
`
`Agilent Exhibit 1249
`Page 13 of 17
`
`

`

`IPR2017-00054
`Patent 8,236,504 B2
`
`general, and Li’s cycling block in particular, would “heat the sides of the
`
`sample tubes right up to the tube caps in order to prevent condensation onto
`
`the sides of the tubes during such heating.” Id. at 37 (citing Ex. 1002 ¶ 80;
`
`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.
`
`In sum, based on the current record, we conclude that Petitioner has
`
`established a reasonable likelihood of prevailing on its assertion that claims
`
`1 and 13 are unpatentable as obvious over Li. After considering Petitioner’s
`
`arguments and evidence with respect to claims 2, 3, 6, 7, 9, 14, 16, and 19–
`
`22 (Pet. 40–44), which Patent Owner does not address separately, we
`
`determine that Petitioner has made a sufficient showing as to those claims,
`
`as well.6
`
`Obviousness over Li and Heffelfinger or Miller
`
`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
`
`would have been obvious over Li and Miller (id. at 46). Based on the
`
`current record, we determine Petitioner has established a reasonable
`
`likelihood that it would prevail in these assertions.
`
`Heffelfinger teaches an apparatus capable of measuring quantities of
`
`biological or other types of samples that have been labeled using, for
`
`
`
`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
`
`
`
`
`
`Agilent Exhibit 1249
`Page 14 of 17
`
`

`

`IPR2017-00054
`Patent 8,236,504 B2
`
`example, fluorescence. Ex. 1015, 2:61–64. Petitioner refers to Heffelfinger
`
`for teaching a modular design for a detection system is advantageous
`
`because a module can be “easily and quickly replaced” when needed. Pet.
`
`45 (citing Ex. 1015, 8:24–29). According to Petitioner, in Heffelfinger, the
`
`detection module, which is in the form of a scan head, is coupled to the
`
`shuttle, which is form of a scan head mount, as claim 8 requires. Id. (citing
`
`Ex. 1015, 9:30–31, 10:32–34). In addition, Petitioner asserts that
`
`Heffelfinger teaches two stepper motors move the shuttle in two dimensions,
`
`as claims 10 and 15 require. Id. at 45–46 (citing Ex. 1015, 9:27–40, 9:54–
`
`56).
`
`Miller teaches a movable compact scan head having multiple scanning
`
`modalities so that the scan head supports two or more optical systems within
`
`a small space. Ex. 1029, 1:53–56. Specifically, Petitioner argues that Miller
`
`teaches a dual-head configuration, as claims 11 and 17 require. Pet. 46
`
`(citing Ex. 1029, Figs. 1–4). According to Petitioner, the two-headed
`
`module in Miller has the advantage to monitor two different wavelengths
`
`simultaneously, and thus, allows multiplexed analysis. Id. (citing Ex. 1029,
`
`1:64–2:1).
`
`Patent Owner does not dispute that Heffelfinger teaches the additional
`
`limitations recited in claims 8, 10, and 15, and that Miller teaches the
`
`additional limitation recited in claims 11 and 17. Instead, Patent Owner
`
`contends that neither Heffelfinger nor Miller teaches a lid heater. Prelim.
`
`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
`
`’504 patent. Id. at 27–29.
`
`15
`
`
`
`
`
`Agilent Exhibit 1249
`Page 15 of 17
`
`

`

`IPR2017-00054
`Patent 8,236,504 B2
`
`
`As explained above, based on the current record, we conclude
`
`Petitioner has made a sufficient showing that Li teaches “heating
`
`element”/“heater” (in the form of the cycling block), as recited in the
`
`challenged claims. Thus, it is irrelevant whether Heffelfinger or Miller
`
`teaches a lid heater. Similarly, it is unnecessary to modify the “heated lid”
`
`in Li into the “lid heater” in the challenged ’504 patent.
`
`In sum, based on the current record, we conclude that Petitioner has
`
`established a reasonable likelihood of prevailing on its assertions that claims
`
`8, 10, and 15 would have been obvious over Li and Heffelfinger, and claims
`
`11 and 17 would have been obvious over Li and Miller.
`
`CONCLUSION
`
`For the foregoing reasons, we find that Petitioner has offered
`
`sufficient evidence to institute an inter partes review. The information
`
`presented in the Petition and accompanying evidence establishes a
`
`reasonable likelihood that Petitioner would prevail in showing the
`
`unpatentability of claims 1–3, 6–11, 13–17, and 19–22 of the ’504 patent.
`
`At this stage of the proceeding, the Board has not made a final
`
`determination as to the construction of any claim term or the patentability of
`
`any challenged claim.
`
`Accordingly, it is
`
`ORDER
`
`ORDERED that pursuant to 35 U.S.C. § 314, an inter partes review is
`
`hereby instituted on the following grounds:
`
`1. claims 1–3, 6–11, 13–17, 19, 20, and 22 as anticipated by
`
`Kordunsky;
`
`16
`
`
`
`
`
`Agilent Exhibit 1249
`Page 16 of 17
`
`

`

`IPR2017-00054
`Patent 8,236,504 B2
`
`
`2. claims 1–3, 6, 7, 9, 13, 14, 16, and 19–22 as obvious over Li;
`
`3. claims 8, 10, and 15 as obvious over Li and Heffelfinger; and
`
`4. claims 11 and 17 as over Li and Miller;
`
`FURTHER ORDERED that no other ground of unpatentability is
`
`authorized in this inter partes review; and
`
`FURTHER ORDERED that pursuant to 35 U.S.C. § 314(a), inter
`
`partes review of the ’504 patent is hereby instituted commencing on the
`
`entry date of this Order, and pursuant to 35 U.S.C. § 314(c) and 37 C.F.R.
`
`§ 42.4, notice is hereby given of the institution of a trial.
`
`
`
`
`
`
`PETITIONER:
`
`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
`
`
`
`
`
`17
`
`Agilent Exhibit 1249
`Page 17 of 17
`
`

This document is available on Docket Alarm but you must sign up to view it.


Or .

Accessing this document will incur an additional charge of $.

After purchase, you can access this document again without charge.

Accept $ Charge
throbber

Still Working On It

This document is taking longer than usual to download. This can happen if we need to contact the court directly to obtain the document and their servers are running slowly.

Give it another minute or two to complete, and then try the refresh button.

throbber

A few More Minutes ... Still Working

It can take up to 5 minutes for us to download a document if the court servers are running slowly.

Thank you for your continued patience.

This document could not be displayed.

We could not find this document within its docket. Please go back to the docket page and check the link. If that does not work, go back to the docket and refresh it to pull the newest information.

Your account does not support viewing this document.

You need a Paid Account to view this document. Click here to change your account type.

Your account does not support viewing this document.

Set your membership status to view this document.

With a Docket Alarm membership, you'll get a whole lot more, including:

  • Up-to-date information for this case.
  • Email alerts whenever there is an update.
  • Full text search for other cases.
  • Get email alerts whenever a new case matches your search.

Become a Member

One Moment Please

The filing “” is large (MB) and is being downloaded.

Please refresh this page in a few minutes to see if the filing has been downloaded. The filing will also be emailed to you when the download completes.

Your document is on its way!

If you do not receive the document in five minutes, contact support at support@docketalarm.com.

Sealed Document

We are unable to display this document, it may be under a court ordered seal.

If you have proper credentials to access the file, you may proceed directly to the court's system using your government issued username and password.


Access Government Site

We are redirecting you
to a mobile optimized page.





Document Unreadable or Corrupt

Refresh this Document
Go to the Docket

We are unable to display this document.

Refresh this Document
Go to the Docket