`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`__________________________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`__________________________________
`
`INGURAN, LLC d/b/a SEXING TECHNOLOGIES,
`
`Petitioner
`
`v.
`
`PREMIUM GENETICS (UK) LTD.,
`
`Patent Owner
`
`
`
`__________________________________
`
`Case PGR: Unassigned
`
`Patent No. 8,933,395
`
`__________________________________
`
`DECLARATION OF GIACOMO VACCA, PH.D.
`
`
`
`
`
`
` Exhibit No. 1002
` PGR of U.S. Patent 8,933,395
`
`

`

`
`
`TABLE OF CONTENTS
`
`I.
`
`II.
`
`III.
`
`IV.
`
`INTRODUCTION ...............................................................................................................1
`
`QUALIFICATIONS AND BACKGROUND ......................................................................1
`
`BACKGROUND OF TECHNOLOGY ...............................................................................5
`A.
`Flow Cytometry .......................................................................................................6
`B.
`Cell Sorting ..............................................................................................................9
`C.
`Laser Killing .......................................................................................................... 11
`D.
`Sperm Sorting ........................................................................................................12
`E.
`Bulk Cell Separation ..............................................................................................14
`
`THE ‘395 PATENT ............................................................................................................16
`A.
`‘395 Patent Specification .......................................................................................16
`B.
`‘395 Patent Claims .................................................................................................21
`C.
`‘395 Patent Prosecution History ............................................................................29
`
`V.
`
`LEGAL PRINCIPLES APPLIED ......................................................................................31
`
`VI.
`
`PERSON OF ORDINARY SKILL IN THE ART ..............................................................34
`
`VII. CLAIM CONSTRUCTION AND INDEFINITENESS ....................................................34
`
`VIII. THE SPECIFICATION DOES NOT ENABLE THE SUBJECT MATTER OF
`CLAIMS 1-14 OF THE ‘395 PATENT .............................................................................37
`A.
`Non-Enablement of Claim 1 of the ‘395 Patent.....................................................37
`B.
`Non-Enablement of Claim 2 of the ‘395 Patent.....................................................53
`
`IX.
`
`X.
`
`XI.
`
`SUMMARY OF THE PRIOR ART ...................................................................................78
`A.
`Mueth – U.S. Patent 7,355,696 B2 ........................................................................78
`B.
`Durack – PCT Publication No. WO 2004/088283 .................................................83
`C.
`Frontin-Rollet – PCT Publication No. WO 2005/075629 A1 ................................90
`D. Wada – U.S. Patent No. 6,506,609 B1 ...................................................................93
`Kachel – J. Hystochem. Cytochem. 25, 774 (1977) ...............................................98
`E.
`
`CLAIMS 1-13 OF THE ‘395 PATENT ARE ANTICIPATED BY MUETH ...................102
`
`CLAIM 14 OF THE ‘395 PATENT IS OBVIOUS IN VIEW OF MUETH,
`EITHER ALONE, OR IN LIGHT OF DURACK ...........................................................136
`
`XII. CLAIM 1 OF THE ‘395 PATENT IS ANTICIPATED BY FRONTIN-ROLLET ...........142
`
`XIII. CLAIM 1 OF THE ‘395 PATENT IS ANTICIPATED BY DURACK ............................150
`
`XIV. CLAIMS 2-14 OF THE ‘395 PATENT ARE OBVIOUS IN VIEW OF WADA
`AND KACHEL AND DURACK ....................................................................................167
`A.
`Motivation to Combine Wada with Kachel and Durack ......................................167
`
`XV.
`
`SECONDARY CONSIDERATIONS ..............................................................................208
`
`XVI. CONCLUSION ................................................................................................................208
`
`
`
`
`i
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`

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`I.
`
`INTRODUCTION
`
`
`
`1. My name is Dr. Giacomo Vacca. I have been retained by Inguran
`
`LLC, dba Sexing Technologies (“Petitioner”) as an independent expert consultant
`
`in this proceeding before the United States Patent and Trademark Office. Although
`
`I am being compensated at my standard consulting rate of $300 per hour for the
`
`time I spend on this matter, I have no personal financial interest in any of the
`
`entities involved in this proceeding, and my compensation does not depend in any
`
`way on my testimony, my conclusions, or the outcome of my analysis.
`
`2.
`
`I have been asked to consider and provide my opinions regarding the
`
`prior art in relation to the claims of U.S. Patent No. 8,933,395 (“‘395 patent”). My
`
`opinions and the bases for my opinions are outlined below.
`
`3.
`
`The testimony I may provide about scientific principles relating to my
`
`analysis and opinions, includes subjects relating to, for example, optics, photonics,
`
`particle analysis, microfluidics, device and system design, and their application to
`
`flow cytometry and particle selection and sorting.
`
`II. QUALIFICATIONS AND BACKGROUND
`
`4.
`
`Attached as Exhibit 1003 is my curriculum vitae, incorporated by
`
`reference within this declaration. The following is a brief summary of my
`
`qualifications.
`
`
`
`1
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`

`

`
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`5.
`
`I received a Bachelor of Arts (B.A.) degree and a Master of Arts
`
`(M.A.) degree, both from Harvard University, in 1991, and a Doctorate (Ph.D.) in
`
`Applied Physics from Stanford University in 2001. As part of my doctoral
`
`dissertation work, I invented a technique to use light scattering to probe fluid
`
`phenomena on very short timescales, and designed and built a laboratory and all
`
`necessary custom equipment to demonstrate it. While pursuing my doctoral
`
`studies, I also worked as a Graduate Teaching Assistant, leading laboratory and
`
`discussion sessions and grading student assignments for physics courses.
`
`6.
`
`From 1991 to 1994, I was Associate Physicist at Exxon Research &
`
`Engineering Company in Clinton, New Jersey. This facility was at the time the
`
`corporate research headquarters of Exxon Corporation. There I conducted X-ray
`
`scattering experiments to analyze and characterize complex fluids, thin films, and
`
`composite materials, and designed and built equipment to study the flow of
`
`multiphase fluids in porous media.
`
`7.
`
`From 2000
`
`to 2002, I was Design Physicist at Lightwave
`
`Microsystems Corp. in San Jose, California. I was a co-inventor of several issued
`
`patents at the intersection of optics and microfluidics, for applications from
`
`telecommunication to biotechnology. I set up a new laboratory for research and
`
`development of microfluidics-based optical devices, and prototyped early device
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`concepts. I also designed optical integrated circuits (the equivalent of electronic
`
`
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`2
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`

`

`
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`integrated circuits, using light instead of electricity), modeled device behavior and
`
`analyzed fabrication data sets to improve yield and performance.
`
`8.
`
`From 2002 to 2005, I took on the successive roles of Optical
`
`Engineer, Project Leader, and Product Marketing Manager at Picarro, Inc., in
`
`Sunnyvale, California, a company which at the time was developing and
`
`manufacturing solid-state lasers and laser-based instrumentation for applications in
`
`flow cytometry, microscopy, and spectroscopy. I was involved in the development,
`
`transfer to manufacturing, and, later, marketing, of the Cyan laser product line—a
`
`compact and robust solid-state 488-nm laser light source aimed at the flow
`
`cytometry market. I also led the development of a tunable solid-state infrared laser
`
`for spectroscopy applications.
`
`9.
`
`From 2005 to 2011, I was Program Development Manager in the New
`
`Product Introduction department of the Hematology Business Unit, Diagnostics
`
`Division, of Abbott Laboratories in Santa Clara, California. I later took on
`
`additional, concurrent, roles of Intellectual Property Manager in the same business
`
`unit; and Member of the New Technology Group in the Diagnostics Division. I
`
`was responsible for generating, proving, developing, and ultimately launching new
`
`technology concepts
`
`in
`
`flow-cytometry-based semi-automated hematology
`
`analysis, encompassing all core aspects of reagent design, fluidic control, optical
`
`interrogation, signal processing, and cell identification algorithms. In 2010, in
`
`
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`3
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`

`

`
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`recognition of my research and innovation efforts, I was inducted as a Research
`
`Fellow into Abbott Laboratories’ Volwiler Scientific Society—a scientific honor
`
`bestowed on less than 0.04% of the company’s then worldwide employee base of
`
`more than 80,000. I also received several company awards for both research and
`
`research management.
`
`10. Since 2011, I have been leading and growing the company I founded,
`
`Kinetic River Corp., a biophotonics design, consulting, and product development
`
`firm based in California’s Silicon Valley. Through my company, I have been
`
`consulting for firms ranging from one-person startups
`
`to Fortune 500
`
`multinationals; our client engagements cover a wide range of project types, from
`
`design and prototyping to intellectual property analysis, competitive landscaping,
`
`and technical due diligence in Mergers & Acquisitions (M&A). The focus of my
`
`company’s efforts is the intersection of light and biology: flow cytometry is the
`
`core competency, and most of our projects involve cell analysis.
`
`11.
`
`In 2013, I co-founded BeamWise, Inc., a company developing
`
`software tools for the automation of optical system design, based in San Jose,
`
`California. I am Chief Scientific Officer at BeamWise, a role I carry out
`
`concurrently to my role as President of Kinetic River Corp.
`
`12.
`
`I have published a number of papers in various areas of optics; most
`
`recently I have written flow-cytometry-related research and technical articles in
`
`
`
`4
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`

`
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`peer-reviewed papers, conference proceedings, and professional publications. I am
`
`the inventor or co-inventor on 12 issued United States patents, 12 pending United
`
`States patent applications, and a number of international patent applications. I
`
`have presented my original work regularly at flow cytometry and optics
`
`conferences and workshops, and I have been invited to chair sessions, deliver talks,
`
`lead workshops, and participate in panel discussions on topics from flow cytometry
`
`instrumentation to microfluidics to optical system design. A full list of my
`
`publications, patents and patent applications, conference presentations and invited
`
`talks is included in Exhibit 1003.
`
`13. A list of the documents and material I have considered in developing
`
`my opinion can be found in the Appendix below.
`
`III. BACKGROUND OF TECHNOLOGY
`
`14. The technology relevant to the ‘395 patent includes several broad
`
`fields. One of them is bulk separation of particles in fluids; another is single-cell
`
`analysis and sorting. The field of single-cell analysis is generally known as flow
`
`cytometry (flow cytometry actually encompassing more broadly the analysis of
`
`particles, not only cells), while the field of single-cell sorting is simply known as
`
`cell sorting. Below, I provide some relevant background about this technology as
`
`it stood in January, 2014 based on my recollection and experience.
`
`
`
`5
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`

`

`
`
`A.
`
`Flow Cytometry
`
`15. Flow cytometry has roots that go back more than five decades. For a
`
`comprehensive treatise on the technology, its history, the principles of operation,
`
`and many other related topics, see generally, H. Shapiro, Practical Flow Cytometry
`
`4th ed., (Wiley, 2003).
`
`16. Flow cytometry as a discipline has practitioners in most academic
`
`institutions and life-science research laboratories. They include cell biologists,
`
`immunologists, cancer researchers, and researchers in many other related fields
`
`that rely on analysis of cells. As a field of industry, flow cytometry is very well
`
`established in clinical laboratories worldwide through the many thousands of cell
`
`analyzers (as flow cytometers are sometimes called) installed for clinical use,
`
`mainly for HIV/AIDS monitoring but also for aiding in cancer diagnosis and
`
`prognosis (e.g., leukemia/lymphoma). A related class of instruments called
`
`hematology analyzers, which are in fact flow cytometers, forms an even larger
`
`installed base of many tens of thousands of instruments worldwide that perform
`
`routine blood cell counting. Additionally, flow cytometers are in widespread use in
`
`commercial research laboratories, especially at pharmaceutical companies, where
`
`they are used extensively in the drug discovery and development process. There
`
`are also classes of instruments that qualify as flow cytometers on the basis of their
`
`principle of operation, but that are applied to non-life-science-related problems—
`
`
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`6
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`

`
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`for example, quality assurance in commercial production of milk and other foods,
`
`and industrial process monitoring, such as characterization of particle size
`
`distribution in paint. In what follows I will discuss flow cytometers as applied to
`
`life science problems based on my recollection and experience in the field, with the
`
`understanding that the principles are very similar to other applications.
`
`17. Flow cytometers measure cells. The vast majority of flow cytometers
`
`are based on optical interrogation and detection of cells. Other techniques are also
`
`in use, most notably electrical impedance measurements (based on the Coulter
`
`principle); however, these tend to be either implemented in entry-level, fewer-
`
`featured instruments, e.g., simple cell counters; or they are incorporated as adjunct
`
`measurements on optical flow cytometers. In what follows I will discuss
`
`exclusively optical flow cytometers and refer to them as simply flow cytometers.
`
`18.
`
`In my experience, a flow cytometer is typically based on the following
`
`elements: (i) sample fluid; (ii) sheath fluid; (iii) confinement of flowing sample
`
`fluid by flowing sheath fluid; (iv) means to optically interrogate cells (or particles)
`
`in the sample; (v) means to detect optical signals from the cells (or particles) in the
`
`sample. In the system design common to a large majority of all flow cytometers,
`
`the sheath fluid (typically an aqueous buffer solution) envelops concentrically the
`
`sample fluid at the injection point; the combined concentric flows are then forced
`
`through a funnel-shaped section that reduces the cross-section of both by factors of
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`
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`7
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`
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`about 100 in each cross-sectional dimension, while at the same time accelerating
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`the fluid by a factor of about 10,000 (this is called hydrodynamic focusing); the
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`resulting high-speed, sheath-enclosed narrow sample stream, now squeezed to the
`
`degree that the cells in the sample are in single file, is passed through an optical
`
`interrogation section, where light from one or more sources (typically lasers) is
`
`focused onto the cells, which in turn scatter a portion of the light and (mainly if
`
`dyes are present) absorb another portion of the light to re-emit it as fluorescence;
`
`optical detectors situated at various angles around the interrogation point collect
`
`the optical signals, which are then processed by electronics and are conveyed to a
`
`computer for additional user analysis or storage.
`
`19. This basic framework has exceptions. For example, there are
`
`“sheathless” flow cytometers where single-cell interrogation is not a consequence
`
`of hydrodynamic focusing by the sheath fluid, but of pre-dilution of the sample
`
`fluid. There are also flow cytometers (such as a large portion of hematology
`
`analyzers) which do not interrogate using fluorescence, but only scattered light;
`
`others which only use fluorescence; and others yet which use multiple
`
`interrogation paths at different angles from different directions. Generally,
`
`however, in my experience, the framework described above is both very common
`
`and useful for understanding the principles of flow cytometry even in those cases
`
`where there is a departure from it.
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`8
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`
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`20. Some of the main advantages of flow cytometry relevant to this
`
`discussion are: (a) the ability to interrogate individual cells at very high rates (10-
`
`20,000 events per second are routine), as compared, e.g., with microscopy and (b)
`
`the ability to collect multiparameter information on each cell simultaneously, such
`
`as, e.g., using multiple fluorophores conjugated to different antibodies to probe cell
`
`surface antigen expression. One of the drawbacks, again as compared with
`
`microscopy, is the lack of an image to associate with each detected cell (with the
`
`exception of one line of commercial instruments currently available); however, in
`
`many applications such a drawback is tolerable and in some even inconsequential.
`
`B. Cell Sorting
`
`21. Almost as soon as flow cytometers were invented, their function was
`
`extended beyond simply measuring cells to enable the sorting of cells. A flow
`
`cytometer’s ability to analyze single cells over multiple parameters means that
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`individual cells satisfying certain selection criteria can be identified out of large
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`populations of other cells; with cell sorting, those cells can be segregated from the
`
`rest of the population for further analysis or use.
`
`22. Based on my experience, until recently, overwhelmingly cell sorting
`
`was performed using the jet-in-air approach, where the sheathed sample is ejected
`
`out of a nozzle as a jet and immediately subjected to optical interrogation in air; the
`
`jet then proceeds to break up into fine droplets through the action of a piezoelectric
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`9
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`
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`actuator operating at high frequency; just around the break-off point, a droplet is
`
`given either an electrical charge or no charge depending on whether, based on real-
`
`time analysis of the detected optical signals, the droplet is found to contain a cell
`
`satisfying the selection criteria; the droplets continue on, but depending on their
`
`electrical charge they take different paths due to the application of a large
`
`electrostatic voltage potential to two deflection plates on either side of the droplet
`
`stream. Therefore the streams (there can be two or more, with some systems
`
`performing an 8-way sort by applying up to 8 different levels of electrical charge
`
`according to corresponding selection criteria) take separate paths to end up in
`
`different collection receptacles.
`
`23.
`
`In my opinion, jet-in-air cell sorting has been engineered to a very
`
`high degree, resulting in droplet formation rates of hundreds of kilohertz and sort
`
`rates of tens of kilohertz. Nozzle, piezoelectric actuator, and fluid delivery designs
`
`are capable of delivering extremely stable jets and very reproducible droplet
`
`formation. Trade-offs include the sorting rate (throughput), the purity of the sorted
`
`cells (to what degree unwanted cells contaminate the desired sorted population),
`
`the recovery (to what degree wanted cells are lost in the unwanted stream), and the
`
`yield (to what degree cells are lost or destroyed in the process of sorting).
`
`24. Beginning in early 2000’s, novel sorting designs that do not rely on
`
`the jet-in-air approach started to appear with regularity in the literature. Instead,
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`
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`10
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`
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`they are based on microfluidic chips, in which channels are created in a planar
`
`substrate by lithography or other fabrication means; the resulting fluidic circuits
`
`can be much more sophisticated than traditional flow cytometers and sorters,
`
`combining multiple injection paths and other functionality beside interrogation and
`
`selection. Additionally, the fluid path can be fully enclosed, eliminating the
`
`formation of potentially hazardous aerosols. The generally lower pressures and
`
`speed also tend to be gentler on the cells, potentially increasing yield. On the other
`
`hand, actuation of sorting mechanisms on microfluidic chips is a relatively young
`
`field and the task is challenging, and so far microfluidic sorters have not come
`
`close to matching the performance of jet-in-air systems in terms of throughput.
`
`Also it is challenging to incorporate into microfluidic chips three-dimensional
`
`hydrodynamic structures like the round funnel that is one of the mainstays of flow
`
`cytometry.
`
`C. Laser Killing
`
`25. Cell sorting allows cells defined by certain criteria to be segregated
`
`out of a larger population at relatively high efficiency with potentially extremely
`
`high purity. This is key for many fields where contamination of the desired sorted
`
`stream by unwanted cells is extremely undesirable or even disastrous—for
`
`example, when follow-on analysis involves molecular analysis of the cells’ DNA.
`
`However, for certain applications it is not important that the sorted stream contain
`
`
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`11
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`
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`only the wanted cells—it is enough that the sorted stream contain only live wanted
`
`cells. For example, it is my understanding that if the follow-on analysis is a cell
`
`culture, then if the sorted stream contains also dead unwanted cells it is
`
`inconsequential—it is the same as if the unwanted cells had been removed.
`
`26. Based on my understanding of the technology, laser killing offers such
`
`a solution. By operating at the same rates as the optical analysis, laser killing can
`
`be used to damage or destroy individual cells while still in the flow channel,
`
`somewhat downstream of the optical analysis to give the electronics time to
`
`process the detected signals and generate a logic verdict on whether to kill a given
`
`cell or not. The advantages of laser killing are several: first of all it removes the
`
`need for droplet sorting, with all the associated hardware, software, and
`
`electronics. It also allows the sorting process to occur in the confinement of a flow
`
`channel—eliminating aerosols and the potentially cell-damaging process of droplet
`
`impact.
`
`D.
`
`Sperm Sorting
`
`27.
`
`In my opinion, of the many applications of cell sorting, sperm sorting
`
`is one that has tended to push the throughput envelope the most, at least so far.
`
`Unlike research applications of cell sorting, where collection of a few thousand
`
`desired cells in any given experiment is sufficient for many analytical purposes, in
`
`commercial animal husbandry (and particularly in the bovine industry) the need is
`
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`12
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`

`
`
`there to process vast quantities of bull sperm to select the gender of the offspring.
`
`With typical bull ejaculates amounting to several milliliters and billions of sperm
`
`cells, bovine sperm cell gender selection by flow cytometry and cell sorting
`
`requires enormous throughputs to be commercially viable on a herd scale.
`
`Therefore, much effort has been expended optimizing techniques and technologies
`
`for this purpose.
`
`28. Based on my understanding of the technology, sperm sorting offers
`
`some unique challenges as compared to flow cytometric analysis and sorting of,
`
`say, peripheral white blood cells. One difference is that multiparametric analysis is
`
`not important for sperm sorting; for gender selection, one generally only wants to
`
`know whether a sperm cell has the X chromosome or the Y chromosome. This can
`
`in principle be done with a single detection channel tuned to fluorescence from a
`
`dye that binds to DNA. However, the unique morphology of sperm cells make this
`
`harder than it might seem. Generally shaped as oblong flat discs, sperm cells
`
`interact with
`
`the
`
`interrogating
`
`light beam
`
`in flow cytometers
`
`in rather
`
`unpredictable ways as compared to more or less round white blood cells. In
`
`particular, random orientation of sperm cells with respect to the incoming beam
`
`can cause large differences in both scattered light and emitted fluorescence,
`
`washing out the smaller differences between X- and Y-chromosome-bearing cells
`
`due to their different DNA content. See Johnson, Ex. 1010. In an early patent
`
`
`
`13
`
`

`

`
`
`relating to sperm sorting, Larry Johnson with the USDA attempted to solve
`
`problems caused by rotational orientation of the sperm cells by using two photo
`
`detectors. The first determines whether the sperm cells are properly oriented,
`
`while the second takes a measurement that is used to classify the sperm as having
`
`an X or Y chromosome.
`
`29. Another way to solve this problem is to stably and uniformly align the
`
`sperm cells as they are funneled to the interrogation region so they are uniformly
`
`oriented when they interact with the light beam. Then the variations among
`
`individual cells due to orientation differences are minimized, and the variations due
`
`to DNA content can be detected.
`
`30. Another aspect of the sperm-sorting application is that the unwanted
`
`type of sperm cell (be it X or Y chromosome bearing) can be damaged or killed.
`
`See, e.g., Durack, Ex. 1005, 144:18-21 (discussing photo-damage sorting
`
`techniques). Therefore, sperm sorting admits of approaches like laser killing.
`
`E.
`
`Bulk Cell Separation
`
`31. While flow cytometry and cell sorting are based on a single-cell
`
`approach (thereby giving those techniques great flexibility and allowing a high
`
`degree of precision in selecting specific subpopulations of cells from a mixture),
`
`there have long been other approaches of cell separation that tackle the problem in
`
`altogether different ways. Cell sorting is a serial approach: each cell is measured
`
`
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`14
`
`

`

`
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`individually, one after another. By contrast, bulk cell separation is a parallel
`
`approach: all cells are processed simultaneously, generally in batches. One
`
`example of bulk cell separation is centrifugation: By subjecting a fluid suspension
`
`(such as blood) to high acceleration in a spinning geometry, the natural process of
`
`sedimentation can be sped up and cells of different densities made to stratify in a
`
`fraction of the time it would normally take them to settle completely. Other
`
`approaches differ from centrifugation, but have in common with it the reliance on
`
`parallel processing of multiple cells based on intrinsic cell features.
`
`32. For what they offer in parallelism, bulk cell separation methods
`
`generally lack severely in precision. Sedimentation, for example, is mediated by
`
`gravity on the basis of density differences, size differences, and other generally
`
`cell-intrinsic factors; the resulting segregation of cell subpopulations is much
`
`coarser and imprecisely defined than can be achieved using, say, flow cytometry
`
`and cell sorting on the basis of single-cell analysis, even with few detection
`
`parameters. Accordingly, bulk cell separation methods have their place but, in my
`
`experience, they are not generally thought of as direct alternatives to single-cell
`
`analysis and sorting.
`
`
`
`15
`
`

`

`
`
`IV. THE ‘395 PATENT
`
`A.
`
`‘395 Patent Specification
`
`33. The ‘395 patent is entitled “Multiple laminar flow-based particle and
`
`cellular identification” and issued on January 13, 2015. It is generally directed to
`
`“techniques and systems for separation of particulate or cellular materials such as
`
`blood, semen and other particles or cells into their various components and
`
`fractions, using multiple laminar flows which further may be coupled with laser
`
`steering such as holographic optical tapping [sic] and manipulation” (Ex. 1001,
`
`1:65-2:3).
`
`34. The Summary of the Invention in the ‘395 patent states:
`
` “[A]n exemplary method of separating blood into components
`
`includes providing a first flow having a plurality of blood
`
`components; providing a second flow; contacting the first flow with
`
`the second flow to provide a first separation region; and differentially
`
`sedimenting a first blood cellular component of the plurality of blood
`
`components into the second flow while concurrently maintaining a
`
`second blood cellular component of the plurality of blood components
`
`in the first flow. The second flow having the first blood cellular
`
`component is then differentially removed from the first flow having
`
`the second blood cellular component”
`
`(Id., 6:9-19).
`
` “…[T]he first blood cellular component is a plurality of red blood
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`cells and a plurality of white blood cells, and the second blood cellular
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`16
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`component is a plurality of platelets. For the first blood cellular
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`component, the plurality of white blood cells may be holographically
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`separated (through laser steering) from the plurality of red blood
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`cells”
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`(Id., 6:24-30).
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`35. The ‘395 patent specification is focused on methods and systems for
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`physical separation of particles, especially cells, in suspensions. In particular, the
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`patent teaches separation by differential sedimentation, optionally supplemented by
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`optical trapping. The applications mentioned in the specification vary, e.g., from
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`separation of blood components to dialysis; however, the technologies and methods
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`described in the patent are all based on physical particle separation in suspension
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`flows. The emphasis on gravity-driven sedimentation is evident in many of the
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`figures, such as, e.g., Fig. 1, where the differential settling, or sedimentation, of
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`various components of the blood sample entering the top input channel is shown:
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`17
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`Figure 1 of the '395 patent illustrating physical particle separation by
`differential sedimentation.
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`36. Likewise, the emphasis of the specification of the ‘395 patent on
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`optical trapping is evident in many other figures, such as, e.g., Fig. 13, where a set
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`of optical traps acts to dynamically drag selected components out of the sample
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`flow into the adjacent separation flow:
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`Figure 13 of the '395 patent illustrating physical particle separation by
`optical trapping.
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`The specification discloses a few other cell manipulation methods that are used in
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`conjunction with the multiple flow techniques. For example, it discloses a
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`spinning disc-based sorter that uses the rotational motion of a disc combined with
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`optical trapping to sort cells, a Fluorescence-Activated Cell Sorting mechanism,
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`and the use of lasers. However, each of these alternate sorting techniques is used
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`in conjunction with the optical trapping apparatus discussed above, physical
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`separation of cells, or the other cell manipulation techniques discussed in the
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`specification, and thus only in context of physically separating particles, especially
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`cells, in suspensions. For example, with respect to killing cells with lasers, the
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`specification explicitly states that the dead cells are physically removed (Ex. 1001,
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`40:10-14) and/or used in conjunction with holographic optical traps (Ex. 1001,
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`40:19-23).
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`37. As an indication of the focus of the ‘395 patent, the word
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`“sedimentation” appears 37 separate times in the specification; the phrase “optical
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`trapping” appears 42 separate times in the specification (not counting citations).
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`By contrast, the words “analysis,” “analyze,” or “analyzed” only appear 7 times in
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`the specification; the phrase “flow cytometry” only appears in a citation; and
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`neither the phrase “cell analysis” nor the phrase “particle analysis” nor the words
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`“examination” or “examine” appear at all.
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`19
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`38. The fact that the ‘395 patent is directed principally to physical particle
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`separation in suspension flow (whether by bulk sedimentation, optical trapping, or
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`combinations thereof) and not to particle or cell analysis or examination is further
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`supported by inspection of the Figures. All of the 27 Figures of the specification
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`are directed explicitly to illustrating methods and technologies for particle
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`separation; and none of the Figures are principally directed to illustrating methods
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`or technologies for particle analysis. Fig. 5 includes elements for illumination and
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`imaging via a CCD camera; however, the only description of these elements is the
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`following: “For imaging, an illumination source 503 is provided above the
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`objective lens 504 to illuminate the sample 506.” (Id., 32:67-33:2)
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`39. Fig. 12 mentions a system for imaging and trapping and a system for
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`control and analysis; however,