Paper No. ___
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`Date Filed: Jun 22, 2016
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`______________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`______________
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`INGURAN, LLC D/B/A SEXING TECHNOLOGIES,
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`PETITIONER
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`V.
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`PREMIUM GENETICS (UK) LTD.,
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`PATENT OWNER
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`______________
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`CASE PGR2015-00017
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`U.S. PATENT 8,933,395
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`_______________
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`PETITIONER’S REPLY
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`Date Filed: Jun 22, 2016
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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`______________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
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`______________
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`INGURAN, LLC D/B/A SEXING TECHNOLOGIES,
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`PETITIONER
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`V.
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`PREMIUM GENETICS (UK) LTD.,
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`PATENT OWNER
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`______________
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`CASE PGR2015-00017
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`U.S. PATENT 8,933,395
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`_______________
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`PETITIONER’S REPLY
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`PGR2015-00017
`U.S. Patent 8,933,395
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`I.
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`II.
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`INTRODUCTION ........................................................................................... 2
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`CLAIM 1 IS ANTICIPATED BY DURACK .................................................. 3
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`A. Durack discloses a plurality of buffer input channels on either
`side of the first input channel ................................................................ 3
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`B.
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`C.
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`Durack discloses additional flows having a flow direction along
`a length of the apparatus from one end to another end ......................... 7
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`Durack discloses at least one channel disposed at another end of
`the apparatus after operation of the laser ............................................ 11
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`1.
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`2.
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`The capillary tube of Durack is a “channel” under the
`final limitation of Claim 1 ......................................................... 11
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`The collection receptacle of Durack is a “channel” under
`the final limitation of claim 1.................................................... 17
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`III. MUETH AND FRONTIN-ROLLET ALTERNATIVELY
`ANTICIPATE CLAIM 1 BECAUSE IT HAS A PRIORITY DATE OF
`JANUARY 31, 2014 ...................................................................................... 18
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`A.
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`The final element of claim 1 is not entitled to a filing date
`earlier than January 31, 2014 .............................................................. 18
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`1.
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`The specification fails to expressly or inherently disclose
`a single channel for receiving all flows .................................... 19
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`B. Mueth and Frontin-Rollet anticipate claim 1 ...................................... 21
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`IV. CONCLUSION .............................................................................................. 22
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`PGR2015-00017
`U.S. Patent 8,933,395
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`I.
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`INTRODUCTION
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`The Petition shows that claim 1 of the ’395 patent, the only remaining claim
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`at issue now, is unpatentable in view of Durack, Mueth, and Frontin-Rollet
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`independently. The Petition is supported by the analysis and conclusions of an
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`expert in the field, Dr. Vacca. In response, Patent Owner argues only that claim 1
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`is not invalid, and has offered to disclaim claims 2 through 14 of the ’395 patent.1
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`Patent Owner submits no expert declaration to rebut the opinions of Dr. Vacca
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`relating to the priority issue or to his specific invalidity analyses.
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`Despite Patent Owner’s attempts to narrow the interpretation of the claim
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`language, the Petition shows that Durack discloses every element of claim 1, and
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`therefore, renders claim 1 invalid. Mueth and Frontin-Rollet individually disclose
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`every limitation of claim 1 as well—a point which Patent Owner acknowledges;
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`however, Patent Owner argues that claim 1 is entitled to a priority date that pre-
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`dates the two references. Consistent with Patent Owner’s own interpretation of the
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`final limitation of claim 1 as applied to Durack, neither the earlier applications nor
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`the specification itself provide written description support for a single output
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`channel that receives a “first flow” and “additional flows” after the operation of a
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`1 Although Patent Owner has offered to file a statutory disclaimer, it has yet
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`to do so. Regardless, Petitioner is entitled to a judgment against Patent Owner
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`finding claims 2–14 of the ’395 patent unpatentable.
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`2
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`laser. Because the earliest priority date of the challenged claim fails to pre-date
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`Mueth and Frontin-Rollet, both references individually render claim 1 invalid.
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`Accordingly, claim 1 of the ’395 patent is invalid in view of Durack, and in
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`the alternative, invalid in view of Mueth and Frontin-Rollet independently.
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`II. CLAIM 1 IS ANTICIPATED BY DURACK
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`Patent Owner’s contention that Durack does not anticipate claim 1 is based
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`on a narrow reading of the claim and ignores the teachings of the prior art. As the
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`Board noted, “Petitioner establishes sufficiently that Durack discloses each of the
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`recited limitations of claim 1.” Paper 8, Institution Decision 30 (“Decision”).
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`A. Durack discloses a plurality of buffer input channels on either
`side of the first input channel
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`Durack discloses two or more buffer input channels on either side of a first
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`input channel that carries the sample fluid mixture. As discussed in the Petition,
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`Fig. 5 depicts at least two buffer input channels (radial bores 173 and 183) for
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`delivering sheath fluid to the apparatus. Paper 1, Petition 52 (“Pet.”). While
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`Patent Owner argues that Durack’s buffer input channels are orthogonal or adjacent
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`to one another, nothing in Durack’s specification limits the buffer input channels to
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`a particular configuration. See Paper 13, Patent Owner Response 7-8 (“Resp.”).
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`Indeed, Fig. 5 does not specify a particular configuration and further, it is just one
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`embodiment disclosed by Durack. Fig. 136 of Durack (below), which depicts a
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`photo-damage sorting system, shows that the sheath fluid 19" enters the buffer
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`3
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`input channels, which are placed on either side of the first input channel carrying
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`the carrier fluid 17":
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`Durack, thus, discloses that the buffer solution is placed in channels on all sides of
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`the channel carrying the fluid mixtures. Patent Owner’s attempt to limit the
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`disclosure of Durack to a single configuration in one figure should be rejected.
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`If the Board’s construction is adopted, Durack similarly discloses two input
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`channels surrounding a first input channel for supplying buffer similar to the ’395
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`patent. Durack specifically discloses at least two input channels (radial bores 173
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`4
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`and 183) surrounding a first input channel (conduit 157) for supplying buffer
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`(sheath fluid 19) similar to the ’395 patent.
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`The annular space 167 surrounding the conduit 157 is connected by
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`means of a radial bore 173 in the flow body 133 to the fluid delivery
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`system 15 for delivery of sheath fluid 19 into the annular space 167.
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`As shown in FIGS. 3 and 5, an optional second radial bore 183 may
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`be provided in the flow body 133 connecting the annular space 167 to
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`another line (not shown) for supply of additional sheath fluid 19 to the
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`nozzle 137.
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`Ex. 1005, 33:3-14 (emphasis added). Again, the two buffer channels or bores are
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`exemplified in Figure 5:
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`Contrary to Patent Owner’s argument, the two input channels 173 and 183 are
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`placed on either side of the first input channel 157 as required by the claim
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`5
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`language of the ’395 patent. See Vacca Decl., Ex. 1002, ¶ 226, 1c2. The Board
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`construed this limitation to mean that “said plurality of buffer channels” are
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`“disposed on one or the other, or one and the other of the two longer bounding
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`surfaces of the input channel.” Decision 7-8. Again, Patent Owner argues that the
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`two buffer channels disclosed in Fig. 5 of Durack are not on the same side and not
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`on opposite sides, but on “adjacent” sides. Resp. 7-8. First, Fig. 136 of Durack
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`(see above) shows at least two buffer input channels on either side of the first input
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`channel carrying the fluid mixture. Second, in Fig. 5 of Durack, the two buffer
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`channels 173 and 183 are disposed on one side of the input channel 157 but can
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`also be disposed on one and the other of the two longer bounding surfaces of the
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`input channel. See Vacca Decl., Ex. 1002, ¶ 226, 1c2. The particular arrangement
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`will depend on how the cross-section of the input channel 157 is halved or
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`bisected. For example, if buffer channel 173 is considered to be at the 9 am
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`position and buffer channel 183 is considered to be at the 6 am position, the
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`channels may be on the same side or on opposite sides, depending on where the
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`bisection line is placed in the circular cross-section. If bisected at the 10 am and 4
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`am positions as in Fig. 1 below, the buffer channels are on the same side. If
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`bisected at the 1:30 am and 7:30 am positions as in Fig. 2 below, the buffer
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`channels are on opposite sides:
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`6
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`The configuration of Fig. 1 exactly matches the claim limitation as construed by
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`the Board—that is, the buffer channels 173 and 183 are disposed on one or the
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`other of the two longer bounding surfaces of the input channel (157). In Fig. 2,
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`buffer channels (173 and 183) are disposed on one and the other of the two longer
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`bounding surfaces of the input channel (157).
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`Therefore, Durack discloses a “plurality of buffer channels which are
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`disposed on either side of said first input channel.”
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`B. Durack discloses additional flows having a flow direction along a
`length of the apparatus from one end to another end
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`Durack discloses several examples wherein a first flow (flow stream) and
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`additional flows (sheath fluid flows) have a flow direction along a length of the
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`apparatus from one end to another end of the apparatus. For example, Fig. 2 and
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`Fig. 135 of Durack show that sheath fluid 19 (inside radial bores 173 and 183)2
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`flows in the same direction as the fluid stream 21 (inside the input channel 157).
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`2 The radial bore lines carrying sheath fluid are numbered 173 and 183 in the
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`specification but are not numbered in Fig. 2 of Durack.
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`7
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`Fig. 2 specifically shows that the sheath fluid (19) in the radial bore lines flows
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`alongside and in the same direction as the fluid stream (21) in the input channel
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`(157) 3 along the length of the apparatus. See Vacca Decl., Ex. 1002, 1d. Although
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`unnumbered, Fig. 135 similarly shows that the sheath fluid travels in the same
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`direction as the fluid stream until the cells along the length of the apparatus are
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`separated into separate receptacles (127). Id.
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`Patent Owner primarily argues that the sheath fluid’s direction of flow “after
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`it has exited” the buffer input channels is excluded from the claim language;
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`however, that argument contradicts the claim language and the preferred
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`3 The input channel 157 is also referred to as the injection needle.
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`8
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`embodiment of the ’395 patent. First, the claim language requires only that the
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`flow of the sheath fluid “have a flow direction along a length of the apparatus
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`from one end to another end of the apparatus.” Patent Owner erroneously focuses
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`on the component that introduces the sheath fluid to the apparatus and ignores the
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`direction of flow after introduction to the apparatus and through the apparatus. It is
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`the flow of the sheath fluid after introduction that is critical under the claim
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`language. Under a proper interpretation of the claim limitation, there is no dispute
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`that Durack discloses flow of sheath fluid along a length of the apparatus.
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`Second, the preferred embodiment, as shown in Fig. 18 of the ’395 patent
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`(depicting a 3D drawing of the sorting device), shows that the buffer solution is
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`initially introduced perpendicular to the flow along the length of the apparatus:
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`Even in the two-dimensional plane, the flow of the buffer solution does not initially
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`flow in the same direction along the length of the apparatus (nor does it end that
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`way) as shown in Fig. 19 of the ’395 patent:
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`9
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`This is the same configuration as disclosed in Durack. See Accent Packaging, Inc.
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`v. Leggett & Platt, Inc., 707 F.3d 1318, 1326 (Fed. Cir. 2013) (“[A] claim
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`interpretation that excludes a preferred embodiment from the scope of the claim is
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`rarely, if ever, correct.”). In Fig. 2 and Fig. 135 of Durack, for example, the sheath
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`fluid is initially introduced perpendicularly to the direction of flow along the length
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`of the apparatus but flows in the same direction as the fluid stream along the length
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`of the apparatus when it meets the fluid stream channel (as shown above).
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`Therefore, Patent Owner’s argument that Durack does not meet this limitation is
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`contradicted by the ’395 patent itself, which shows that along portions of the
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`apparatus, the buffer solution flows in a different direction (even orthogonally).
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`Patent Owner also argues that the claim limitation must refer to “structural
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`elements,” but that argument has no basis under the claim language. Resp. 12–13.
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`Nonetheless, even under Patent Owner’s interpretation, the structural element that
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`introduces the buffer solution to the apparatus is not what is claimed in this
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`limitation. Because the “additional flows have a flow direction along a length of
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`10
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`the apparatus,” the channels that carry the sheath fluid through the remainder of the
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`apparatus would be the “structural elements” claimed. Durack discloses buffer
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`channels that carry buffer solution in a direction along the length of the apparatus,
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`and therefore, Durack’s disclosure meets the claim language even under Patent
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`Owner’s interpretation.
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`C. Durack discloses at least one channel disposed at another end of
`the apparatus after operation of the laser
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`Durack meets the final limitation of claim 1 of the ’395 patent because it
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`discloses both a capillary tube and a collection receptacle for receiving the “first
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`flow” and the “additional flows” after operation of the laser. Both components are
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`“channels” as described in the ’395 patent.
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`1.
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`The capillary tube of Durack is a “channel” under the final
`limitation of Claim 1
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`Durack discloses a capillary tube, which is a channel that receives the
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`combined streams of sample and sheath fluids after operation of the photo-damage
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`laser. See Vacca Decl., Ex. 1002, ¶ 226, 1g. Patent Owner argues that the capillary
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`tube disclosure cannot meet this claim limitation because (1) Durack does not
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`disclose using a capillary tube with a photo-damage sorter, and (2) Durack does not
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`show that the capillary tube receives the fluids after the photo-damage step.
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`11
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`First, Durack specifically contemplates use of a capillary tube with the laser
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`ablation embodiment. Fig. 135 of Durack, which depicts a diagram using a
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`capillary tube, is described as follows:
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`Fig. 135 illustrates an alternative nozzle system, generally designated
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`1335, similar to that described above except that a capillary tube
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`1337 (of quartz or fused silica, for example) is connected to the nozzle
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`137 so that fluid exiting the nozzle orifice 103 is directed into and
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`through the tube.
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`Ex. 1005, 144:1-11 (emphasis added); Vacca Decl., Ex. 1002, ¶ 226, 1g. The
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`specification then explains that for this “capillary tube” embodiment, the particles
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`can be sorted “using any conventional techniques known to those skilled in the art,
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`as by use of a fluid switching device shown in Fig. 137 or other suitable devices
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`such as photo-damage systems or droplet sorting systems.” Ex. 1005, 144:12-15
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`(emphasis added). Therefore, under Therasense, which Patent Owner cites,
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`Durack expressly discloses the use of a capillary tube with a photo-damage system.
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`593 F.3d 1325, 1332 (Fed. Cir. 2010); Resp. 16. Patent Owner’s only argument is
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`that “this passage cannot be read to imply that a capillary tube extending past the
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`sorter to collect post-sort fluids could be used with all of these techniques,” and
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`points specifically to a conventional droplet sorter system. Resp. 17 n.3. Patent
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`Owner’s statement is, again, unsupported by testimony of one of skill and Patent
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`Owner attempts to rebut Dr. Vacca with attorney argument. Further, Patent Owner
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`12
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`only directs its argument to a droplet sorter but fails to discuss the photo-damage
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`system at issue here. Nothing in Durack (or any evidence cited by Patent Owner)
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`shows that the photo-damage system could only be used with a sorting scheme that
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`sorted in air. The bottom line is that one of skill in the art would have known that a
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`capillary tube could be used with a photo-damage sorter based on the disclosure of
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`Durack, which expressly discloses use of a capillary tube in conjunction with a
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`photo-damage system.
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`Second, Durack discloses that the channel—in this case, the capillary tube—
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`receive the fluids after operation of the laser. In Fig. 136 (below), which shows a
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`photo-damage system, the fluids are received by the receptacle 1355 after
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`operation of the laser 1153.4 Again, the specification explains that in a capillary
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`tube system (as shown in Fig. 137 below), “[a]fter the particles have been
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`interrogated and classified, they may be sorted using any conventional techniques
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`known to those skilled in the art, as by use of a fluid switching device shown in
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`Fig. 137 or other suitable devices such as photo-damage systems or droplet sorting
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`systems.” Ex. 1005, 144:12-15.
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`4 The specification refers to the laser as 1353 but figure shows 1153. This
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`appears to be a typo.
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`13
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`Based on this disclosure, in combination with the rest of the teachings of Durack,
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`one of skill in the art would substitute the laser 1153 of Fig. 136 for the fluid-
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`switching device 1359 in Fig. 137. Therefore, in implementing a photo-damage
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`system, the capillary tube in Durack is adapted to receive all fluids after operation
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`of the laser.
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`In his declaration, Dr. Vacca explained precisely this—that the fluids are
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`received after laser operation:
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`In this case, capillary tube 1337 acts as the channel to receive
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`combined fluid streams 21 and convey them to receptacles 127. . . .
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`As discussed above with respect to 1.[e], the interrogation location
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`corresponds to the location at which the detector detects and identifies
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`selected components from the sample cells. (Id. 32:9-16).
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`Vacca Decl., Ex. 1002, ¶226, 1g. Therefore, Patent Owner’s assertions that Durack
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`does not disclose receiving fluids after laser operation in a capillary tube system
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`and that Dr. Vacca “does not address this argument, let alone support it,” are
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`erroneous. Durack discloses use of a capillary tube as a channel to receive all
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`flows after operation of the laser.
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`Further, the Board’s broad interpretation of the final limitation of claim 1 in
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`its priority analysis (Decision 13), provides further support for the fact that the
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`capillary tube is a channel under the final limitation of claim 1. Specifically, the
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`capillary tube receives fluids after operation of the laser because the same channel
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`can be the location of the sorting process and the location for receiving all fluids.
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`Under this broader interpretation, Durack discloses a sorting channel that “is
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`adapted to receive said first flow and said additional flows after operation of said
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`laser on said selected components.” Although Petitioner demonstrated that the
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`final limitation of claim 1 is directed to an output channel that receives fluid
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`sample and buffer solution after operation of the laser (Pet. 13), the Board has
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`taken the position that the “at least one channel” of the final limitation “does not
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`require combining flows into a single flow, and does not require a single output
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`channel.” Decision 13 (emphasis added). The Board specifically cites to the
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`sorting channel 110 or sorting region of Fig. 1 of the ’395 patent as one example of
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`a channel covered by the final limitation. Under that interpretation, both the
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`capillary tube and collection receptacle embodiments of Durack meet the final
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`limitation of claim 1. Specifically, Fig. 136 of Durack shows a channel above the
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`collection receptacle 1355 for receiving fluids after operation of the laser 1153.5
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`Fig. 137 also shows a channel for receiving fluids after operation of a laser (laser
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`not depicted) similar to the channel disclosed in Fig. 1 of the ’395 patent.
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`5 See supra note 4.
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`16
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`Therefore, under the Board’s broad construction in its priority analysis,
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`Durack discloses the final limitation of claim 1.
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`2.
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`The collection receptacle of Durack is a “channel” under the
`final limitation of claim 1
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`Durack discloses a channel (e.g., a collection receptacle) that receives the
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`combined streams of sample and sheath fluids after operation of the photo-damage
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`laser. See Vacca Decl., Ex. 1002, ¶ 226, 1g. Patent Owner’s only dispute is that
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`under the Board’s construction, the “receptacle” in Durack is not a “channel”
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`because it only “collects rather than conveys fluids.” Resp. 14. Patent Owner
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`provides no support for its contention that a channel must “convey” and not
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`“collect”—other than attorney argument. Nothing from the specification of the
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`’395 patent is cited to support Patent Owner’s narrow reading. In fact, the Board’s
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`construction of “channel” includes a receptacle like the one described in Durack.
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`Specifically, the Board construed “channel” as a “long gutter, groove, or furrow.”
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`Decision, 6-7. The receptacle described in Durack can be described as a gutter that
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`receives and contains the combined fluids. See Vacca Decl., Ex. 1002, ¶ 226, 1g.
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`As Dr. Vacca explained in his declaration, “[o]ne of the terms used” to “signify ‘a
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`hollow member for conveying fluids’” is “‘receptacle,’ whose meaning is the same
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`as in normal parlance, i.e., ‘one that receives and contains something.’” Id. Dr.
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`Vacca further explained that in the case of Durack, “receptacle 1355 acts as the
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`channel to receive the combined fluid streams 21.’’ Id. Although Patent Owner
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`17
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`argues that one of ordinary skill in the art would not consider a “receptacle” to be a
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`“channel,” it again offers nothing other than lawyer argument—providing no
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`support from one skilled in the art.
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`III. MUETH AND FRONTIN-ROLLET ALTERNATIVELY
`ANTICIPATE CLAIM 1 BECAUSE IT HAS A PRIORITY DATE OF
`JANUARY 31, 2014
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`Because the Board has not made an affirmative finding that claim 1 is
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`entitled to an effective filing date before March 16, 2013 (Decision, 13), the Board
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`should now find that claim 1 is unsupported by the specification based on the
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`Petition and Dr. Vacca’s expert declaration. This is particularly true if the Board
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`finds that Durack does not disclose the final limitation of claim 1 for the reasons
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`advanced by Patent Owner. Specifically, Patent Owner’s argument that the channel
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`of the final limitation is an output channel and that the photo-damaging step in
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`Durack would have to occur inside the nozzle, supports Petitioner’s priority
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`argument. Resp. 17-18. As shown below, if the final limitation of claim 1 requires
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`an output channel, as Patent Owner advances, then claim 1 is not entitled to an
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`effective filing date before January 31, 2014, and therefore, Mueth and Frontin-
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`Rollet are anticipating references that invalidate claim 1.
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`A. The final element of claim 1 is not entitled to a filing date earlier
`than January 31, 2014
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`Claim 1 of the ’395 patent was first disclosed in a preliminary amendment
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`on January 31, 2014—the earliest priority date it is entitled to. See Ex. 1013,
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`18
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`Prelim. Amend., 4-8. The specification of the ’395 patent, which dates back to
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`September 3, 2004, at the earliest, does not offer written description support for the
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`final limitation of claim 1.
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`1.
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`The specification fails to expressly or inherently disclose a
`single channel for receiving all flows
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`The ’395 patent specification never discloses a single channel capable of
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`receiving all the flows after the sorting step. As explained in the Petition, the final
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`limitation of claim 1 specifically requires “at least one channel disposed at said end
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`of the apparatus [that] is adapted to receive said first flow and said additional flows
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`after operation of said laser on said selected components.” Pet. 8; Ex. 1001, 44:58-
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`62 (emphasis added). Patent Owner, through its arguments on Durack, takes the
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`position that the final limitation requires an apparatus where all the flows (fluid
`
`sample and buffer solution) are combined into a single output channel. The Board
`
`stated that such an interpretation is “premised on an incorrect reading of claim 1”
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`because “claim 1 does not require combining flows into a single flow, and does not
`
`require a single output channel.” Decision 13. The Board cites to Fig. 1 as
`
`support, stating that the final limitation is “disclosed sufficiently” by the “sorting
`
`channel 110.” Id. at 14.
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`Under Patent Owner’s interpretation, the Board’s position that the claimed
`
`channel of the final limitation can be a “sorting channel,” would contradict the
`
`express language requiring that the claimed channel “receive said first flow and
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`19
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`U.S. Patent 8,933,395
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`said additional flows after operation of said laser on said selected components.”
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`Ex. 1001, 44:60-61 (emphasis added). The sorting channel 110 of Fig. 1 is the
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`location where a laser would operate—selectively killing undesired cells—after
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`which the various fluids would flow to output channels (130). Ex. 1001, 13:20-28,
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`Fig. 1. Because the claimed channel of the final limitation receives all the flows
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`after operation of the laser, it would have to be an output channel (or outlet).
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`Therefore, the single “sorting channel” of Fig. 1 would not be a sufficient
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`disclosure of the final limitation of claim 1 under Patent Owner’s theory. See e.g.,
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`Decision 14 (relying on disclosure of “sorting channel” in specification as
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`support); see also Power Oasis, Inc. v. T-Mobile USA, Inc., 522 F.3d 1299, 1305
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`(Fed. Cir. 2008) (holding that where the USPTO did not consider priority of a
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`claim, there is no presumption that is entitled to an earlier priority date than the
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`date of filing).
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`As demonstrated in the Petition, the specification of the ’395 patent does not
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`disclose a single output channel that is capable of receiving all flows. See Pet. 12-
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`18. The specification does not expressly or inherently disclose the use of one
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`output channel in the claimed invention that would allow one skilled in the art to
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`readily recognize the disclosure. Accordingly, claim 1 of the ’395 patent should
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`not be entitled to a priority date earlier than January 31, 2014.
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`U.S. Patent 8,933,395
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`As a final matter, Patent Owner’s attempt to fault Petitioner for not “timely
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`supplement[ing]” its argument on the priority issue after the Court’s Institution
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`Decision is contrary to the rules and procedures for proceedings before this Board.
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`Patent Owner argues that Petitioner should have supplemented its argument after
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`the Institution Decision and under 37 C.F.R. § 42.223. First, that regulation allows
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`the Petitioner to provide the Board with additional documents the Petitioner was
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`unaware of until after the Petition was filed or after seeing the Patent Owner’s
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`response. CBM2014-00100, Paper 18, at 1; CBM2012-00007, Paper 28, at 2-3.
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`That is not the case here. Second, even if applicable, the regulation is not a
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`mandatory requirement. CBM2013-00014, Paper 18, at 3; CBM2014-00156,
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`Paper 40, at 35. Patent Owner’s statement, therefore, has no basis, and this Reply
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`is the first and appropriate place to respond to both the Board’s decision and the
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`Patent Owner’s response.
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`B. Mueth and Frontin-Rollet anticipate claim 1
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`Because claim 1 is not entitled to a priority date earlier than January 31,
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`2014, both Mueth and Frontin-Rollet are prior art. The Patent Owner does not
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`dispute that Mueth and Frontin-Rollet disclose each limitation of claim 1, and
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`therefore, each individually renders claim 1 invalid.
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`IV. CONCLUSION
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`For the foregoing reasons, and the reasons set forth in the Petition, Petitioner
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`respectfully requests that claim 1 of the ’395 patent be canceled. Additionally, the
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`Board should cancel claims 2–14 based on Patent Owner’s affirmative disclaimer
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`of those claims. See Resp. 1.
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`
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`Date: June 22, 2016
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`Respectfully submitted,
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`
`
`
`By: /s/ Kirt S. O’Neill
`Kirt S. O’Neill
`USPTO Reg. No. 38,257
`AKIN GUMP STRAUSS
`HAUER & FELD LLP
`300 Convent Street, Suite 1600
`San Antonio, Texas 78205
`Telephone: (210) 281-7000
`Facsimile: (210) 224-2035
`koneill@akingump.com
`Counsel for Petitioner
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a copy of the foregoing Petitioner’s
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`Reply was served on counsel of record on June 22, 2016, by filing this document
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`through the Patent Review Processing System, as well as delivering a copy via e-
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`mail to the counsel of record for the Petitioner at the following email addresses:
`
`jkushan@sidley.com
`peter.choi@sidley.com
`mjorgenson@sidley.com
`
`
`
`Date: June 22, 2016 By: /s/ Kirt S. O’Neil
`Kirt S. O’Neill
`Reg. No. 38,257
`Counsel for Petitioner
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`23
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`PGR2015-00017
`U.S. Patent 8,933,395
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`CERTIFICATE OF COMPLIANCE PURSUANT TO 37 C.F.R § 42.24
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`This paper complies with the type-volume limitation of 37 C.F.R. §42.24.
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`The paper contains 4,234 words, excluding the parts of the paper exempted by
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`§42.24(c).
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`This paper also complied with the typeface requirements with the typeface
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`requirements 37 C,F,R, §42.6(a)(ii) and the type style requirements of § 42.6(a)(iii)
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`& (iv).
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`
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`Date: June 22, 2016 By: /s/ Kirt S. O’Neil
`Kirt S. O’Neill
`Reg. No. 38,257
`Counsel for Petitioner
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`24
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