trials@uspto.gov
`571-272-7822
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`PGR2015-00017, Paper No. 21
`October 12, 2016
`
`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 PGR2015-00017
` Patent 8,933,395 B2
`____________
`
`Held: September 14, 2016
`____________
`
`
`BEFORE: KEN B. BARRETT, KRISTEN L. DROESCH, and
`TRENTON A. WARD, Administrative Patent Judges.
`
` The above-entitled matter came on for hearing on Wednesday,
`September 14, 2016, commencing at 9:30 a.m., at the U.S. Patent
`and Trademark Office, 600 Dulany Street, Alexandria, Virginia.
`
`
`
`
`571-272-7822
`
`
`
`
`
`PGR2015-00017, Paper No. 21
`October 12, 2016
`
`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 PGR2015-00017
` Patent 8,933,395 B2
`____________
`
`Held: September 14, 2016
`____________
`
`
`BEFORE: KEN B. BARRETT, KRISTEN L. DROESCH, and
`TRENTON A. WARD, Administrative Patent Judges.
`
` The above-entitled matter came on for hearing on Wednesday,
`September 14, 2016, commencing at 9:30 a.m., at the U.S. Patent
`and Trademark Office, 600 Dulany Street, Alexandria, Virginia.
`
`
`
`
`
`Case PGR2015-00017
`Patent 8,933,395 B2
`APPEARANCES:
`
`ON BEHALF OF THE PETITIONER:
`
`
`REHAN M. SAFIULLAH, ESQUIRE
`KIRT S. O'NEILL, ESQUIRE
`Akin Gump Strauss Hauer & Feld, LLP
`300 Convent Street
`Suite 1600
`San Antonio, Texas 78205
`
`
`ON BEHALF OF PATENT OWNER:
`
`
`MATHEW S. JORGENSON, ESQUIRE
`JEFFREY P. KUSHAN, ESQUIRE
`Sidley Austin, LLP
`1501 K Street, N.W.
`Washington, D.C. 20005
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`Case PGR2015-00017
`Patent 8,933,395 B2
`P R O C E E D I N G S
`- - - - -
`JUDGE DROESCH: Good afternoon. We are gathered
`here for the oral hearing for post-grant review PGR2015-00017
`between petitioner, Inguran, doing business as Sexing
`Technologies, and patent owner, Premium Genetics Limited of
`the United Kingdom.
`I'm Judge Droesch and with me are Judge Barrett and
`Judge Ward. Per our order, each party has 30 minutes to present
`their argument. Because Petitioner has the burden to show the
`claims are not patentable, Ppetitioner will proceed first followed
`by Patent Owner. Counsel for Petitioner may reserve a portion of
`its time for rebuttal.
`At this time I would like counsel for Petitioner to
`introduce yourselves and identify who is with you in attendance,
`followed by introductions by counsel for Patent Owner.
`MR. O'NEILL: Good morning, Your Honor. Kirt
`O'Neill, lead counsel for the Petitioner. With me today is Mr.
`Rehan Safiullah. And Mr. Safiullah will be doing most of the
`argument for us today.
`MR. JORGENSON: Good morning, Your Honor. I'm
`Matt Jorgenson of Sidley Austin for the Patent Owner. With me
`is Jeff Kushan, lead counsel. And I will be doing the argument.
`JUDGE DROESCH: Thank you, counsel. Counsel for
`Petitioner, you may begin your 30 minutes of arguments when
`you are ready.
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`Case PGR2015-00017
`Patent 8,933,395 B2
`MR. SAFIULLAH: Good morning, Your Honors. I
`would like to reserve ten minutes for rebuttal time.
`In the proceeding today we only have one claim at
`issue. Claims 2 to 14 were disclaimed by the Patent Owner. So
`we only have that one claim, but that claim requires two issues to
`be resolved today. The first dispute is whether Durack discloses
`each and every element of claim 1. There's no dispute that
`Durack is prior art to the '395 patent. The second dispute is
`whether claim 1 of the '395 patent has an effective filing date
`before January 31, 2014.
`There is no dispute that Mueth and Frontin-Rollet, two
`of the references that Petitioner asserted, disclose each and every
`element. But there is a dispute of whether they are prior art. I
`will be discussing the Durack reference and Mr. O'Neill will be
`taking the priority issue.
`I'm going to move to slide 2. So today we are going to
`be discussing these three elements. The first one that we are
`going to talk about relates to the buffer input channels and
`whether they are placed on either side of the first input channel.
`The second one relates to whether the flow has a direction along
`the length of the apparatus. And the third one is the at least one
`channel which is adapted to receive the different flows after the
`laser. And that final limitation also relates to the priority issue
`that we'll be discussing.
`I'm going to move to the next slide, 3. Now, Durack
`discloses each and every limitation and therefore, anticipates. We
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`Case PGR2015-00017
`Patent 8,933,395 B2
`had Dr. Vacca, an expert in the field of flow cytometry and
`sorting, analyze the prior art and take a look at the patent, and his
`opinion was that the '395 patent was invalidated by Durack
`because Durack disclosed each and every limitation. Dr. Vacca's
`testimony, incidentally, was unrebutted. Patent Owner did not
`present any counter evidence from an expert. And I just wanted
`to reiterate that the Federal Circuit has said that mere lawyer's
`arguments and conclusory statements unsupported by factual
`evidence are entitled to little probative value. Where there are
`arguments from the Patent Owner, we believe that there was
`conclusory statements made or mere lawyer's arguments. I'll try
`to point that out as we go through the presentation.
`The next slide, number 4, I want to jump into Durack
`and deal with the first disputed limitation. And again, that relates
`to whether the buffer input channels or a plurality of buffer input
`channels, two or more, in Durack are disposed on either side of
`the first input channel. And Figure 5 of Durack, as we see here,
`173 and 183, are what are called bores which have sheath fluid in
`Durack. And these are buffer input channels, and they are
`disposed in either side of the conduit 157. We haven't
`highlighted it, but it's right above the number 173. The 157 is the
`conduit that carries the particles, and that would be equivalent to
`a first input channel.
`The next slide, 5, and Petitioner did apply the claim
`construction provided by the Board. And the claim construction,
`I want to focus on the second one because it also includes the
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`Case PGR2015-00017
`Patent 8,933,395 B2
`word "side." And what it requires is -- or let me say it this way.
`There's two possibilities in which Durack can meet the limitation.
`And it's one or the other or one and the other. What that means is
`for one or the other, if the plurality of buffer channels are on one
`side, it meets the claim limitation. For the one and the other, if
`the plurality of buffers are on both sides, then it meets the claim
`limitation.
`And Durack obviously has a cylindrical first input
`channel. So that makes things a little bit different based on the
`figures provided in the '395, but that's what we want to do today,
`is show you how it applies to the '395 patent.
`JUDGE WARD: Counsel, just to make sure I
`understand your position, so the channels could be on either side
`or only on one side?
`MR. SAFIULLAH: That's correct, Your Honor.
`JUDGE WARD: So what benefit does the extra
`language there provide or what weight should we assign to "on
`either side" of the input channel?
`MR. SAFIULLAH: You are saying the benefit of the
`language of "either side?"
`JUDGE WARD: Yes.
`MR. SAFIULLAH: I think one of the benefits may be -
`- I think the focus is on the plurality of buffering input channels,
`if I'm reading the claim right. Now, the drafters chose to use that
`language. We argued in our petition that that language was
`actually indefinite because it doesn't give you a full understanding
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`Case PGR2015-00017
`Patent 8,933,395 B2
`of what the scope is of what that means. So I'm sort of hedging to
`say that there is a benefit because I'm not sure if it's on -- if it can
`be on the same side as opposed to on either side, there may be no
`benefit, and that's the way the claim drafter chose to draft the
`claim. So that's how we are analyzing it.
`We understand that the Board's construction of "either
`side" is the definition -- it is used in the ordinary course of -- as
`one of skill would understand how that's understood.
`JUDGE BARRETT: Just to make it clear, you
`understand that's a preliminary construction not necessarily
`locked in?
`MR. SAFIULLAH: Correct. We analyzed it without
`the construction first. That was our basis. And then we also
`applied this as best as possible and tried to see if this also would
`apply. So under both the construction and our understanding of
`what a common understanding would be of a person of ordinary
`skill in the art, we believe that Durack anticipates this limitation
`specifically.
`Moving to slide 6, I want to emphasize here that
`because Durack has a cylinder, the analysis is a little bit different
`than if you are having a rectangular cross-section. But the '395
`patent is clear that the first input channel is not limited to having
`a rectangular cross-section, that in fact, you can have a square
`cross-section which would be present in a cylinder. So here we
`see in the specification of the '395 patent the drafters put in,
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`Case PGR2015-00017
`Patent 8,933,395 B2
`Although the channels 703 are rectangular in cross-section, other
`shapes may be devised as well.
`I want to move to slide 8. And we can see here that the
`Patent Owner also agreed with this understanding that the same
`analysis applies to a cylindrical cross-section channel. On either
`side means on one side and on the other, the opposite side. In
`fact, the Patent Owner also acknowledged that a square cross-
`section would be covered by this claim limitation.
`Moving to the next slide, 8, I want to spend some time
`on this slide because slide 8, we have put what the analysis would
`be in our understanding of how a cylinder would be analyzed
`based on that claim limitation. Because a circle, if you wanted to
`determine whether something is on the same side or whether
`something is on opposite sides, it really depends on how you
`bisect that circle. So what we've shown here is in the Figure A
`you have a side 2 and a side 1 depending on the bisection line.
`So what we've put here is on the 9:00, we have one of
`the buffer input channels 173, and at the 6:00 position we have
`the other buffer input channel 183. We've put them at 90 degrees
`because that's one of the possible ways that Durack shows it.
`And so in Figure A you can see that they are both on the same
`side. And in Figure B, you can see if you bisect it with a
`2:00/8:00 line, that they are on opposite sides. So our
`understanding is that Durack, because of its cylindrical first input
`channel, meets the claim limitation in either of those
`constructions.
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`Case PGR2015-00017
`Patent 8,933,395 B2
`And one of the arguments I want to mention that the
`Patent Owner stated in their Patent Owner Response was that 173
`and 183 are adjacent to each other and not opposite. The problem
`with that approach, if you really follow it, is for a circle -- let me
`back up. For a square or a rectangle it makes sense. If they are
`adjacent, they are not on opposite sides and not on the same side.
`But for a circle, the question would be at what angle does it stop
`being on the same side or become on the same side if it's -- if you
`are calling it adjacent. And what I mean is right now they are at
`90 degrees. If you move 173 down to the 8:00 position, is that on
`the same side in the circle? Or if you move it up to the 11:00
`position, is that on the opposite side?
`So really taking the Patent Owner's position, you get
`into the danger of an indefiniteness issue, which we outlined in
`our petition at page 29 was that a person of skill would not know
`how to interpret this claim. And so the best understanding that
`the Petitioner offers is that in a circle, it really depends on the
`bisection. And it meets the claim limitation in either of these two
`ways.
`
`JUDGE DROESCH: Let me ask you a question.
`Where did the word "opposite" come in to the construction? Is
`that something that Patent Owner introduced or was that part of
`our construction in the Decision to Institute?
`MR. SAFIULLAH: So opposite is not in the Board's
`construction. The language used is on one or the other and one
`and the other of the two longer bounding surfaces.
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`Case PGR2015-00017
`Patent 8,933,395 B2
`JUDGE DROESCH: Thank you.
`MR. SAFIULLAH: So if I used opposite, it just meant
`the other side. I'll move to slide 9. And this is going to the
`second disputed limitation. The second disputed limitation
`relates to having the flows having a flow direction on the length
`of the apparatus. And all that's required that for some portion of
`the apparatus, not the entire portion, for some portion of the
`apparatus, that the flows have a direction that is similar. So we
`are talking about the sheath fluid, the buffer fluid and the
`particles themselves.
`So we've illustrated here through the '395 patent you
`have Figure 18 which shows that the buffer solution in this figure
`enters orthogonally. It's entering at a 90-degree angle to what the
`flow direction is of the particles and the flows. And the figure
`below it, Figure 19 shows similarly the buffer fluid is initially
`coming in at a different angle. In fact, there is two buffer
`channels and they are both coming in at different angles than
`what the eventual flow direction is. And Figure 19 also illustrates
`that the flow direction, what we've highlighted in yellow, is only
`for a portion of the apparatus. Not for the entire part of the
`apparatus.
`I'm going to move to the next slide, number 10. And so
`what we've added here is Durack. And as you can see here for
`Durack, the buffer solution is entering from the left side. It's not
`labeled, but right on the left of the yellow highlighted portion,
`that's where the buffer solution is entering the apparatus. And as
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`Case PGR2015-00017
`Patent 8,933,395 B2
`you can see, for the entire highlighted yellow portion, the flow
`direction is the exact same, and it's along the length of the
`apparatus. So this second limitation is met as well.
`I want to jump right to the third limitation. So this
`requires that at least one channel is disposed at another end and
`it's adapted to receive the flows after the operation of the laser.
`Now, Figure 1 does not show laser ablation. It's to a different
`embodiment, but we can assume maybe it's at the number 110.
`Maybe the photo ablation takes place over there.
`JUDGE WARD: And what is the basis for that
`assumption, counsel?
`MR. SAFIULLAH: Well, Petitioner would argue that
`there is no real disclosure on how that photo-damage laser could
`be adopted in this figure at all. But that's one of Patent Owner's
`arguments, that you could take this figure and have a photo-
`damage system be applied to this. So we are assuming
`somewhere before W, X, Y, Z, photo damage would take place
`on the particles. That was also the Board's decision in the
`Institution Decision, that the laser would have to ablate the
`particles before where we see the W, X, Y, Z.
`And so there is a dispute as to what this channel means.
`I want to go to slide 12. And the Board's interpretation of this
`channel in the priority analysis was that all this required are really
`two things, that it's disposed at another end of the apparatus,
`which I mentioned, and that they receive the first flow and
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`Case PGR2015-00017
`Patent 8,933,395 B2
`additional flows after operation of said laser. Those are the only
`two things that are required.
`And on slide 13, this is exactly what Patent Owner also
`endorsed. They endorsed the Board's interpretation that element
`110 that we looked at, the sorting channel, itself is -- the end
`portion of it is the part that receives the flows after the laser
`ablation section.
`Now, slide 15, you can see this. The Board identified
`this portion that's highlighted in yellow as the channel. And the
`Board also identified this on slide 15 as the end of the apparatus.
`Moving to slide 16, I do want to mention that in the
`Board's analysis, the outlets 130 are irrelevant to the at least one
`channel. And also going back to, quickly, the second limitation
`that we were talking about, you can see here as well in addition to
`Figures 18 and 19 that the angle of the fluid inlets is irrelevant.
`So going to slide 18, let's apply what I just talked about
`to Durack. Durack shows that there's a channel disposed at
`another end. Well, Durack disclosed this is one of the figures that
`shows a capillary tube nozzle. And that capillary tube nozzle
`does not show a photo-damage sorting laser in this figure, but the
`specification of Durack explains that that capillary tube nozzle
`system can be used with a droplet sorter, with a photo-damage
`sorter or with a fluid switching device. And 1337 there is the
`capillary tube itself which we would assert is the channel itself.
`I want to go to the next slide, 19. This is from the
`specification itself. The section in the specification is also in the
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`Case PGR2015-00017
`Patent 8,933,395 B2
`capillary tube nozzle system. As you can see, the nozzle system,
`they say in the second paragraph they may be sorted using any
`conventional techniques, and specifically the inventors discuss
`the photo-damage system.
`So I want to, next slide, 20, add the photo-damage
`system here. Figure 136 shows the photo-damage system. Now,
`this does not show the capillary tube system, but the nozzle
`system 101, what we just read on the left side is that the capillary
`tube nozzle system can be used with the photo-damage sorting
`system that we have over here.
`Now, Patent Owner said that Dr. Vacca -- actually, I'm
`going to have the speed it up. I realize I'm way over my time.
`JUDGE DROESCH: You have about five minutes left
`of your primary 20 minutes.
`MR. SAFIULLAH: So I'm going to speed this up a
`little bit. I'm going to go to slide 21, which if we take the
`language from the specification that shows that the capillary tube
`nozzle system can be used with a photo-damage system, this is
`something expressly discussed by the inventors, that that, 21, line
`we have on Figure 136 of slide 21 can be a capillary tube system.
`And you would therefore, have a channel that is receiving the
`fluids after operation of the photo-damage system. And the
`photo-damage laser is 1153 on this figure.
`And with that, I want to hand it over to Mr. O'Neill.
`MR. O'NEILL: I'll see what I can do in three minutes,
`Your Honor. Let me jump quickly to the actual claim language.
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`Case PGR2015-00017
`Patent 8,933,395 B2
`We do believe the Board made a preliminary determination that
`claim 1 was entitled to the earlier filing date, but it's a live issue,
`as the Board said in its rehearing.
`JUDGE WARD: Mr. O'Neill, who bears the burden to
`establish whether or not claim 1 is --
`MR. O'NEILL: Petitioner bears the burden of
`persuasion. It never shifts, and we don't deny that. We have
`never denied that. We believe we can satisfy that burden here
`today that we have in the papers.
`The burden of production is a shifting burden. But I
`pulled the case cited by the Patent Owner. The Dynamic
`Drinkware case talks about the shifting burdens of production and
`specifically talks about the parties' ability to satisfy the shifting
`burden of production by presenting attorney argument. In other
`words, no new expert declaration is required to be offered by the
`Petitioner once the Board decides as a preliminary matter that the
`claim is entitled to the earlier filing date.
`JUDGE DROESCH: Counsel, you have read our
`Decision to Institute as saying that the Patent Owner is entitled to
`an earlier filing date?
`MR. O'NEILL: I read the Board's Decision to say that
`as a matter of standing to have this patent looked at again as a
`post-grant review that Petitioner did not show likelihood that it
`would succeed to show that claim 1 is not entitled to the earlier
`date. But as clarified on the Decision on the Request for
`Rehearing on that issue, we read the Board's decisions to say that
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`Case PGR2015-00017
`Patent 8,933,395 B2
`it is a live issue for trial and that there has been no finding by the
`Board that we have affirmatively failed to prove that claim 1 is
`not entitled to that date.
`The position that the Patent Owner at this juncture
`seems to be that we've necessarily lost on the issue on the final
`merits because of some shifting production -- burden of
`production of evidence that we failed to meet. I refer the Board
`to the Dynamic Drinkware decision at pages 1380 and 1381
`where the Federal Circuit talks about the shifting burden of
`production and the parties' ability to meet that burden in an inter
`partes review. Specifically they talk about the parties being able
`to discharge that burden by submitting attorney argument and not
`simply by coming in and offering new evidence such as expert
`declarations and the like.
`JUDGE WARD: Mr. O'Neill, how did the Petitioner
`meet its initial burden of production on this issue?
`MR. O'NEILL: By showing the Board that claim 1 is
`not supported by an adequate written description in any of the
`earlier applications and specifically, and that's the subject in my
`slides, showing the Board that there is no disclosure of a channel
`disposed at the other end of the apparatus which is adapted to
`receive the multiple flows cited in the claim. And more
`particularly, when the Board said as a preliminary matter you
`didn't read the claim to require that those flows be combined into
`a single flow nor to require the single output channel.
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`Patent 8,933,395 B2
`And sort of reading between the lines in the Board's
`Decision, but what we infer is the Board is calling the far end of
`the sorting channel 110 the channel that actually meets the claim
`limitation requirements. The problem with that analysis is there
`is no disclosure in the patent of how that distal end of the sorting
`channel 110 would be adapted to receive these multiple flows.
`And "adapted to receive" is part of the claim and has to be given
`effect.
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`I note for contrast or comparison that there are
`descriptions in the patent specification of other things that are
`claimed to be adapted. And specifically, for example, the patent
`talks about the fact that the first sorting channel is adapted to
`allow a first component in the first flow to sediment into the
`second flow. And the patent goes on to talk about how it's
`adapted to do that. I refer the Board to column 7, lines 21 to 25.
`I don't have them on a slide here today. And columns 15, lines 32
`to 41, which are a good example of how you can describe and
`disclose by adequate written description how something is, in
`fact, adapted to receive. There's no disclosure in the patent of
`how the distal end of sorting channel 110 is adapted to receive
`these multiple flows.
`We had our expert look at it and we submitted the
`Board a declaration. He said when he reads this claim,
`particularly the part about something being adapted to receive the
`multiple flows, it calls to mind for him something that looks like I
`have got on the slide at number 26 which is there has to be
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`Case PGR2015-00017
`Patent 8,933,395 B2
`something at the far end of the sorting channel that is, in fact,
`adapted to receive the multiple flows that are otherwise flowing
`through the sorting channel as a consequence of the requirements
`of the remainder of the claim. So for that reason, we think claim
`1 is unsupported by the specification, and that's how we
`discharged our burden. Thank you.
`MR. JORGENSON: Okay. So Matt Jorgenson for the
`Patent Owners. And I'll begin, unless Your Honors have any
`questions you would like to start with.
`JUDGE DROESCH: Go ahead.
`MR. JORGENSON: So here we have the grounds. I'll
`just cover this briefly. This is slide 2. There's a single claim left,
`claim 1. There are three grounds but the first two grounds fall
`away if the priority date of the patent is established to be in 2004.
`JUDGE DROESCH: On that issue, in your Patent
`Owner Response you indicated that Patent Owner was going to
`file a disclaimer of claims 2 through, I think, 14. Has that been
`filed yet?
`MR. JORGENSON: I don't know the answer to that.
`It's going to be filed this week. And my plan was to ask the
`Board for permission to file that as an exhibit once it's been filed,
`if that's how you would like to proceed.
`JUDGE DROESCH: Permission granted.
`MR. JORGENSON: Thank you. So turning to Durack,
`there are three separate and independent reasons why Durack
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`Case PGR2015-00017
`Patent 8,933,395 B2
`does not anticipate. And by the way, anticipation is the only
`issue as to Durack. There is no obviousness ground.
`So let's go to slide 4 and we'll start with the priority
`date. The parties agree that the specification of the '395 patent is
`identical to the '676 patent specification. So 2004 is the filing
`date of the '676 patent specification. So really the question of
`priority collapses into a question of whether claim 1 has written
`description support in its own specification.
`JUDGE DROESCH: On that issue, is Patent Owner
`entitled to this September 3, 2004, earlier filing date as a matter
`of right or is there something that needs to be shown that
`entitlement should apply?
`MR. JORGENSON: Sure. So as counsel for Petitioner
`said, the cases suggest that there is a burden and the burden can
`shift. If Petitioner can show that there is intervening prior art, the
`burden of production can shift to the Patent Owner to show
`entitlement to the earlier filing date. The burden of persuasion
`remains on the Petitioner. So it is possible for the burden of
`production to shift to the Patent Owner. We don't dispute that
`that happened here, that there was a burden of production that
`was shifted to us because the Petitioner raised Mueth and Frontin-
`Rollet.
`
`JUDGE DROESCH: Well, my next question is what is
`the actual filing date of the Mueth reference and the Frontin-
`Rollet references compared to the actual filing date of the '395
`patent -- the '395 patent, the application that resulted from that?
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`Case PGR2015-00017
`Patent 8,933,395 B2
`MR. JORGENSON: Sure. So let's look at slide 15.
`This is the Mueth prior art patent. It's got a filing date of
`February 1, 2005. So that's the -- there's no priority claim. So
`that's after September 2004.
`JUDGE DROESCH: Okay. But the '395 patent has an
`actual filing date of January 31, 2014.
`MR. JORGENSON: Correct. So again, we would need
`to establish that the '395 patent is entitled to the earlier 2004 date.
`JUDGE DROESCH: How would you do that?
`MR. JORGENSON: So the specifications are identical,
`and I'll step through here how we think that's been shown.
`JUDGE WARD: Mr. Jorgenson, I just want to make
`sure it's clear on the record, you do agree that Petitioner has met
`its initial burden of production with respect to challenging the
`support for claim 1, and that burden has shifted to you, the Patent
`Owner?
`MR. JORGENSON: So to be clear, Judge Ward, what I
`agree is that the Petitioner has raised two references that have
`dates that are early enough in time that Patent Owner needs to be
`able to rely on the priority date. And that raising of those
`potentially anticipatory references is what causes the burden of
`production to shift to the Patent Owner to show why it's entitled
`to the earlier date.
`JUDGE WARD: So you agree the burden of
`production has shifted to you, the Patent Owner, on that issue?
`MR. JORGENSON: Yes.
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`Case PGR2015-00017
`Patent 8,933,395 B2
`JUDGE WARD: Thank you.
`MR. JORGENSON: So let's look at slide 5 briefly.
`This is the only limitation for which there's any dispute as to
`written description. It's the last limitation. So turning to slide 6,
`this is the Board's Institution Decision. And what the Board did
`in the Institution Decision is it relied on the Patent Owner's
`Preliminary Response where the Patent Owner explained where
`in the specification there was written description support for this
`final limitation. And I would like to step through the reasoning
`that the Patent Owner put forward in the Preliminary Response
`that was adopted by the Board in the Institution Decision. Again,
`this shows that we have met that burden of production because
`this is our explanation. And it's an explanation that the Board
`agreed with, at least preliminarily.
`Now, Figure 1 shows the sorting channel 110 and it
`shows that it can have numerous flows. That's not disputed. And
`so if we turn to slide 7, the Board made this point that there are
`only two qualifiers for what the at least one channel must be. It
`has to be disposed at the other end of the apparatus and has to be
`adapted to receive the flow, the first flow and the additional flows
`after operation of the kill laser. So if we turn to slide 8, here
`again the specification explains where the operation of the kill
`laser could occur. Again, this is the Board's language from the
`Institution Decision adopting what the Patent Owner argued.
`And the specification gives an example where a portion
`of the central sorting region may be covered with glass to allow
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`Case PGR2015-00017
`Patent 8,933,395 B2
`laser killing of samples. So we've outlined that portion in red.
`And I think we heard from Petitioner's counsel during the
`argument that they agree that's the area where the laser kill would
`occur. It would occur somewhere in the middle there.
`Turning to slide 9, so as the Board found in the
`Institution Decision, the portion of the sorting channel 110 shown
`in green here qualifies as the at least one channel. And it's
`disposed at the other end like the claim requires. It receives all of
`the flows, the plurality of flows after the operation of the kill
`laser. And by the way, it's clearly adapted to receive those first
`flows and additional flows.
`Petitioner makes a point that there's no disclosure
`adapted to receive. The figure is the disclosure of adapted to
`receive. It shows all the flows in that part of the channel. There's
`no explanation for why that's not adapted. There's no more text
`that would be needed. All the flows are shown there. So it's clear
`right from the figure.
`So if we turn to slide 10, the Board made the point in
`the Institution Decision on this record, and I want to stop right
`there, this is referring to the Patent Owner's Preliminary
`Response, the Patent Owner's explanation and the evidence in the
`Preliminary Response together with the petition. And on that
`record the Board found that they were not persuaded that the
`Petitioner had carried its burden of persuasion to show that claim
`1 is not entitled to an earlier filing date.
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