Trials@uspto.gov
`571-272-7822
`
`
`
`
` Paper 22
` Entered: December 20, 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
`
`
`
`Before KEN B. BARRETT, KRISTEN L. DROESCH,
`TRENTON A. WARD, Administrative Patent Judges.
`
`DROESCH, Administrative Patent Judge.
`
`
`
`DECISION
`Final Written Decision
`35 U.S.C. § 328(a), 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`
`
`571-272-7822
`
`
`
`
` Paper 22
` Entered: December 20, 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
`
`
`
`Before KEN B. BARRETT, KRISTEN L. DROESCH,
`TRENTON A. WARD, Administrative Patent Judges.
`
`DROESCH, Administrative Patent Judge.
`
`
`
`DECISION
`Final Written Decision
`35 U.S.C. § 328(a), 37 C.F.R. § 42.73
`
`
`
`
`
`
`
`
`
`
`PGR2015-00017
`Patent 8,933,395 B2
`
`I. INTRODUCTION
`Inguran, LLC d/b/a/ SEXING Technologies (“Petitioner”) filed a
`
`Petition for post-grant review of claims 1–14 of U.S. Patent No. 8,933,395
`B2 (“the ’395 Patent”). Paper 1 (“Petition” or “Pet.”). Premium Genetics
`Ltd. (“Patent Owner”) filed a Preliminary Response. Paper 6 (“Prelim.
`Resp.”). Pursuant to 35 U.S.C. § 324, we instituted trial on December 22,
`2015 as to claims 1–14 of the ’395 Patent. Paper 8 (“Institution Decision” or
`“Dec. Inst.”). Patent Owner filed a Request for Rehearing of the Institution
`Decision. Paper 10 (“Req. Reh’g”). Patent Owner’s Request for Rehearing
`was denied. Paper 11 (“Dec. Req. Reh’g”).
`During trial, Patent Owner filed a Patent Owner Response (Paper 13,
`“PO Resp.”), and Petitioner filed a Reply (Paper 15, “Pet. Reply”). Oral
`argument was held on September 14, 2016. Paper 21 (“Tr.”).
`On September 16, 2016, Patent Owner filed a disclaimer for claims
`2–14 of the ’395 Patent, pursuant to 35 U.S.C. § 253(a) and 37 C.F.R.
`§ 1.321(a). Ex. 2007. Therefore, only claim 1 (“the remaining challenged
`claim”) is at issue.
`
`We have authority under 35 U.S.C. § 6. This final written decision is
`issued pursuant to 35 U.S.C. § 328(a) and 37 C.F.R. § 42.73. For the
`reasons that follow, we determine Petitioner has shown by a preponderance
`of the evidence that claim 1 is unpatentable.
`The ’395 Patent (Ex. 1001)
`The ’395 Patent issued from Application No. 14/169,927 filed on
`
`January 31, 2014. Ex. 1001, 1. The ’395 Patent claims benefit under
`35 U.S.C. §§ 119(e), 120, 121 to filing dates of several provisional and
`non-provisional applications filed before March 16, 2013, including
`
`2
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`PGR2015-00017
`Patent 8,933,395 B2
`Application No. 13/412,969, filed March 6, 2012 (“the ’969 Application”)
`and Application No. 10/934,597, filed September 3, 2004 (“the ’597
`Application”). Ex. 1001, 1–2; Ex. 1013, 849–50,1 see Pet. 11.
`
`The ’395 Patent discloses “a method and apparatus to identify at least
`one component from a plurality of components in a fluid mixture,” including
`“a detector apparatus which detects and identifies selected components” and
`“a laser which emits a laser beam which damages or kills selected
`components of the plurality of components.” Ex. 1001, Abs.
`
`Figure 1 of the ’395 Patent is reproduced below:
`
`
`Figure 1 is a lateral view of apparatus 100 depicting sorting channel 110,
`plurality of inlets 120, plurality of outlets 130, and corresponding fluid flows
`W, X, Y, and Z. Ex. 1001, 13:20–28. Flow W can be a sample fluid, and
`flows X, Y, and Z can be buffer solutions. Id. at 16:11–13. Apparatus 100
`may be incorporated into a system to allow cell identification, and cell
`killing by high intensity laser exposure. Id. at 23:26–24:42; see id. at
`33:58–64, 40:10–23; Fig. 26.
`
`
`1 Exhibit 1013 does not include page numbers. The page numbers listed
`correspond to the pagination in the PDF exhibit.
`
`3
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`PGR2015-00017
`Patent 8,933,395 B2
`Claim 1 - The Remaining Challenged Claim
`1. An apparatus to identify at least one component from a
`plurality of components in a fluid mixture, the apparatus
`comprising:
`a first input channel into which a first flow is introduced,
`said first flow which contains the fluid mixture of the
`plurality of components;
`a plurality of buffer input channels, into which additional
`flows of buffer solution are introduced, said plurality of
`buffer channels which are disposed on either side of said
`first input channel;
`wherein said first flow and said additional flows have a flow
`direction along a length of the apparatus from one end of
`the apparatus to another end of the apparatus;
`a detector apparatus which detects and identifies selected
`components of the plurality of components;
`a laser which emits a laser beam which damages or kills
`selected components of the plurality of components; and
`at least one channel disposed at said another end of the
`apparatus, said at least one channel which is adapted to
`receive said first flow and said additional flows after
`operation of said laser on said selected components.
`
`The Remaining Grounds of Asserted Unpatentability
`We instituted review of claim 1 as unpatentable under 35 U.S.C.
`
`§ 102(a)(1) as anticipated by Durack2, anticipated by Mueth3, and
`anticipated by Frontin–Rollet4. Dec. Inst. 24, 28–30, 35.
`
`
`2 Ex. 1005, WO 2004/088283 A2, published Oct. 14, 2004 (“Durack”).
`3 Ex. 1008, U.S. Patent No. 7,355,696 B2, issued Apr. 8, 2008, filed Feb. 1,
`2005 (“Mueth”).
`4 Ex. 1007, WO 2005/075629 A1, published Aug. 18, 2005 (“Frontin-
`Rollet”).
`
`4
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`Patent 8,933,395 B2
`
`II. ANALYSIS
`A. Claim Construction
`Claims of an unexpired patent are interpreted using the broadest
`
`reasonable interpretation in light of the specification. 37 C.F.R. § 42.200(b);
`see Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2144–46 (2016).
`Claim terms also are generally given their ordinary and customary meaning,
`as would be understood by one of ordinary skill in the art in the context of
`the entire disclosure. In re Translogic Tech., Inc., 504 F.3d 1249, 1257
`(Fed. Cir. 2007). Petitioner and Patent Owner did not initially provide
`explicit claim constructions for any claim term or phrase. See Pet. 9; see
`Prelim. Resp. passim. For purposes of the Institution Decision, the Board
`found it necessary to construe the terms “channel,” and “side,” and the
`phrase “said plurality of buffer channels which are disposed on either side of
`said first input channel.” See Dec. Inst. 6–8. Neither party contests the
`construction of “side” as “one of the longer bounding surfaces or lines of an
`object especially contrasted with the ends.” Dec. Inst. 7. The parties do
`contest, however, the construction of the terms “channel” and “said plurality
`of buffer channels which are disposed on either side of said first input
`channel.”
`
`1. “Channel”
`For purposes of the Institution Decision, the Board construed
`
`“channel” as “a long gutter, groove, or furrow.” Dec. Inst. 6–7. Patent
`Owner relies on testimony by Petitioner’s expert, Dr. Vacca, to assert that
`“channel” should be construed as “a hollow member for conveying fluids.”
`PO Resp. 14 (citing Ex. 1002, 153; Ex. 2006, 17:17–18:12). In response,
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`5
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`Patent 8,933,395 B2
`Petitioner contends that Patent Owner provides no support for its contention
`that a channel must convey and not collect. See Pet. Reply 17.
`
`We are not persuaded by Patent Owner’s arguments that a “channel”
`must convey fluid. At deposition, Dr. Vacca explained, “a hollow member
`for conveying fluids” “is a definition that I have supplied . . . as one of the
`definitions of channel that I have . . . provided here.” Ex. 2006, 17:22–18:4.
`Although Patent Owner provides testimony regarding one definition for
`“channel,” Patent Owner does not provide evidence sufficient to
`demonstrate that “a hollow member for conveying fluids” is the broadest
`reasonable interpretation of “channel.” We maintain the construction of the
`broadest reasonable interpretation of “channel” as “a long gutter, groove, or
`furrow,” (see Dec. Inst. 6) which encompasses within its scope “a hollow
`member for conveying fluids.”
`
`2. “Plurality of Buffer Channels Disposed on
`Either Side of the Input Channel”
`For the purpose of the Institution Decision, the Board construed “said
`
`plurality of buffer channels which are disposed on either side of said first
`input channel” as “said plurality of buffer channels disposed on one or the
`other, or one and the other of the two longer bounding surfaces of the input
`channel.” Dec. Inst. 7–8. Patent Owner disagrees implicitly with this
`construction in the context of a channel viewed in three dimensions. See PO
`Resp. 8. Patent Owner explains “for example, a channel with a square or
`rectangular cross section will have four ‘longer bounding surfaces’ (i.e., a
`top and bottom surface and a left and right surface).” Id. But Patent Owner
`asserts that in the “context of a channel viewed in three dimensions,
`applying the ordinary English meaning, ‘on either side’ must mean ‘on one
`side and on the other, opposite, side.’” PO Resp. 8–9. Patent Owner further
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`6
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`Patent 8,933,395 B2
`contends “for example, a plurality of buffer channels located on the top side
`and the left side of a square cross-section channel would be described as
`being located ‘on adjacent sides.’ No reasonable use of plain English would
`describe such a configuration as having buffer channels ‘on either side.’” Id.
`at 9. Patent Owner contends the same analysis applies to a circular cross-
`section channel, and asserts this analysis is consistent with the specification
`which shows buffer channels on opposite sides (citing Ex. 1001, Fig. 19),
`but never shows buffer channels on adjacent sides. See id. Patent Owner
`also asserts that the Board’s construction “presumes that there are only two
`longer bounding surfaces.” Tr. 27:17–22. Patent Owner contends there are
`more than two sides if the channel is rectangular and fewer than two sides if
`the channel is cylindrical (i.e., arguing that a cylindrical channel cannot be
`accurately characterized as having distinct “sides”). See Tr. 28:22–29:2.
`Petitioner agrees with the Board’s construction. See Pet. Reply 7; Tr.
`
`5:24–7. Petitioner contends that for a circular cross-section of a cylindrical
`channel, whether the plurality of buffer channels are disposed on either side
`of the input channel depends on how the circular cross-section of the
`channel is halved or bisected. See Pet. Reply 6–7; Tr. 8:9–9:19.
`
`Patent Owner’s arguments are not persuasive because they are
`premised incorrectly on the input channel having a solid cross-section.
`Patent Owner’s proposed construction overlooks that the input channel must
`include a passageway or interior surface to permit introduction of the first
`flow, as recited claim 1.5 See Ex. 1001, Claim 1, 44:45, 52–53 (“a first input
`
`
`5 The claimed buffer input channels also must be at least partially hollow to
`accommodate the introduced flows. See Ex. 1001, Claim 1, 44:48-49 (“a
`
`7
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`PGR2015-00017
`Patent 8,933,395 B2
`channel into which a first flow is introduced”). Thus, a cylindrical channel
`including a passageway has at least two longer bounding surfaces––at least
`one interior longer bounding surface and one exterior circumferential longer
`bounding surface. A channel with a rectangular cross-section including a
`passageway has at least one interior longer bounding surface and four
`exterior planar longer bounding surfaces.
`
`Patent Owner’s arguments also are not persuasive because they are
`unsupported by evidence (e.g., dictionary definition, testimony by one with
`ordinary skill in the art) sufficient to support its contentions regarding
`reasonable use of plain English or the ordinary English meaning. See Pet.
`8–9. It is well settled that attorney argument, unsupported by factual
`evidence, is entitled to little probative value. In re Geisler, 116 F.3d 1465,
`1470 (Fed. Cir. 1997); see also In re Pearson, 494 F.2d 1399, 1405 (CCPA
`1974) (attorney argument is not evidence). In addition, Patent Owner’s
`proposed construction eliminates the “disposed on one or the other . . . of the
`two longer bounding surfaces of the input channel” aspect of the Board’s
`construction, thereby excluding at least one embodiment disclosed in the
`’395 Patent Specification. Specifically, the embodiment of Figure 1,
`reproduced above, was identified as consistent with the construction because
`it depicts a plurality of buffer channels disposed on one side of the input
`channel. See Dec. Inst. 8 (citing Ex. 1001, Fig. 1, 16:11–13). Although we
`do not necessarily limit the claimed invention to a specific embodiment, the
`inconsistency between Patent Owner’s proposed construction and the
`embodiment of Figure 1 further supports a determination that Patent
`
`
`plurality of buffer input channels, into which additional flows of buffer
`solution are introduced”).
`
`8
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`Patent 8,933,395 B2
`Owner’s proposed construction is incorrect, particularly where Patent Owner
`has characterized Figure 1 as indicative of the claimed subject matter. See
`Prelim. Resp. 8–9 (“Figure 1 . . . is evidence that the application discloses
`the subject matter of the challenged claim [1] element [regarding the channel
`adapted to receive flows].”).
`
`Based on Patent Owner’s assertion that the Board’s preliminary
`construction erroneously “presumes that there are only two longer bounding
`surfaces” (Tr. 27:17–22), we recognize that the construction set forth in the
`Institution Decision may connote an input channel having only two longer
`bounding surfaces due to the inclusion of the word “the” in the phrase “of
`the two longer bounding surfaces.” The inclusion of the “the” was not
`intended to limit the input channel to only two longer bounding surfaces.
`Rather, the broadest reasonable interpretation of the claim phrase should
`encompass input channels having at least two, and more than two, longer
`bounding surfaces. To remedy the aforementioned inadvertent connotation,
`we modify the construction to remove the problematic instance of “the.”
`Accordingly, we construe the broadest reasonable interpretation of “said
`plurality of buffer channels which are disposed on either side of said first
`input channel” as “said plurality of buffer channels disposed on one or the
`other, or one and the other of two longer bounding surfaces of the input
`channel.”
`
`The construction of the claim phrase remains consistent with the
`disclosures of Figures 1 and 19 of the ’395 Patent. Figure 1, reproduced
`above, depicts a lateral view of a plurality of buffer channels (i.e., inlets 120
`corresponding to buffer flows X, Y, and Z) disposed on one side (i.e., the
`bottom exterior longer bounding surface) of the input channel (i.e., inlet 120
`
`9
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`Patent 8,933,395 B2
`having a rectangular cross-section and corresponding to flow W of
`components A, B, C, E). Ex. 1001, Fig. 1, 13:20–28; 14:41–46; 16:11–13.
`The channels disclosed in the ’395 Patent are not limited a channel having a
`rectangular cross-section, as other shapes may be devised as well. See Ex.
`1001, 31:8–10. If, for example, a circular cross-section is the shape utilized
`for the channels, Figure 1 also depicts a plurality of buffer channels (i.e.,
`inlets 120 corresponding to buffer flows X, Y, and Z) disposed on one side
`(i.e., the exterior longer bounding surface) of the input channel (i.e.,
`cylindrical inlet 120 corresponding to flow W of components A, B, C, E).
`See id. Fig. 19.
`
`Figure 19 of the ’395 Patent is reproduced below:
`
`
`Figure 19 is a plan view depicting two buffer channels and one input
`channel. Ex. 1001, 42:40–41. If, for example, a rectangular cross-section is
`the shape utilized for the channels, Figure 19 depicts a first buffer input
`channel disposed on one side (i.e., top exterior longer bounding surface) of
`the input channel, and a second buffer input channel disposed on the other
`side (i.e., bottom exterior longer bounding surface) of the input channel. See
`id. Fig. 19. If for example, a circular cross-section is the shape utilized for
`the channels Figure 19 depicts two buffer input channels disposed on one
`side (i.e., disposed on exterior longer bounding surface) of the input channel.
`See id. Fig. 19.
`
`In sum, we construe the broadest reasonable interpretation of “said
`plurality of buffer channels which are disposed on either side of said first
`
`10
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`Patent 8,933,395 B2
`input channel” as “said plurality of buffer channels disposed on one or the
`other, or one and the other of two longer bounding surfaces of the input
`channel.”
`
`3. Said First Flow and Said Additional Flows
`Have a Flow Direction Along a Length of the Apparatus
`From One End of the Apparatus to Another End of the Apparatus
`Patent Owner and Petitioner have differing views regarding the
`implications of the claim phrase “said first flow and said additional flows
`have a flow direction along a length of the apparatus from one end of the
`apparatus to another end of the apparatus.” See PO Resp. 10, 12–13;
`Pet. Reply 8–10. Therefore, we find it necessary to construe this claim
`phrase in light of the parties’ arguments.
`Patent Owner contends the flow direction of buffer fluid (i.e.,
`additional flows) is being used to describe structural elements, namely, the
`plurality of buffer input channels. See PO Resp. 13; Tr. 34:7–10. Patent
`Owner asserts “the buffer input channels must be configured so as to permit
`additional flows to be introduced, wherein those ‘additional flows’ that are
`introduced have a certain direction.” PO Resp. 13; see id. at 10, Tr. 34:7–
`17.
`
`Petitioner disputes Patent Owner’s position, and argues that excluding
`the sheath fluid direction of flow after exiting the buffer input channels is
`incorrect because it contradicts the claim language and the preferred
`embodiment depicted in Figs. 18 and 19 of the ’395 Patent. See Pet. Reply
`8–10 (reproducing Ex. 1001, Figs. 18 and 19 with annotations (quoting
`Accent Packaging, Inc. v. Leggett & Platt, Inc., 707 F.3d 1318, 1326 (Fed.
`Cir. 2013))). Petitioner contends that Patent Owner focuses incorrectly on
`the buffer input channels that introduce the sheath fluid to the apparatus and
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`11
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`Patent 8,933,395 B2
`ignores the direction of flow after introduction to the apparatus and through
`the apparatus. See Pet. Reply 9. Petitioner asserts it is the flow of fluid after
`introduction that is critical under the claim language (see Pet. Reply 9) and
`the channels that carry the sheath fluid through the remainder of the
`apparatus would be the structural elements claimed (see Pet. Reply 10–11).
`
`As pointed out correctly by Patent Owner, “[t]he fluid itself is not a
`limitation of the claim. The direction of flow of the fluid is being used to
`describe the structure. It’s not itself a limitation of the claim.” Tr. 34:3–6.
`The direction of flow of the first flow and additional flows describe the
`intended use of the apparatus recited in claim 1. Although patent owners
`and applicants are free to define something by what it does rather than by
`what it is, there is inherent risk in doing so. See In re Swinehart, 439 F.2d
`210, 212 (CCPA 1971). One risk is that the recited use will cover any and
`all embodiments capable of performing the recited use or function. See id. at
`213; see also In re Schreiber, 128 F.3d 1473, 1476 (Fed. Cir. 1997)
`(“Schreiber’s contention that his structure will be used to dispense popcorn
`does not have patentable weight if the structure is already known, regardless
`of whether it has ever been used in any way in connection with popcorn.”).
`The structure implied by the language “wherein said first flow and said
`additional flows have a flow direction along a length of the apparatus from
`one end of the apparatus to another end of the apparatus” is not limited to the
`structure of the buffer input channels, as suggested by Patent Owner. When
`parsed correctly, the structure of the apparatus of claim 1 includes a first
`input channel, a plurality of buffer input channels, and a length of the
`apparatus from one end of the apparatus to another end of the apparatus.
`However, the structural arrangement of the input channel and the buffer
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`Patent 8,933,395 B2
`input channel in relation to the length of the apparatus from one end of the
`apparatus to another end of the apparatus is not set forth in the language of
`claim 1. We construe the broadest reasonable construction of “said first
`flow and said additional flows have a flow direction along a length of the
`apparatus from one end of the apparatus to another end of the apparatus,” as
`covering any and all structures capable of allowing the first flow and the
`additional flows to have a flow direction along a length of the apparatus
`from one end of the apparatus to another end of the apparatus. The
`construction does not require a structure along the entire length of the
`apparatus from one end of the apparatus to another end of the apparatus,
`because claim 1 recites a flow direction, not a flow length, along a length of
`the apparatus from one end of the apparatus to another end of the apparatus.
`The construction is consistent with the embodiments of Figures 1, 2, and
`16–23 of the ’395 Patent, each of which disclose an apparatus having one or
`more passageways capable of allowing the first flow and the additional
`flows to flow in a direction along the length of the apparatus from one end of
`the apparatus to another end of the apparatus. See Ex. 1005, Figs. 1, 2,
`16–23.
`
` Accordingly, we construe the broadest reasonable interpretation of
`“said first flow and said additional flows have a flow direction along a
`length of the apparatus from one end of the apparatus to another end of the
`apparatus” as covering any and all structures capable of allowing the first
`flow and the additional flows to flow in a direction along the length of the
`apparatus from one end of the apparatus to another end of the apparatus.
`
`13
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`B. Anticipation by Durack
`Durack discloses apparatuses and methods for sperm sorting.
`
`Ex. 1005, Abs. Figure 2 of Durack is reproduced below.
`
`
`Figure 2 is a schematic diagram depicting one embodiment of flow
`cytometry system 1. Ex. 1005, 4:36–37, 31:12–14. Flow cytometry system
`1 includes flow cytometry apparatus 9, supply 3 of carrier fluid 17
`containing particles to be sorted, supply 7 of sheath fluid 19, and fluid
`delivery system 15 for delivering carrier fluid 17 and sheath fluid 19 under
`pressure to flow cytometry apparatus 9. Id. at 31:15–19. Flow cytometry
`apparatus 9 comprises a nozzle system 101 for delivering a fluid stream 21
`containing particles through nozzle orifice 103 under pressure. Id. at
`31:36–38. Transducer 105 is provided opposite nozzle orifice 103 for
`introducing acoustical energy into fluid stream 21 which causes stream 21 to
`break into droplets 33 containing individual cells at droplet break off
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`Patent 8,933,395 B2
`location 107. Id. at 31:23–26, 31:40–32:4. Optics system 109 focuses a
`beam of electromagnetic radiation 25 on fluid stream 21 at interrogation
`location 115 which is between nozzle orifice 103 and droplet break-off
`location 107. Id. at 32:4–7. Photodetector 117 is operable to detect
`fluorescence emissions of the cells and convert them into electrical signals
`which are processed and used to classify the cells according to selected
`characteristics. Id. at 32:13–15. Flow cytometry apparatus 9 includes
`sorting system 199 for sorting droplets 33 according to one or more
`characteristics of the particles into different populations 123, 125. Id. at
`32:17–19. Collection system 2201 collects droplets 33 and maintains the
`segregation of the different populations 123, 125. Id. at 32:19–20.
`Operation of the system is controlled by processor 131. Id. at 32:21.
`
`A portion of Figure 5 of Durack is reproduced below:
`
`
`Figure 5 is a sectional view of a nozzle and nozzle holder. Ex. 1005, 5:3–4.
`Figure 5 depicts nozzle system 101 comprising a generally cylindrical flow
`body 133 having central longitudinal bore 135 through it, and nozzle 137 on
`flow body 133 having funnel shaped nozzle body 139. Ex. 1005, 32:33–35.
`
`15
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`Patent 8,933,395 B2
`Passage 141 extends through nozzle body 139 co-axial with bore 135 in flow
`body 133 and terminates in nozzle orifice 103. Id. at 32:35–37. Particles are
`delivered to nozzle 137 by conduit 157 positioned co-axially in bore 135 of
`flow body 133. Id. at 33:3–4. The outside diameter of conduit 157 is less
`than the inside diameter of bore 135 so than annular space 167 is formed
`around conduit 157. Id. at 33:4–5. The back end of conduit 157 is
`connected to fluid delivery system 15 for delivery of carrier fluid 17. Id. at
`33:8–10. Annular space 167 surrounding conduit 157 is connected by radial
`bore 173 in flow body 133 to fluid delivery system 15 for delivery of sheath
`fluid 19 into annular space 167. Id. at 33:10–12. Optional second radial
`bore 183 is provided in flow body 133 connecting annular space 167 to
`another line for supply of additional sheath fluid 19 to nozzle 137. Id. at
`33:12–15.
`
`Durack also discloses a photo-damage sorting system. Ex. 1005,
`144:17–145:21. Figure 136 of Durack is reproduced below:
`
`
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`Patent 8,933,395 B2
`Figure 136 is a schematic diagram of a photo-damage sorting system.
`Ex. 1005, 10:7–8. Figure 136 depicts flow cytometry photo-damage system
`including fluid delivery system 15'' for supplying carrier fluid 17'' and sheath
`fluid 19'' to nozzle system 101''. Id. at 11:6–8, 11:17, 31:14–19, 144:21–27.
`Fluid stream 21'' (id. at 31:19–23) is subject to photodetector 117'' of epi-
`illumination optics system 415'' (id. at 11:9, 11:23, 13:58–59, 32:13–16),
`and laser 1153 (id. at 144: 30–31). Microprocessor 131'' controls fluid
`delivery system 15'', photodetector 117'', and laser 1153. Id. at 60:5–6,
`60:17–20. Laser 1153 is responsive to instructions received from
`microprocessor 131'' to ablate undesired particles in the fluid stream 21''. Id.
`at 144:30–31. As a result, the stream collected in collection receptacle 1355
`contains the desired cells. Id. at 144:32–37.
`Apparatus Comprising a First Input Channel Into Which a First
`1.
`Flow is Introduced, a Plurality of Buffer Input Channels Into Which
`Additional Flows of Buffer Solution Are Introduced
`Claim 1 recites “[a]n apparatus . . . comprising: a first input channel
`into which a first flow is introduced, said first flow which contains the fluid
`mixture of the plurality of components; a plurality of buffer input channels,
`into which additional flows of buffer solution are introduced.” Ex. 1001,
`44:41–49. Petitioner asserts “Durack discloses an apparatus that introduces
`a sample fluid into a nozzle [137] of a flow cytometer through a conduit
`[157] positioned co-axially in a bore [135] of the flow body [133].” Pet. 51
`(citing Ex. 1005, 30:3–4, 33:2–10, Figs. 5, 10). Petitioner contends “[i]n
`one example, the conduit [157] is a tubular needle . . . having one end that
`connects to the back of the nozzle, another end that is connected to the fluid
`delivery system containing the carrier fluid.” Id. (citing Ex. 1005, 33:4–10;
`Ex. 1002 ¶ 226, 1b). Petitioner further asserts that Durack discloses a
`
`17
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`PGR2015-00017
`Patent 8,933,395 B2
`plurality of buffer input channels based on Durack’s disclosure of radial bore
`173 and radial bore 183. See Id. at 51–52 (citing Ex. 1005, 33:8–14, Fig. 3;
`reproducing Ex. 1005, Fig. 5 with annotations; Ex. 1002 ¶ 226, 1c). Patent
`Owner does not contest these assertions by Petitioner. See PO Resp. 7–18.
`We have considered Petitioner’s arguments based on the record before
`us. We are persuaded by a preponderance of the evidence that Durack
`discloses “[a]n apparatus . . . comprising: a first input channel into which a
`first flow is introduced, said first flow which contains the fluid mixture of
`the plurality of components; a plurality of buffer input channels, into which
`additional flows of buffer solution are introduced, said plurality of buffer
`channels which are disposed on either side of said first input channel,” as
`recited in claim 1, and adopt Petitioner’s arguments, which are supported by
`record evidence, as our own findings of fact.
`2. Said Plurality of Buffer Input Channels Disposed on
`Either Side of the First Input Channel
`Claim 1 further recites “said plurality of buffer channels which are
`
`disposed on either side of said first input channel.” Ex. 1001, 44:49–51.
`Petitioner asserts that Durack discloses “said plurality of buffer input
`channels disposed on either side of the first input channel” based on
`“annular space [167] that carries sheath fluid [19], surrounding the conduit
`[157], connected to the sheath delivery system by two radial bores [173,
`183].” Pet. 51–52 (citing Ex. 1005, 33:8–14; Fig. 3, Ex. 1002 ¶ 226, 1c;
`reproducing Figure 5 with added annotations). Petitioner contends annular
`space 167 surrounding conduit 157 is connected to the fluid delivery system
`through first radial bore 173 for delivery into the space, and additional radial
`bore 183 may be provided in flow body 133 connecting annular space 167 to
`another line that supplies sheath fluid. See id. at 52–53 (citing Ex. 1005,
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`18
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`PGR2015-00017
`Patent 8,933,395 B2
`33:10–14; Ex. 1002 ¶ 226, 1c; reproducing Figure 5 with added
`annotations). Petitioner asserts disclosed annular space 167 is formed
`around conduit 157, and radial bores 173, 183 are disposed to a side of
`center element. See id. at 53 (citing Ex. 1005, 33:5; Fig. 3).
`
`Patent Owner contends Durack does not disclose the claim limitation
`because the structures identified by Petitioner as the plurality of buffer
`channels in Durack are disposed on adjacent sides, not “on either side.” See
`PO Resp. 7. Patent Owner contends that because radial bore 173 is
`orthogonal to radial bore 183, the first buffer channel is on one side of
`conduit 157 (left side of Fig. 5) and the second buffer channel is on a
`different side (the top or bottom in Fig. 5). See id. at 8 (citing Ex. 2006,
`42:8–14). Patent Owner argues that this configuration means that the two
`channels are not on the same side, nor are they on the opposite sides, of the
`conduit 157. See id. Patent Owner further asserts that there is no two-
`dimensional cross section of Durack where the two alleged buffer channel
`will be found on either side of the first channel. See id.
`
`In response, Petitioner contends that “Durack specifically discloses at
`least two input channels (radial bores 173 and 183) surrounding a first input
`channel (conduit 157) for supplying buffer (sheath fluid 19).” Pet. Reply
`4–5 (citing Ex. 1005, 33:3–14, reproducing Figure 5). Petitioner further
`asserts “in Figure 5 of Durack, the two buffer channels 173 and 183 are
`disposed on one side of the input channel 157 but can also be disposed on
`one and the other of the two longer bounding surfaces of the input channel.”
`Id. at 6 (citing Ex. 1002 ¶ 226, 1c). Petitioner contends the particular
`arrangement of buffer channels will depend on how the cross-section of the
`input channel 157 is halved or bisected. See id. at 6–7; Tr. 8:9–9:19.
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`19
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`PGR2015-00017
`Patent 8,933,395 B2
`
`In view of the broadest reasonable interpretation of “said plurality of
`buffer channels which are disposed on either side of said first input channel”
`discussed above in Section II.A.2, on this record, we disagree with Patent
`Owner’s arguments. We are persuaded that Petitioner has established by a
`preponderance of the evidence that Durack discloses this claim limitation
`based on radial bores 173 and 183 disposed on one side of conduit 157 (i.e.,
`the exterior circumferential bounding surface of conduit 157). See Ex. 1005,
`Fig. 5.
`
`3. Said First Flow and Said Additional Flows
`Have a Flow Direction Along a Length of the Apparatus
`From One End of the Apparatus to Another End of the Apparatus
`Claim 1 further recites “wherein said first flow and said additional
`flows have a flow direction along a length of the apparatus from one end of
`the apparatus to another end of the apparatus.” Ex. 1001, 44:52–54.
`Petitioner asserts that Durack discloses “said first flow and said add
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