Trials@uspto. gov
`Tel: 571—272-7822
`
`Paper 14
`Entered: June 29, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`10X GENOMICS, INC.,
`
`Petitioner,
`
`V.
`
`BIO-RAD LABORATORIES, INC.,
`
`Patent Owner.
`
`Case IPR201 8-00432
`
`Patent 9, 126,160 B2
`
`Before KRISTINA M. KALAN, JON B. TORNQUIST, and
`JEFFREY W. ABRAHAM, Administrative PatentJudges.
`
`ABRAHAM, Administrative PatentJudge.
`
`DECISION
`Denying Institution of Inter Partes Review
`35 (1.5. C. §314(a)
`
`
`Tel: 571—272-7822
`
`Paper 14
`Entered: June 29, 2018
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`10X GENOMICS, INC.,
`
`Petitioner,
`
`V.
`
`BIO-RAD LABORATORIES, INC.,
`
`Patent Owner.
`
`Case IPR201 8-00432
`
`Patent 9, 126,160 B2
`
`Before KRISTINA M. KALAN, JON B. TORNQUIST, and
`JEFFREY W. ABRAHAM, Administrative PatentJudges.
`
`ABRAHAM, Administrative PatentJudge.
`
`DECISION
`Denying Institution of Inter Partes Review
`35 (1.5. C. §314(a)
`
`
`
`IPR2018-00432
`
`Patent 9,126, 160 B2 ._
`
`I.
`
`INTRODUCTION
`
`10X Genomics, Inc. (“Petitioner”) filed a Petition (Paper 2, “P et.”)
`
`requesting interpartes review of claims 1—21 of U.S. Patent
`
`No. 9,126,160 B2 (Ex. 1001, “the ’ 160 patent”). Bio-Rad Laboratories, Inc.
`
`(“Patent Owner”) filed a Preliminary Response to the Petition (Paper 7,
`
`“Prelim. Resp”).I
`
`We have authority to determine whether to institute an interpartes
`
`review. 35 U. S.C. § 314. The standard for instituting an interpartes review
`
`is set forth in 35 U.S.C. § 314(a), which provides that an interpartes review
`
`may not be instituted “unless the Director determines .
`
`.
`
`. there is a
`
`reasonable likelihood that the petitioner would prevail with respect to at
`
`least 1 of the claims challenged in the petition.”
`
`After considering the Petition, the Preliminary Response, and the
`
`evidence of record, we determine that Petitioner has not demonstrated a
`
`reasonable likelihood that it would prevail with respect to at least one claim
`
`challenged in the Petition. Accordingly, we deny the Petition, and do not
`
`institute interpartes review.
`
`A. Related Proceedings
`
`The parties identify 31'o-Rad Laboratories, Inc. v. 1 0X Genomics, Inc,
`
`Case No. 3:17-CV—4339 (N.D. Cal.) and Re: Certain Microfluidic Devices,
`
`Investigation Number 337-TA—1068 (ITC) as related matters. Pet. 1;
`
`Paper 4, 1. The parties also note that the ’160 patent is at issue in IPR2018-
`
`00433 and IPR2018-00434. Pet. 1; Paper 4, 1.
`
`1 Patent Owner identifies Lawrence Livermore National Security, LLC as a
`real party in interest. Paper 4, 1.
`
`
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`IPR2018-00432
`
`Patent 9,126,160 B2
`
`B. The ’160Patent
`
`The ’ 160 patent discloses a system for forming an array of emulsions
`
`that consist of liquid droplets disposed in an immiscible carrier liquid.
`
`Ex. 1001, 1:46—47, 10:11—12. Figure 24, reproduced below, is a schematic
`
`view of a “four-port” droplet generator of the ’ 160 patent (id. at 35 :4 1—42):
`
`Fig. 24
`
`.123,
`
` 1228
`
`In the droplet generator depicted in Figure 24, oil wells 1224 are loaded with
`
`a carrier fluid (e.g., oil) and sample well 1226 is loaded with a sample (e. g.,
`
`an assay mixture, such as a PCR mixture including a sample and a reagent).
`
`Id. at 35:42—47. The wells are “connected fluidly by channels 1230 formed
`
`near the bottom” of the well. Id. at 35:3 5—37. The individual channels
`
`connect at intersection 1232, where droplets are formed by “any suitable
`
`mechanism, such as flow-focusing.” Id. at 35:3 7—40. The ’ 160 patent
`
`explains that pressure may be applied to wells 1224 and 1226, as indicated
`
`by vertical arrows 1234, “to drive fluid flow, droplet generation, and flow of
`
`the resulting droplets as an emulsion 1236 to emulsion well 1228.” Id. at
`
`3 5 247—5 1 .
`
`
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`IPR2018-00432
`
`Patent 9, 126, 160 B2
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`Figures 22,23, and 25 of the ’ 160 patent are reproduced below:
`
`
`
`Figures 22 and 23 show exemplary device 1220 equipped with an array of
`
`droplet generators 1222. Id. at 35:27—30. As shown in Figure 23, each
`
`droplet generator 1222 may include wells or reservoirs 1224, 1226, and
`
`1228, which can be accessed from above plate 1220. Id. at 35:32—35. The
`
`wells are fluidly connected by channels 1230. Id. at35z35—40. Figure 25 is
`
`a section View of plate 1220 assembled with pressure manifold 1238, which
`
`is connected to one or more pressure sources (e.g., pressure sources 1248
`
`and 1250) that exert pressure on the oil and sample wells to drive fluid flow.
`
`Id. at 35:47—51, 35:56—59, 36:20—22, 36:36—41.
`
`
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`IPR2018-00432
`
`Patent 9, 126, 160 B2
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`C. Illustrative Claim
`
`Petitioner challenges claims 1—21 of the ’ 160 patent. Independent
`
`claim 1 is illustrative of the challenged claims and is reproduced below:
`
`1. A system for forming an array of emulsions in parallel,
`comprising:
`
`a plate providing an array of emulsion production units each
`configured to produce a separate emulsion and each
`including a set of wells interconnected by a set of channels
`forming a channel junction, each channel being bounded
`circumferentially, each set of wells including at least one
`first input well to receive a continuous phase, a second
`input well to receive a dispersed phase, and an output well;
`
`two input
`least
`wherein the set of channels includes at
`channels extending separately from the input wells to the
`channel junction, at which droplets of the dispersed phase
`are generated in the continuous phase, and an output
`channel extending from the channel junction to the output
`well, in which an emulsion is collected.
`
`Ex. 1001, 161259—16217.
`
`Claim 20 is the only other independent claim, and is substantially
`
`similar to claim 1, except for the additional recitations of “a plate having an
`
`upper member attached to a lower member” and “wherein the lower member
`
`has an upper surface that is flat and that abuts a lower surface of the upper
`
`member to form a bottom wall of openings formed in the lower surface and
`
`correspondingto the wells and the channels of each unit.” Id. at 163:15—
`
`164216.
`
`
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`IPR2018—00432
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`Patent 9,126,160 B2
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`
`
`
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`
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`D. The Asserted Grounds of Unpatentabz'lity
`Petitioner contends claims lt—21 of the ’ 160 patent are unpatentable
`
`based on the following grounds (Pet. 13, 60, 63, 65, 68):2
`
`Kumacheva3 and Modlin4
`
`§ 103
`
`1, 3—13, 15, 16, 18, 20, and 21
`
`Claim s Challen-ed
`
`.
`
`Kumacheva, Modlin, and Chien5
`
`§ 103
`
`17 and 19
`
`Kumacheva, Modlin, and Hsieh6
`
`§ 103
`
`Kumacheva, Modlin, and Beer7
`
`§ 103
`
`Kumacheva, Modlin, and Soane8
`
`§ 103
`
`8—13, 20, and 21
`
`
`
`-
`
`'11.
`
`ANALYSIS
`
`A. Claim Construction
`
`In an interpartes review, claim terms in an unexpired patent are
`
`construed according to their broadest reasonable interpretation in light of the
`
`specification of the patent in which they appear. 37 C.F.R. § 42.100(b);
`
`Cuozzo Speed Techs, LLCv. Lee, 136 S. Ct. 2131, 2144—46 (2016)
`
`(upholding the use of the broadest reasonable interpretation standard).
`
`
`
`
`
`
`
`2 Petitioner also relies on a declaration from Dr. Khushroo Gandhi
`
`(Ex. 1003).
`3 US 2010/0184928 A1, published July 22, 2010 (Ex. 1004).
`4 US 2005/02665 82 A1, published Dec. 1, 2005 (Ex. 1005).
`5 Ring-ng Chien and J. Wallace Parce, Multiportflow—control systemfor
`lab-on—a—chip microfluidz'c devices, Fresenius J. Anal. Chem., 371:106—1 l 1
`(2001) (Ex. 1007).
`6 US 2008/0166720 A1, published July 10, 2008 (Ex. 1018).
`7 Beer et al., On-Chip, Real-Time, Single-Copy Polymerase Chain Reaction
`in Pz'colz'ter Droplets, Anal. Chem., 79, 8471—8475 (2007) (Ex. 1034).
`8 US 6,176,962 B1, issued Jan. 23, 2001 (Ex. 1028).
`
`6
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`IPR2018-00432
`
`Patent 9, 126, 160 B2
`
`Upon review of the parties’ arguments and supporting evidence, we
`
`determine that no claim terms of the ’ 160 patent require express construction
`
`for purposes ofthis Decision. See Nidec Motor Corp. v. Zhongshan Broad
`
`Ocean Motor C0,, 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs,
`
`Inc. v. Am. Sci. & Eng ’g, Inc, 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly
`
`those terms need be construed that are in controversy, and only to the extent
`
`necessary to resolve the controversy.”)).
`
`8. Claims 1, 3—13, 15, 16, 18, 20, and 21 over Kumacheva and
`Modlin
`
`Petitioner contends the subject matter of claims 1, 3—13, 15, 16, 18,
`
`20, and 21 would have been obvious over the combined disclosures of
`
`Kumacheva and Modlin. Pet. 13—60.
`
`1. Kumacheva
`
`Kumacheva discloses “a multiple droplet generator integrating two or
`
`more parallel flow-focusing devices (FFDs).” Ex. 1004, Abstract. Figures 1
`
`and 2 of Kumacheva depict portions ofthe disclosed multiple droplet
`
`generator, and are reproduced below:
`
`34 /3
`32
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`
`33
`
`FIG.1
`
`FIG.2
`
`Figure 1 is a schematic of droplet formation in an individual planar
`
`microfluidic flow-focusing droplet generator, and Figure 2 is a top view of
`
`an individual droplet generator depicting the direction of fluid flow.
`
`Id.
`
`1111 40—4 1.
`
`
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`IPR2018-00432
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`Patent9, 126,160 B2
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`In the FFDs of Kumacheva, immiscible liquids A (droplet phase) and
`
`B (continuous phase) are combined to form an emulsion. Id. 111] 31, 61—63.
`
`Liquid A enters through opening 42 (Figure 2) and travels downstream
`
`through central microchannel 30. Id. W 61—62. Liquid B enters through
`
`side microchannels 26 and travels downstream via microchannels 32. Id.
`
`As shown in more detail in Figure 1, liquids A and B are forced through
`
`narrow orifice 34 where “a thread of liquid A breaks up and releases
`
`droplets 62” within outlet microchannel38. Id. 1] 61.
`
`Figure 3 of Kumacheva is reproduced below:
`
`
`
`Figure 3 shows a 3D illustration of four parallel flow-focusing devices 20.
`
`Id. fl 63. As shown in Figure 3, the device of Kumacheva uses a single
`
`inlet 22 for the continuous phase, a single inlet 52 for the droplet phase, and
`
`a single outlet 64 to remove the droplets from the system. Id. 1H] 2, 13
`
`(noting that the use of “two inlets for the droplet and continuous phases” can
`
`avoid “the use of multiple pumps supplying liquids to each microreactor”),
`
`20 (noting that “two or more parallel flow-focusing devices” are provided
`
`“with a single overall inlet branching into multiple inlets associated with
`
`each of the flow-focusing devices .
`
`.
`
`. and a single outlet”). After the
`
`continuous phase is supplied through inlet 22, it is subsequently split into
`
`channels 26 and then channels 32 (shown in Figures 1 and 2). Id. 11 66.
`
`
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`IPR2018-00432
`
`Patent 9,126,160 B2
`
`After the droplet phase is injected into inlet 52, it is delivered to openings 42
`
`and subsequently travels through microchannels 30. Id. Droplets generated
`
`by flow-focusing devices 20 then travel through downstream channels 3 8 to
`
`outlet 64. Id.
`
`2. Modlin
`
`Modlin discloses a “microfluidic system for performing chemical
`
`reactions or biochemical, biological, or chemical assays utilizing a
`
`microfabricated device or ‘chip. ’” Ex. 1005, Abstract. Figures 49 and 50 of
`
`Modlin are reproduced below:
`
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`As shown in Figure 49, unit cell array 804 contains standard unit cells 820,
`
`which are replicated 96 times in “an industry standard 384 well format.” Id.
`
`fl 209. As shown in Figure 50, each exemplary “4-Port” standard unit
`
`cell 820 has four access ports that are each connected to at least one channel.
`
`Id. 1w 209—210.
`
`
`
`IPR2018-00432
`
`Patent 9,126,160 B2
`
`Figures 34 and 35 of Modlin are reproduced below:
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`
`Figure 34 is a cross sectional perspective View of a microfluidic well plate,
`
`and Figure 35 is a partial cut away perspective view of the microfluidic well
`
`plate ofFigure 34. Id. 111] 177—178. As shown in Figure 35, sample
`
`wells 614 are preferably positioned over access ports 622. Id. 11 178.
`
`Channel 106f is formed between the surface of fabricated substrate 1 18f and
`
`the surface of membrane 1 10f and provides a fluid connection between
`
`access ports 622. Id. Modlin explains that the well to well spacing, or well
`
`pitch, of the standard unit cells “is designed to match industry standard
`
`microplate well pitches including but not limited to 96, 384, and 1536 well
`
`formats,” which ensures that the microfluidic well plates are “compatible
`
`with standardized fluid handling equipment.” Id. 1] 211.
`
`Figure 44 of Modlin, reproduced below, depicts pressure
`
`manifold 754 connected to microfluidic well plate 610:
`750
`
`
`
`
`
`M'iL'mn_uiIlic
`\gtil mm 610
`Fig. 4'4
`(filckagufl Chip]
`
`10
`
`
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`IPR2018-00432
`
`Patent 9, 126,160 B2
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`Manifold 775 may be mechanically aligned and sealably mounted to well
`
`plate 610 to distribute “pneumatic, hydraulic, electronic, mechanical, or
`
`optical signals” to their intended destinations on well plate 610. Id. W 201—
`
`202.
`
`3. Summary ofthe Parties ’Arguments
`
`Petitioner contends a skilled artisan would have found it obvious to
`
`configure Kumacheva’s FFD 36 in Modlin’s 3-1 combiner unit cell 822, as
`
`shown below (Pet. 19):
`
`822-
`
`
`
`In Petitioner’s proposed configuration, access ports 1 and 4 of unit cell 822
`
`contain the continuous phase and are connected to channels 32 of
`
`Kumacheva’s FFD. Id. Access port 3 of unit cell 822 contains the aqueous
`
`(dispersion) phase and is connected to channel 30 of Kumacheva’s FFD. Id.
`
`According to Petitioner, droplets are generated at the “cross-shaped
`
`junction” of Kumacheva and routed through output channel 3 8 to output
`
`port 2. Id. ; Ex. 10031160. To drive fluid flow, the combined well plate
`
`assembly is sealably mated with a pressure manifold, as described in
`
`Modlin. Pet. 20; Ex. 1005, Fig. 44. This proposed configuration is part of
`
`an overall proposed “Combined System,” illustrated by Petitioner as
`
`follows:
`
`ll
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`
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`IPR2018-00432
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`Patent 9, 126,160 B2
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`Petitioner contends the Combined System of Kumacheva and Modlin
`
`teaches or suggests every limitation of independent claim 1. In particular,
`
`Petitioner contends the proposed device has a plate that contains an array of
`
`emulsion production units (P ct. 28—29), with each unit configured to
`
`produce a separate emulsion (id. at 30), a set of wells interconnected by a set
`
`of channels forming a channel junction (id. at 30—32), each channel being
`
`bounded circumferentially (id. at 32—3 3), an input well to receive a
`
`continuous phase and an input well to receive a dispersed phase (id. at 33—
`
`36), an output well (id. at 37), at least two input channels extending from the
`
`input wells to the channel junction, and an output channel extending from
`
`the channel junction to the output well, where an emulsion is collected (id. at
`
`37—3 9).
`
`Petitioner contends one of ordinary skill in the art would have sought
`
`to make the proposed Combined System in order to increase the number of
`
`different droplet and continuous phases that may be used simultaneously, to
`
`permit analysis of multiple different samples from multiple different patients
`
`at the same time, to increase Kumacheva’s compatibility with standard fluid
`
`12
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`IPR2018-00432
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`Patent 9, 126, 160 B2
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`handling equipment, and to increase the degree of parallelization of
`
`Kumacheva’s device. Id. at 21—24.
`
`Patent Owner contends Petitioner has failed to provide a reasoned
`
`explanation as to why one of ordinary skill in the art would have sought to
`
`combine Kumacheva and Modlin in the manner proposed in the Petition.
`
`Prelim. Resp. 28—32. According to Patent Owner, “the centerpiece ofthe
`
`Petition .
`
`.
`
`. is actually nothing more than a collage of figures put together by
`
`Petitioner to follow the blueprint set forth in the ’160 patent,” which Patent
`
`Owner contends is “the epitome of impermissible hindsight.” Id. at 34—35.
`
`4. Analysis
`
`Although the elements of Petitioner’s Combined System appear
`
`similar to the elements of the droplet generator depicted in the ’ 160 patent,
`
`for the reasons set forth below, we agree with Patent Owner that neither
`
`Petitioner nor Dr. Gandhi explains persuasively why one of ordinary skill in
`
`the art, absent resort to hindsight and/or use of the ’ 160 patent as a roadmap,
`
`would have sought to make such a combination. See KSR Int ’1 Co. v.
`
`Teleflex Inc. , 550 US. 398, 418 (2007) (“[A] patent. .
`
`.
`
`is not proved
`
`obvious merely by demonstratingthat each of its elements was,
`
`independently, known in the prior art”).
`Petitioner contends that one of ordinary skill in the art would have
`
`sought to incorporate Kumacheva’s droplet generator in the system of
`
`Modlin in order to “increase the degree of parallelization from four (as
`
`disclosed in Kumacheva) to 24, 96 or more.” Pet. 23—24 (asserting that
`
`parallelization of droplet generators was well known in the art). This
`argument is not persuasive because, as Patent Owner notes, Kumacheva
`
`specifically discloses that its device may be used in “parallelization (scaling
`
`l3
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`IPR2018—00432
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`Patent 9, 126, 160 B2
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`up) of the production of droplets” and is not limited to the use of only four
`
`droplet generators. Ex. 1004 W 20 (disclosing that the invention “can be
`
`used in parallelization,” and may have “two or more parallel flow-focusing
`
`devices”), 64 (noting that the device of Kumacheva is not limited to four
`
`droplet generators, and may have “a plurality” of flow-focusing devices 20),
`
`83 (describing the results of an integrated droplet generator comprising
`
`sixteen individual droplet generators); Prelim. Resp. 32 (noting that
`
`Kumacheva specifically states that its design “can be used in parallelization
`
`(scaling up) of the production of droplets”) (quoting Ex. 1004 1] 20).
`
`Moreover, even if one of ordinary skill in the art would have sought to
`
`increase parallelization beyond what Kumacheva’ 5 device was capable of,
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`Petitioner does not explain adequately why such an ordinarily skilled artisan
`
`would have been prompted to abandon the assertedly advantageous single
`
`inlet/single outlet design of Kumacheva to do so.
`
`Petitioner further contends that Kumacheva discloses that adding
`
`manifolds may be useful where “mixing, concentration, dilution, or change
`
`in composition of droplet phase or continuous phases is needed,” and asserts
`
`that incorporating Modlin’s teaching of connecting each fluidic circuit to its
`
`own input and output well in a unit cell would “permit use of a wide variety
`
`of different droplet phases and continuous phases on the same plate
`
`simultaneously, increasing efficiency of running large numbers of droplet
`
`generation operations.” Pet. 21—22 (emphasis omitted); Ex. 1004 1] 68;
`
`Ex. 1003 1] 63.
`
`Kumacheva’s device, however, already allows a user to change the
`
`composition of the droplet and/or continuous phases. Ex. 1004 fil 68. Thus,
`
`it is not evident why an ordinary artisan would have combined Kumacheva
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`14
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`IPR2018-00432
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`Patent 9,126, 160 B2
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`and Modlin to achieve this result. It is also not evident why Kumacheva’s
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`device, which is used to produce polymers, would benefit from the use of a
`
`wide variety of different droplet phases at the same time. Finally, to the
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`extent an ordinarily skilled artisan would have recognized a benefit in being
`
`able to use a wider variety of droplet and continuous phases than what
`
`Kumacheva’s device is capable of, Petitioner does not explain sufficiently
`
`why this ordinary artisan would have been prompted to abandon
`
`Kumacheva’s assertedly advantageous single inlet/single outlet design to
`
`achieve this goal, much less have sought to do so in the device of Modlin,
`
`which was not designed to produce emulsions.9 Prelim. Resp. 29 (“For
`
`example, rather than giving each unit its own input and output wells,
`
`Kumachevateaches that its devices should have a ‘single overall inlet’ and
`
`‘a single outlet.’”) (citing Ex. 1004 fl 20).
`
`Petitioner also asserts that, because Kumacheva “expressly suggests”
`
`using the disclosed device “to perform biological and biochemical analyses,”
`
`such as “DNA separation” and “parallel PCR assays,” one of ordinary skill
`
`in the art would have sought to implement Kumacheva’s droplet generator in
`
`Modlin to assay samples from multiple different patients on a single chip or,
`
`alternatively, to prepare different emulsions at the same time. Pet. 22 (citing
`
`Ex. 1004 11 14); Ex. 1003 1] 64 (citing Ex. 1004 1] 14). Contrary to
`
`Petitioner’s assertion, however, we are directed to no disclosure in
`
`9 Petitioner and Dr. Gandhi assert that disposing Kumacheva’s droplet
`generators in a unit cell arrangement “would enable the droplet generators to
`perform assays on different emulsions in parallel as disclosed by Modlin.”
`Ex. 1003 1] 64; Pet. 22. We are directed to no disclosure in Modlin,
`however, ofproducing emulsions, much less a large number of different
`emulsions in parallel.
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`15
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`IPR2018-OO432
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`Patent 9, 126, 160 B2
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`Kumacheva ofusing the disclosed single inlet/single outlet droplet
`
`generators for “biological and biochemical assays,” “such as DNA
`
`separation” and “parallel PCR assays.” .Ex. 1004 W 13 (discussing the
`
`challenges faced in scaling up the “microfluidic synthesis of polymer
`
`particles in multichannel microfluidic reactors”), 19 (“This present invention
`
`provides multiple continuous microfluidic reactors for parallel scaled up
`
`synthesis in polymer particles, and methods of use thereof”). The portion of
`
`Kumacheva relied upon by Petitioner is part of the “Background of the
`
`Invention” section, and distinguishes Kumacheva’s disclosed invention from
`
`certain prior art devices that “have been used” for, among other things,
`
`“DNA separation” and “parallel PCR assays.” Pet. 22 (citing Ex. 1004
`
`1] 14); see also Ex. 1004 11 15 (“In these reports, emulsification in parallel
`
`combined microfluidic channels was not used”). Petitioner does not explain
`
`sufficiently why the generalized disclosure in the “Background of the
`
`Invention” section would have suggested using Kumacheva’s specific
`
`droplet generators for “biological and biochemical assays,” or why one of
`
`ordinary skill in the art would have been prompted to remove Kumacheva’s
`
`single inlet/single outlet design to do so. Prelim. Resp. 29—30 (asserting that
`
`Kumacheva “teaches the use of multiple substrates with as few ‘inlets’ and
`
`‘channels’ as possible”) (citing Ex. 10041[ 15). The number of mental steps
`
`and physical modifications necessary to achieve the proposed Combined
`
`System suggests it is proposed out of hindsight, and not in View of the
`
`knowledge and skill in the art as of the earliest priority date of the ’ 160
`
`patent. See Metalcraft ofMayvilZe, Inc. v. The Toro Ca, 848 F.3d 1358,
`
`l 367 (Fed. Cir. 2017) (“[W]e cannot allow hindsight bias to be the thread
`
`16
`
`
`
`IPR2018-00432
`
`Patent 9, 126,160 B2
`
`that stitches together prior art patches into something that is the claimed
`
`invention”).
`
`Petitioner also contends that one of ordinary skill in the art would
`
`have implemented Kumacheva’s droplet generator in Modlin in order to
`
`“substantially increase compatibility with industry standard laboratory
`
`equipment and reduce cost.” Pet. 22—23. According to Petitioner,
`
`configuring Kumacheva’s droplet generators according to Modlin’s
`
`microwell plate design would constitute the use of a known technique to
`
`improve similar devices in the same way. Id. (citing KSR, 550 US. at415—
`
`421).
`
`The evidence of record supports Petitioner’ s assertion that Modlin’s
`
`well plate design provides compatibility with industry standard equipment.
`
`Ex. 1005 111] 105, 312; Pet. 23. As noted above, however, Petitioner’s
`
`Combined System involves abandoning Kumacheva’s single inlet/outlet
`
`design in favor of Modlin’s plate design. Petitioner does not adequately
`
`explain why one of ordinary skill in the art would have been prompted to
`
`abandon the single inlet/single outlet design of Kumacheva to increase
`
`compatibility with certain industry standard equipment or to reduce costs.
`
`For example, Petitioner does not direct us to any evidence that Kumacheva’s
`
`design suffers from compatibility problems with industry equipment or cost
`
`issues. Nor does Petitioner explain why any such compatibility problems or
`
`cost issues could not be addressed by adjusting, as opposed to abandoning,
`
`Kumacheva’s single inlet/single outlet design that is the focus of the
`
`reference. Ex. 1004 111] 2, 19—20 (utilizing “a single overall inlet branching
`
`into multiple inlets associated with each of the flow-focusing devices”),
`
`Figs. 2, 3; see Ex. 1005 111] 215—217, Figs. 54—55 (disclosing the use oftwo
`
`17
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`
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`IPR2018-00432
`
`Patent9, 126,160 B2
`
`input wells and a routing network of channels in Modlin to deliver two
`
`common reagents to each unit cell). Petitioner’s proposed modifications
`
`once again appear to be proposed out of hindsight.
`
`In View of the foregoing, Petitioner has not explained sufficiently why
`
`one of ordinary skill in the art would have sought to combine the identified
`
`disclosures of Kumacheva and Modlin to arrive at the subject matter ofthe
`
`’ 160 patent. Accordingly, Petitioner has not demonstrated a reasonable
`
`likelihood that the subject matter of claims 1, 3—13, 15, 16, 18, 20, and 21
`
`would have been obvious over Kumacheva and Modlin.
`
`C. Remaining Grounds Based on Kumacheva, Modlin, and either
`Chien, Hsieh, Beer, or Soane
`
`Petitioner’s remaining challenges to claims 2, 8—14, 17, and 19 (which
`
`depend from claim 1), independent claim 20, and claim 21 (which depends
`
`from claim 20) all rely on the aforementioned arguments regarding the
`
`proposed combined teachings of Kumacheva and Modlin. Pet. 60—76.
`
`Petitioner’s arguments with respect to the remaining challenges do not
`
`resolve the deficiencies noted above with respect to the combined teachings
`
`of Kumacheva and Modlin. Accordingly, Petitioner has not demonstrated a
`
`reasonable likelihood that independent claim 20 or dependent claims 2, 8—
`
`14, 17, and 19—21 would have been obvious over the combined teachings of
`
`Kumacheva and Modlin with either Hsieh, Soane, Beer, or Chien.
`
`III.
`
`CONCLUSION
`
`For the foregoing reasons, Petitioner has not demonstrated a
`
`reasonable likelihood that at least one challenged claim of the ’ 160 patent
`
`would have been obvious over the prior art of record. Accordingly, we do
`
`not institute interpartes review.
`
`18
`
`
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`IPR2018-00432
`
`Patent 9, 126, 160 B2
`
`It is hereby,
`
`IV. ORDER
`
`ORDERED that, pursuant to 35 U. S.C. § 314, the Petition is denied
`
`and no interpartes review is instituted.
`
`19
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`
`
`IPR2018-00432
`
`Patent 9, 126, 160 B2
`
`PETITIONER:
`
`Greg Gardella
`ggardella@gardellag[ace.corn
`
`Dianna DeVore
`
`ddevore@convergentlaw.corn
`
`Sarah Brashears
`
`sbrashears@convergentlaw.com
`
`PATENT OWNER:
`
`Jim Glass
`
`jirng!ass@guinnemanuel. com
`
`Kevin Johnson
`
`kevinjohnson@guinnemanue1.com
`
`David Bilsker
`
`davidbilsker@guinnemanucl.corn
`
`Joseph Milowic III
`1' osephmilowic@g uinnemanuel. com
`
`Nancy Zhang
`nzhan ws
`
`.com
`
`20
`
`
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