Trials@uspto. gov
`Tel: 571 -272-7822
`
`Paper 1 5
`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 8-00433
`
`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 US. C. §314(a)
`
`
`Tel: 571 -272-7822
`
`Paper 1 5
`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 8-00433
`
`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 US. C. §314(a)
`
`
`
`IPR2018-OO433
`
`Patent 9, 126, 160 B2
`
`1.
`
`INTRODUCTION
`
`10X Genomics, Inc. (“Petitioner”) filed a Petition (Paper 2, “P et.”)
`
`requesting interpartes review of claims 1—21 of US. 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 8,
`
`“Prelim. Resp”).I
`
`We have authority to determine whether to institute an interpartes
`
`review. 3 5 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
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`may not be instituted “unless the Director determines. .
`
`. there is a
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`reasonable likelihood that the petitioner would prevail with respect to at
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`least 1 of the claims challengcd in the petition.”
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`After considering the Petition, the Preliminary Response, and the
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`evidence of record, we determine that Petitioner has not demonstrated a
`
`reasonable likelihood that it would prevail with respect to at least one claim
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`challenged in the Petition. Accordingly, we deny the Petition, and do not
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`institute an interpartes review.
`
`1. Related Proceedings
`
`The parties identify Bio-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
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`6, 1. The parties also note that the ’ 160 patent is at issue in IPR2018-00432
`
`and IPR2018-00434. Pet. 1;Paper 6, 1.
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`' Patent Owner identifies Lawrence Livermore National Security LLC as a
`real party in interest. Paper 6, 1.
`
`
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`IPR2018-00433
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`Patent 9,126,160 B2
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`B. The ’160Paterzt
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`The ’ 160 patent discloses a system for forming an array of emulsions
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`that consist of liquid droplets disposed in an immiscible carrier liquid.
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`Ex. 1001, 1:46—47, 10:11—12. Figure 24, reproduced below, is a schematic
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`view of a “four-port” droplet generator of the ’ 160 patent (id. at 35 :4 1—42):
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`
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`1n the droplet generator depicted in Figure 24, oil wells 1224 are loaded with
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`a carrier fluid (e. g., oil) and sample well 1226 is loaded with a sample (e. g.,
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`an assay mixture, such as a PCR mixture including a sample and a reagent).
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`Id. at 35:42—47. The wells are “connected fluidly by channels 1230 formed
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`near the bottom” of the well. Id. at 35:3 5—37. The individual channels
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`connect at intersection 1232, where droplets are formed by “any suitable
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`mechanism, such as flow-focusing.” Id. at 35:37—40. The ’ 160 patent
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`explains that pressure may be applied to wells 1224 and 1226, as indicated
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`by vertical arrows 1234, “to drive fluid flow, droplet generation, and flow of
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`the resulting droplets as an emulsion 1236 to emulsion well 1228.” Id. at
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`35:47—51.
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`IPR2018-00433
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`Patent 9, 126,160 B2
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`'
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`Figures 22, 23, and 25 of the ’ 160 patent are reproduced below:
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`
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`n‘
`«‘1‘
`Zia.
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`x"
`.
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`e
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`‘k‘
`-
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`\
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`i250
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`Figures 22 and 23 show exemplary device 1220 equipped with an array of
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`droplet generators 1222. Id. at 35:27—30. As shown in Figure 23, each
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`droplet generator 1222 may include wells, or reservoirs 1224, 1226, and
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`1228,'which can be accessed from above plate 1220. Id. at 35:32—35. The
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`wells are fluidly connected by channels 1230. Id. at35:3 5—40. Figure 25 is
`a section View of plate 1220 assembled with pressure manifold 1238, which
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`is connected to one or more pressure sources (e.g., pressure sources 1248
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`IPR2018-00433
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`Patent 9, 126,160 B2
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`and 1250) that exert pressure on the oil and sample wells to drive fluid flow.
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`Id. at 35:47—51, 35:56—59, 36:20—22, 36:36—41.
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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:
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`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, 161 :59—162:7. Claim 20 is the only other independent claim, and
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`is substantially similar to claim 1, except for the additional recitations of “a
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`plate having an upper member attached to a lower member” and “wherein
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`the lower member has an upper surface that is flat and that abuts a lower
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`surface of the upper member to form a bottom wall of openings formed in
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`the lower surface and corresponding to the wells and the channels of each
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`uni.” Id. at 163:15—164216.
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`
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`IPR2018-00433
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`Patent9, 126,160 B2
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`D. The Asserted Grounds of Unpatentability
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`Petitioner contends claims 1—21 of the ’ 160 patent are unpatentable
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`based on the following grounds (Pet. 13, 54, 56, 59, 71):2
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`Quake3, Dale“, Chien 15, and Chien II6
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`§ 103
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`1, 3, 4, 6, 7, and 15—19
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`Claim ~s Challen-ed
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`Quake, Dale, Chien I, Chien II, and
`Hsieh7
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`Quake, Dale, Chien I, Chien II, and
`Modlin8
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`§ 103
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`§ 103
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`2
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`5
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`.
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`Quake, Dale, Chien I, Chien II, and
`Soane9
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`§ 103
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`8—13 and 20—21
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`
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`Quake, Dale, Chien I, Chien II, and
`§ 103
`14
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`Beer10
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`A. Claim Construction
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`11.
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`ANALYSIS
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`In an interpartes review, claim terms in an unexpired patent are
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`construed according to their broadest reasonable interpretation in light of the
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`2 Petitioner also relies on a declaration from Dr. Khushroo Gandhi
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`(Ex. 1003).
`3 US 2002/005 8332 A1, published May 16, 2002 (Ex. 1004).
`4 US 2008/0056948 A1, published Mar. 6, 2008 (Ex. 1005).
`5 US 6,915,679 B2, issued July 12, 2005 (Ex. 1006).
`6 Ring-Ling Chien and J. Wallace Parce, Multz'portflow-control systemfor
`lab-on-a-chz'p microfluidz‘c devices, Fresenius J. Anal. Chem. 371 :106—1 11
`(2001) (Ex. 1035).
`7 US 2008/0166720 A1, published July 10, 2008 (Ex. 1019).
`8 US 2005/02665 82 A1, published Dec. 1, 2005 (Ex. 1007).
`9 US 6,176,962 B1, issued Jan. 23, 2001 (Ex. 1021).
`‘0 Beer et al., On—Chip, Real-Time, Single-Copy Polymerase Chain Reaction
`in Picoliter Droplets, Anal. Chem., 79, 8471—8475 (2007) (Ex. 1032).
`
`6
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`IPR2018-00433
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`Patent9, 126,160 B2
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`specification of the patent in which they appear. 37 C.F.R. § 42.100(b);
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`Cuozzo Speed Techs, LLCv. Lee, 136 S. Ct. 2131, 2144—46 (2016)
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`(upholding the use of the broadest reasonable interpretation standard).
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`Upon review of the parties’ arguments and supporting evidence, we
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`determine that no claim terms of the ’ 160 patent require express construction
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`for purposes ofthis decision. See Nz'dec Motor Corp. v. Zhongshan Broad
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`Ocean Motor Co. , 868 F.3d 1013, 1017 (Fed. Cir. 2017) (citing Vivid Techs,
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`Inc. v. Am. Sci. & Eng ’g, Inc. , 200 F.3d 795, 803 (Fed. Cir. 1999) (“[O]nly
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`those terms need be construed that are in controversy, and only to the extent
`
`necessary to resolve the controversy.”)).
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`B. Claims I, 3, 4, 6, 7, and 15—19 over Quake, Dale, ChienI, and
`Chi en II
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`Petitioner contends the subject matter of claims 1, 3, 4, 6, 7, and 15—
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`19 would have been obvious over the combined disclosures of Quake, Dale,
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`Chien I, and Chien II. Pet. 13—54.
`
`I . Quake
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`Quake discloses a device and methods for analyzing and/or sorting
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`biological materials, including, proteins, enzymes, viruses, and cells.
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`Ex. 1004, Abstract. The devices and methods of Quake comprise “at least
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`one analysis unit having an inlet region in communication with a main
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`channel at a droplet extrusion region (e.g., for introducing droplets of a
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`sample into the main channel),” a detection region, and a detector associated
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`with the detection region. Id. 1] 76. As the droplets pass into the detection
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`region, they are examined by the detector for a predetermined characteristic.
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`Id. Tl 78. Quake teaches that some embodiments may include multiple
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`detection regions and detectors, as well as “a discrimination region or branch
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`Patent9, 126,160 B2
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`point in communication with the main channel and with branch channels,
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`and a flow control responsive to the detector” for sorting droplets.
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`Id. 111] 77,
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`79 (noting that a “plurality of analysis units of the invention may be
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`combined in one device,” and that such a multiplexed system “can be
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`adapted to provide a very high throughput”). Quake further discloses the
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`option of using “a plurality of inlet regions, each of which introduces
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`droplets of a different sample .
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`.
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`. into the main channel.” Id. 11 77.
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`Quake’s droplet extrusion regions “are designed to compartmentalize
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`small droplets of aqueous solution within microfluidic channels filled with
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`oil.” Id. 1[ 3. Specifically, Quake explains
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`[t]he droplet extrusion region generally comprises a junction
`between the sample inlet and the main channel such that a
`pressurized solution of a sample (i.e., a fluid containing a sample
`such as cells, virions or molecules) is introduced to the main
`channel in droplets. Preferably, the sample inlet intersects the
`main channel such that
`the pressurized sample solution is
`introduced into the main channel at an angle perpendicular to a
`stream of fluid passing through the main channel. For example,
`in preferred embodiments, the sample inlet and main channel
`intercept at a T-shaped junction; i.e., such that the sample inlet is
`perpendicular (90 degrees) to the main channel.
`
`Id. 1] 84.
`
`Figure 16B of Quake, reproduced below, shows an exemplary
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`architecture for droplet extrusion regions in a microfabricated device. Id.
`
`11 39.
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`IPR2018-00433
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`Patent 9, 126,160 B2
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`-1603
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`.1606 1604
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`w»
`
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`\_
`FIG. 1613
`hos
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`In Figure 16B, inlet channel 1603 intersects main channel 1605, forming a
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`T-shaped junction. Id. 1111 15, 299—300. As an aqueous solution is
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`pneumatically driven through channel 1603 it is sheared into droplets as it
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`enters the oil stream in main channel 1605. Id. 1111 290, 299—3 00. These
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`droplets then are driven through outlet channel 1604, and may subsequently
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`be routed through different channel architectures to allow individual droplets
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`to be sorted and/or analyzed. Id. 1111 16, 290, 294, 300.
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`Quake explains that, in this process of droplet generation, the required
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`fluids may be loaded into the microfabricated device via separate syringes
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`that are fitted with high-pressure connection fittings.
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`Id. 11 288. “The
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`pressures ofthe different fluids are then adjusted so that their pressures are
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`balanced at the droplet extrusion region.” Id. 11 290. “Droplet extrusion can
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`then be initiated by slightly adjusting the pressure difference between the
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`different fluids” so that the droplet fluid is sheared off at a fixed frequency.
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`Id. Quake explains that this frequency ofdroplet generation “can be readily
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`adjusted by simply adjusting the pressures ofthe individual fluid lines.” Id.
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`2. Dale
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`Dale discloses a vessel for performing microfluidic assays and, in
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`particular, an “assembly for performing micro-fluidic assays [that] includes
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`9
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`IPR2018-00433
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`Patent9, 126,160 B2
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`a micro-fluidic chip with access ports,” microchannels that are in
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`communication with the access ports, and a fluid cartridge that is configured
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`to be coupled with one or more access ports. Ex 1005, Abstract.
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`Figure 1b of Dale is reproduced below:
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`
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`As shown in Figure 1b, cartridge 10 is coupled to micro-fluidic chip 40. Id.
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`1] 28. Cartridge 10 may have internal chambers containing various fluids
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`that are coupled to access ports 44, 46, and 48 of micro-fluidic chip 40 via
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`nozzles 14, 16, and 18 (not numbered in Figure 1b). Id. 111] 29, 32—33.
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`Microchannels extending through microchip 40 are in communication with
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`access ports 44, 46, and 48. Id. 1] 32. Cartridge 10 may include vacuum
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`port 24 connected to a source of negative pressure (i.e., vacuum), and
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`facilitates movement of reaction waste products into a waste chamber. Id.
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`'u 29.
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`3. ChienI
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`Chien I discloses devices, systems, and methods for flexibly and
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`selectively transporting “fluids within microfluidic channels of a
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`microfluidic network by applying, controlling, and varying pressures at a
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`10
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`IPR2018-00433
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`Patent9, 126,160 B2
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`plurality of reservoirs or ports.” Ex. 1006, 2:56—61. Figure 1 of Chien I is
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`reproduced below:
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`
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`As shown in Figure 1, microfluidic system 10 includes microfluidic
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`device 12 coupled to a bank of pressure modulators 14. Id. at 9:43—46.
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`Each pressure modulator is in fluid communication with reservoir 18 of
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`microfluidic device 12 via associated tube 20. Id. at 9:51—52.
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`Figure 2 of Chien I, reproduced below, shows microfluidic device 12
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`(id. at 10:35):
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`
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`Fig. 2
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`Microfluidic device 12 includes an array of reservoirs 18a, 18b, etc. coupled
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`together by microscale channels defining microfluidic network 30. Id.
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`at 10:3 6—38. ChienI explains that the microfluidic devices of the invention
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`11
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`IPR2018-00433
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`Patent 9, 126, 160 B2
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`typically include at least one microscale channel and usually “at least two
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`intersecting microscale channel segments” disposed within a single body
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`structure. Id. at 10:57—61.
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`4. Chien II
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`Chien 11 describes the same embodiment as Chien 1. Pet. 19. Chien 11
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`notes that, although hydrodynamic flow has been used in microfluidic
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`systems, its use may have certain limitations:
`
`The use of external pumps to force liquids directly through
`microfluidic
`channels
`has
`previously
`been
`proposed
`Incorporation of mechanical micro pumps and valves within a
`microfluidic device to move the fluids within a microfluidic
`channel has also been tested. Unfortunately, the flow rate in the
`microfluidic systems is usually of the order of nL s". Accurate
`control of such a tiny flow of an incompressible liquid is
`extremely difficult. Lack of proper control of small pressure
`differences will yield irreproducible and erratic results. A system
`that controls the pressure of a compressible gas at the fluid-air
`interface directly on top of the wells ofthe microfluidic device is
`a more practical design.
`
`Ex. 1035,106.
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`5. Analysis
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`Petitioner contends one of ordinary skill in the art would have found it
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`obvious to combine the teachings of Quake, Dale, Chien I, and Chien II‘1 to
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`form a “Combined System” that includes every limitation of independent
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`claim 1. Pet. 13—14, 22, 27—43. The Combined System, as depicted by
`
`Petitioner, is reproduced below:
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`1‘ We refer to Chien I and Chien II collectively as “Chien.”
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`12
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`
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`”(H
`AL0
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`nufluu“n
`‘
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`x.
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`‘
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`'3'”"
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`IPR2018-00433
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`Patent 9, 126, 160 B2
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`m, 1
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`Id. at 22.
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`To form this Combined System, Petitioner contends an ordinary
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`artisan would have first implemented multiple instances of Quake’s droplet
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`generator on a single chip, such as the one disclosed in Dale, as depicted
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`below:
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` '
`
`FIG- lm
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`\1
`"5
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`Id. at 18—19 (“Quake taken in view of Dale renders obvious the provision of
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`multiple droplet generators on a single microfluidic chip, for multiple
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`reasons”). Once a skilled artisan chose to implement multiple copies of
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`Quake’s droplet generator on a single chip, Petitioner contends this skilled
`
`artisan would have found it obvious to use Chien’s pneumatic manifold and
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`plate design to drive fluids through this parallelized array of droplet
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`generators. Id. at21—22.
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`l3
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`IPR2018-00433
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`Patent 9,126,160 B2
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`Petitioner contends one of ordinary skill in the art would have sought
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`to combine Quake and Dale because parallelization was known to result in
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`higher throughput, the proposed combination would enable multiplexing of
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`different reactions, and implementation of Dale’s parallelization method
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`would constitute the use of a known technique to improve a similar device in
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`the same way. Id. at 18—19. Petitioner further contends that one of ordinary
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`skill in the art would have sought to implement Chien’s multi-reservoir plate
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`and pressure control system in the Combined System because Chien’s
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`system provides increased pressure control and would allow the omission of
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`expensive fluid reservoirs and pumps. Id. at 25—26.
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`Patent Owner argues Petitioner has failed to provide a reasonable
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`explanation as to why one of ordinary skill in thc art would have sought to
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`combine Quake, Dale, and Chien. Prelim. Resp. 28—3 1. Patent Owner
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`asserts Petitioner does not explain why a person of ordinary skill in the art
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`would have taken “just a portion” of Quake’s device and then attempted “to
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`replicate solely that portion in parallel in the single-layered chips of Dale,”
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`or why Chien would have motivated one of ordinary skill in the art to
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`modify Quake to incorporate its fluid drive technique. Id. at 28—29.
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`Upon review of the parties’ arguments and supporting evidence, as
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`well as Dr. Gandhi’s declaration testimony, we determine that Petitioner has
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`not sufficiently demonstrated that one of ordinary skill in the art would have
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`combined Quake, Dale, and Chien to arrive at the subject matter of the
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`challenged claims.
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`a. The Proposed Combination is not Clearly Defined
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`As a preliminary matter, we find the proposed combination of Quake,
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`Dale, and Chien is not clearly defined. Petitioner asserts that it would have
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`14
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`Patent 9, 126,160 B2
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`been “obvious that multiple instances of Quake’s droplet generator should
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`be disposed on a single chip,” as depicted in the figures from Quake and
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`Dale. Pet. 19 (emphases omitted); EL 1003 11 66 (“Thus, in my view it was
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`obvious that multiples of Quake’s emulsion generating units could be
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`arranged on a single plate or chip as shown below. .
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`. .”). From this
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`statement, and based on the Combined System, it appears that Petitioner
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`proposes to parallelize only Quake’s droplet generators on a single chip.
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`Indeed, this is the combination of elements Patent Owner addresses and
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`criticizes in the Preliminary Response. Prelim. Resp. 28—29 (“Why would a
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`POSAtake just a portion of the multi-layered Quake device and attempt to
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`replicate solely that portion in parallel in the single—layered chips of Dale?”).
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`Other portions of the Petition, however, appear to contemplate
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`incorporating the entire Quake design, from inlet to outlet, on the plate of
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`Dale and/or Chien. Pet. 17 (“Because droplets produced by the emulsion
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`generators are transmitted to the analysis units .
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`.
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`. one skilled in the art
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`would have appreciated that high throughput is more readily accomplished
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`using multiple droplet generators”), 33 (citing Ex 1004 111] 71 (discussing
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`the use of a “discrimination region” and associated detection regions in
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`Quake), 77 (discussing the orientation of channels, detection regions, and
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`wells or reservoirs in Quake’s “[s]orter embodiments”)); Ex. 1003 1] 60 (Dr.
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`Gandhi contemplating the use of “multiple droplet generators feeding
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`multiple analysis units” based on Quake’s disclosures). Petitioner’s reliance
`‘4
`on Quake’s analysis units,” “discrimination region,” and “detection
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`regions” renders its proposed combination unclear in View of its
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`representations that only Quake’ s droplet generators would be parallelized.
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`15
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`IPR2018—00433
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`Patent 9, 126,160 B2
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`Petitioner’s vaguely and inconsistently defined combination of
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`elements is not sufficient to allow for a reasoned analysis of the proposed
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`combination or to allow proper consideration of whether one of ordinary
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`skill in the art would have had a reasonable expectation of success in
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`combining the teachings of the prior art references to arrive at the claimed
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`invention. Pet. 26—27 (addressing only whether one of ordinary skill in the
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`art would have had a reasonable expectation of success in including an array
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`of emulsion production units on a single chip). This counsels against
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`institution of review.
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`b. Parallelizz'ng Quake in view ofboth Quake and Dale
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`Petitioner contends that, because it was well known in the art that
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`parallelizing microfluidic circuits increases throughput, one of ordinary skill
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`in the art would have found it obvious to provide a parallel array of Quake’s
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`droplet generators on a single microfluidic chip. Pet. 18 (citing Ex. 1005
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`1144; Ex. 1008 11 20; Ex. 1028,12;Ex. 1012,1—2;Ex. 1013 11‘” 92—93, 239;
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`Ex. 1014 11 75, Fig. 2). Petitioner further contends that, because Quake
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`specifically suggests that providing multiple units on a single chip' enables
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`multiplexed processing of different samples, or the same sample by different
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`processes, one of ordinary skill in the art would have been motivated “to use
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`the technique taught in Dale (parallelization) to improve a similar device
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`(Quake’s microfluidic device) in the same way (permit multiplex
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`processing)” Id. at 19 (citing KSR, 550 US. at 415—421;Ex.~1003 W 61—
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`65).
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`Quake discloses implementing a linear array of channels and a
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`“plurality of analysis units” on a single chip to provide a “multiplex system.”
`Ex. 1004 1] 79 (disclosing that “linear arrays of channels on a single chip,
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`l6
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`Le, a multiplex system, can simultaneously detect and sort a sample by
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`using an array ofphoto multiplier tubes (P MT) for parallel analysis of
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`different channels”). Quake also teaches or suggests providing multiple
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`droplet generators on the chip. Id. 1] 314 (disclosing that embodiments of the
`invention may “contain a plurality of droplet extrusion regions”); Ex. 1003
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`1] 60 (opining that “Quake discloses parallelizing the emulsion generating
`
`units”). Given that Quake already provides for a multiplexed system having
`
`parallelized emulsion generating units, we are not persuaded that one of
`
`ordinary skill in the art would have modified Quake in view of Dale in order
`
`to obtain these same features.
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`Moreover, to the extent Petitioner contends an ordinary artisan would
`
`have sought to incorporate only the droplet generators of Quake on a single
`
`chip, without the analysis units and/or sorting channels, it is not evident why
`
`such a modification would have improved Quake’s device, which is
`
`designed for analyzing and/or sorting biological materials. Ex. 1004 11 4,
`
`Abstract (“A microfluidic device for analyzing and/or sorting biological
`
`materials .
`
`.
`
`. and methods for its use are provided”); Pet. 19 (asserting that
`
`one of ordinary skill in the art would have sought to use Dale’s
`
`parallelization technique “to improve. .
`
`. Quake’smicrofluidic device”).
`
`In view of the foregoing, Petitioner has not demonstrated sufficiently
`
`that one of ordinary skill in the art would have sought to modify Quake in
`
`view of Dale.
`
`0. Use ofChien ’3 Plate and Pressure Control System
`
`As noted above, Quake teaches driving fluids through its system using
`
`syringes pressurized with air. Ex. 1004 11 288. Petitioner provides three
`
`reasons why it contends one of ordinary skill in the art would have sought to
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`17
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`IPR2018-00433
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`Patent 9, 126,160 B2
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`abandon Quake’s fluid drive system and adopt Chien’s multi—reservoir plate
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`and pressure control system. Pet. 25—26.
`
`First, Petitioner contends one of ordinary skill in the art would have
`
`abandoned Quake’s pressurized air and syringe system in favor of “Chien’s
`
`multi-reservoir plate and pressure control system,” in View of Chien’s
`
`disclosure that “the use of external pumps to force liquids directly through
`”3
`
`microfluidic channels’ produces ‘irreproducible and erratic results
`
`and in
`
`view of Chien’s disclosure that the use of a compressible gas at the fluid-air
`
`interface on the top of the wells “is a more practical design.” Pet. 25
`
`(quoting Ex. 1035, 106).
`
`Consistent with Petitioner’s assertions, Chien indicates that accurate
`
`control of flow rate in microfluidic systems is extremely difficult and that a
`
`lack ofproper control of small pressure differences will yield irreproducible
`
`and erratic results. Ex. 1035, 106. Chien does not disclose, however, that
`
`all external pumps yield irreproducible and erratic results in microfluidic
`
`systems, and neither Petitioner nor Dr. Gandhi asserts that Quake’s system
`
`suffers from a lack of pressure control or from irreproducible and erratic
`
`results. Indeed, any suggestion that Quake’s system lacks sufficient pressure
`
`control would appear to be expressly contradicted by Quake itself, which
`
`explains that the frequency of droplet production is “readily adjusted by
`
`simply adjusting the pressures of the individual fluid lines.” Ex. 1004
`
`W 290, 296 (“As demonstrated here, the size and frequency of droplets
`
`formed in a main channel of such devices may be precisely controlled by
`
`modifying the relative pressure of the incompatible fluids (e.g., water and
`
`oil) in the device”); see also id 1] 79 (“Microfluidic pumps and valves are a
`
`preferred way of controlling fluid and sample flow.”). Thus, Petitioner has
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`18
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`IPR2018-00433
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`Patent 9, 126,160 B2
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`not demonstrated sufficiently that one of ordinary skill in the art would have
`
`been prompted to use Chien’ s plate and pressure control system to drive
`
`‘
`
`fluid droplet generation in the emulsion generators of Quake.
`
`Second, Petitioner argues that modifying Quake to use Chien’s fluid
`
`drive system would allow an ordinary artisan to omit Quake’s extemal fluid
`
`reservoirs and pumps, which Dr. Gandhi testifies are expensive and need
`
`periodic cleaning. Pet. 26; Ex 1003 1] 75 (“Eliminating tubing and pumps
`
`reduces cost and greatly reduces the risk of contamination”). We are not
`
`persuaded by this argument because, as noted by Patent Owner, Quake
`
`discloses that “the sorting devices ofthe invention are inexpensive and
`
`disposable, which obviates the need for cleaning and sterilization and
`
`prevents cross-contamination.” Ex. 100411 14; Prelim. Resp. 30.
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`Third, Petitioner argues that a skilled artisan would have been
`
`“strongly inclined to improve the Quake device” by implementing Chien’s
`
`fluid drive system, because “the syringe pumps, tubing, and wells of the
`
`Chien device were configured in a similar manner to Quake’s.” Pet. 26. As
`
`Patent Owner notes, however, a general similarity in structure or design
`
`between two devices is not a reason, in itself, to combine them. Prelim.
`
`Resp. 30—3 1. Thus, we are not persuaded that an alleged similarity in
`
`configuration is sufficient to demonstrate that one of ordinary skill in the art
`
`would have been motivated to combine Quake and Chien.
`
`In view of the foregoing, Petitioner has not explained sufficiently why
`
`one of ordinary skill in the art would have sought to implement multiple
`
`versions of Quake’s droplet generators on the plate of Dale and/or Chien, or
`
`why an ordinary artisan would have then sought to use Chien’s pressure
`
`control system to drive fluids through Quake’s droplet generators.
`
`19
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`Accordingly, Petitioner has not demonstrated a reasonable likelihood that
`
`the subject matter of independent claim 1 would have been obvious over the
`
`combined disclosures of Quake, Dale, Chien I, and Chien 11.
`
`Because claims 3, 4, 6, 7 and 15—19 depend from claim 1, and
`
`because Petitioner’s arguments and evidence with respect to these claims do
`
`not remedy the defects identified above, Petitioner also has not demonstrated
`
`a reasonable likelihood that these claims would have been obvious over the
`
`combined disclosures of Quake, Dale, Chien I, and Chien II.
`
`C. Remaining Grounds Based on Quake, Dale, Chi en 1, Chi en 11, and
`either Hsieh, Modli n, Soane, or Beer
`
`Petitioner’s remaining challenges to claims 2, 5, and 8—14 (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 Quake, Dale, Chien I, and Chien 11.
`
`Pet. 54—73. Petitioner’s arguments with respect to the remaining challenges
`
`do not resolve the deficiencies noted above with respect to the combined
`
`teachings of Quake, Dale, Chien I, and Chien 11. Accordingly, Petitioner has
`
`not demonstrated a reasonable likelihood that independent claim 20 or
`
`dependent claims 2, 5, and 8—14, and 21 would have been obvious over the
`
`combined teachings of Quake, Dale, Chien I, and Chien II with either Hsieh,
`
`Modlin, Soane, or Beer.
`
`111.
`
`CONCLUSION
`
`For the reasons discussed above, Petitioner has not demonstrated a
`
`reasonable likelihood that it would prevail with respect to at least one claim
`
`20
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`IPR2018-Q0433
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`Patent 9, 126,160 B2
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`challenged in the Petition. Accordingly, we do not institute interpartes
`
`review.
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`IV. ORDER
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`It is hereby,
`
`ORDERED that no interpartes review is instituted.
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`21
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`PETITIONER:
`
`Greg Gardella
`ggardellaganrdellaggace.com
`
`Dianna DeVore
`
`ddevore@convergentlaw.com
`
`Sarah Brashears
`
`sbrashears@convergentlaw.com
`
`PATENT OWNER:
`
`Jim Glass
`
`jirnglass@guinnemanuel. com
`
`Kevin Johnson
`
`kevinjohnson@guinnemanuel.com
`
`David Bilsker
`
`davidbilsker
`
`uinnemanuel.com
`
`Joseph Milowic III
`josephmilowic@guinnemanuel.com
`
`Nancy Zhang
`nzhan ws
`
`.com
`
`22
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`
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`IPR2018-00433
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`Patent 9, 126, 160 B2
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`23
`
`
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