`
`571-272-7822
`Date Entered: March 30, 2017
`
`
`
`
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`
`
`ELEKTA, INC.
`Petitioner,
`
`v.
`
`
`
` VARIAN MEDICAL SYSTEMS, INC.,
`Patent Owner.
`____________
`
`Case IPR2016-01902
`Patent 6,888,919 B2
`____________
`
`
`
`
`Before BRIAN J. McNAMARA, PATRICK BOUCHER, and
`GARTH BAER, Administrative Patent Judges.
`
`McNAMARA, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
`
`
`
`
`
`
`
`
`IPR2016-01902
`Patent 6,888,919 B2
`
`
`
`BACKGROUND
`
`Elekta, Inc. (“Petitioner”) filed a petition, Paper 1 (“Pet.”), to institute
`
`an inter partes review of claims 1–4, 9, 11, and 13 (the “challenged claims”)
`
`of U.S. Patent No. 6,888,919 B2 (“the ’919 Patent”). 35 U.S.C. § 311.
`
`Varian Medical Systems, Inc. (“Patent Owner”) timely filed a Preliminary
`
`Response, Paper 6 (“Prelim. Resp.”), contending that the petition should be
`
`denied as to all challenged claims. We have jurisdiction under 37 C.F.R.
`
`§ 42.4(a) and 35 U.S.C. § 314, which provides that an inter partes review
`
`may not be instituted unless the information presented in the Petition “shows
`
`that there is a reasonable likelihood that the petitioner would prevail with
`
`respect to at least 1 of the claims challenged in the petition.” Having
`
`considered the arguments and the associated evidence presented in the
`
`Petition and the Preliminary Response, for the reasons described below, we
`
`institute inter partes review of all the challenged claims (claims 1–4, 9, 11,
`
`and 13).
`
`
`
`REAL PARTIES IN INTEREST
`
`Petitioner identifies itself and Elekta AB, Elekta Instrument AB, and
`
`Elekta Holdings U.S., Inc., as real parties-in-interest. Pet. 55.
`
`PENDING LITIGATION
`
`The Petition states that Patent Owner asserted the ’919 patent in
`
`Varian Medical Systems, Inc. v. Elekta AB et al., No. 15-871-LPS, filed on
`
`September 25, 2015, and served on September 29, 2015. Pet. 55.
`
`
`
`2
`
`
`
`
`
`IPR2016-01902
`Patent 6,888,919 B2
`
`
`
`THE ’919 PATENT (EXHIBIT 1001)
`
`The invention in the ’919 patent concerns an X-ray and electron
`
`radiotherapy machine for use in radiation treatment applications, e.g.,
`
`oncology radiation therapy. Ex. 1001, 1:7–10. The ’919 Patent states that
`
`due to natural variations in the human body and changes in tumors during
`
`treatment, one challenge in radiotherapy is accurate positioning of the tumor
`
`in the radiation field. Id. at 1:28–39. High energy megavolt radiation used
`
`for therapeutic treatment produces low contrast images that are used
`
`primarily for confirming the target volume has been radiated. Id. at 1:40–49.
`
`Low energy X-rays, typically 125 kV peak, are more useful for targeting or
`
`diagnostic information because they provide contrast that is far superior to
`
`that available in images generated from therapeutic megavolt electron
`
`beams. Id. at 1:49–64. A common treatment approach has been to use two
`
`separate imagers, each sensitive to an energy range, i.e., a low energy imager
`
`for diagnostic purposes and to provide accurate targeting and a high energy
`
`therapeutic imager to confirm the target has been radiated. Id. at 1:57–67.
`
`Figure 1A, labelled “Prior Art,” shows a radiotherapy machine with a
`
`therapeutic radiation source directed to a therapeutic imager and a single
`
`diagnostic radiation source directed to a diagnostic imager. Id. at 2:19–32.
`
`Figure 1B, also labelled “Prior Art,” shows a radiotherapy machine with a
`
`therapeutic radiation source capable of propagating high energy therapeutic
`
`energy to a therapeutic imager and, attached to support structures, two
`
`diagnostic radiation sources at off angles from the therapeutic radiation
`
`source, each in line with an imager to receive the radiation. Id. at 2:43–42.
`
`The entire structure of radiation sources and imagers can be pivoted together
`
`by a common base. Id. at 2:43–44. The ’919 Patent notes that, because 360
`
`
`
`3
`
`
`
`IPR2016-01902
`Patent 6,888,919 B2
`
`
`degrees of rotation of the support structure holding the radiation source is
`
`required to radiate the target volume from different directions without
`
`turning the patient over, there is limited space for the various machine
`
`components. Id. at 2:44–61. The ’919 Patent addresses the space limitations
`
`with a radiotherapy machine structure that uses a multiple-energy imager.
`
`Id. at 3:3–7, 11–14. None of the challenged claims, however, is limited to a
`
`multiple energy imager.
`
`An annotated version of Figure 2A of the ’919 Patent labelling the
`
`parts of a radiotherapy machine embodiment that has its therapeutic and
`
`diagnostic energy sources on separate C-shaped arms with one arm having a
`
`smaller radius of curvature nestled within the other arm is shown below. Ex.
`
`1001, Fig. 2A, 5:12–14, 43–46.
`
`
`
`4
`
`
`
`IPR2016-01902
`Patent 6,888,919 B2
`
`
`
`Annotated Version of Figure 2A of the ’919 Patent
`
`
`
`In Figure 2A, therapeutic radiation source 202 is mounted on first arm
`
`(first gantry) 206, and diagnostic radiation source 204 is mounted on second
`
`arm (second gantry) 208 nestled within the first arm, with both arms on a
`
`common pivot axis 210 around which the arms can pivot independently. Id.
`
`at 5:12–18. The inner arm (second gantry) can extend and retract diagnostic
`
`radiation source 204 for positioning and clearance. Id. at 18–20. The first
`
`arm is attached pivotally to base stand 216 to permit 360 degree rotation of
`
`therapeutic energy source 204. Multiple-energy imager 212 can be attached
`
`at an articulating end 220 of inner arm (second gantry) 208 that is opposite
`
`
`
`5
`
`
`
`IPR2016-01902
`Patent 6,888,919 B2
`
`
`from end 218 where diagnostic radiation source 204 is mounted to articulate
`
`multiple energy imager 212 into alignment with either therapeutic radiation
`
`source 202 or diagnostic radiation source 204. Id. at 5:25–30. Articulating
`
`end 220 of inner arm 208 can contain any number of pivot joints (three pivot
`
`joints 226, 227, 228 are shown) from single plane pivots to ball joints having
`
`360 degrees of rotation so that multiple-energy imager 212 can be placed in
`
`alignment with and at a distance from radiation sources 202 and 204 with
`
`treatment target volume 224 positioned in between them. Id. at 5:58–6:4.
`
`Articulating end 220 of arm 208 can also retract the multiple-energy imager
`
`into retracted position 212.
`
`Annotated Figure 2B below illustrates an alternative embodiment in
`
`which therapeutic radiation source 202 and diagnostic radiation source 204
`
`are placed adjacent to each other on the first gantry. Id. at 6:12.
`
`
`
`6
`
`
`
`
`
`IPR2016-01902
`Patent 6,888,919 B2
`
`
`Annotated Version of Figure 2B of ’919 Patent
`
`In this embodiment, the second gantry (inner arm) can be attached to
`
`the pivot axis with an opposite end attached to articulating multiple-energy
`
`imaging unit 212, so that it can be rotated to align the multiple imaging unit
`
`212 with radiation source 202 or 204 with target volume 224 positioned in
`
`between them. Id. at 6:16–21.
`
`Figures 3A–3E of the ’919 Patent illustrate various positions of the
`
`radiotherapy machine during operation.
`
`
`
`ILLUSTRATIVE CLAIMS
`
`Independent claims 1 and 13, reproduced below, are illustrative:
`
`1. An apparatus comprising:
`a first therapeutic radiation source attached to a first
`gantry;
`at least one second radiation source;
`a second gantry that is rotatable, the second gantry is
`attached to the first gantry; and
`an imager attached to an articulable end of the second
`gantry.
`
`13. An apparatus comprising:
`a first radiation source attached to a first gantry;
`at least one second radiation source;
`a second gantry that is rotatable, wherein the second
`gantry is capable of extending and retracting the
`second radiation source attached to the second
`gantry; and
`an imager attached to an articulable end of the second
`gantry.
`
`
`
`
`
`7
`
`
`
`IPR2016-01902
`Patent 6,888,919 B2
`
`
`Unlike claim 1, claim 13 does not limit the first radiation source to a
`
`“therapeutic” radiation source and does not limit the second gantry to one
`
`that is “attached to the first gantry.” Claim 13 also differs from claim 1 in its
`
`recitation that the second gantry that is rotatable “is capable of extending
`
`and retracting the second radiation source attached to the second gantry.”
`
`Claim 1 does not limit the attachment of the second radiation source.
`
`Challenged claim 2 depends from claim 1 and recites that the second
`
`radiation source is attached to the second gantry. Challenged claim 3
`
`depends from claim 1 and recites that the therapeutic radiation source
`
`propagates therapeutic energy at a first level; challenged claim 4 depends
`
`from claim 1 and recites that the second radiation source propagates
`
`diagnostic energy at a second energy level. Challenged claim 9 recites that
`
`the articulable end of claim 1 comprises at least one pivot point between the
`
`second gantry and the imager. Challenged claim 11 recites that the
`
`articulable end of claim 1 is capable of folding the imager against the second
`
`gantry.
`
`
`
`
`
`ART CITED IN PETITIONER’S CHALLENGES
`
`Petitioner cites the following references in its challenges to
`
`patentability:
`
`Reference
`U.S. Patent No.
`5,233,990 issued on
`Aug. 10, 1993
`U,S. Patent No.
`6,325,537 B1 issued on
`Dec. 4, 2001
`
`Designation
`
`Exhibit No.
`
`Barnea
`
`Ex. 1012
`
`Watanabe
`
`Ex. 1004
`
`
`
`8
`
`
`
`IPR2016-01902
`Patent 6,888,919 B2
`
`
`
`U.S. Patent No.
`4,426,725 issued on
`Jan. 17, 1984
`
`
`
`Grady
`
`Ex. 1013
`
`CHALLENGES ASSERTED IN PETITION
`
`Claims
`
`Statutory Basis
`
`1–4, 9, 11, 13
`
`35 U.S.C. § 103
`
`13
`
`35 U.S.C. § 102
`
`Challenge
`Obvious over Barnea
`in view of Watanabe
`Anticipated by Grady
`
`CLAIM CONSTRUCTION
`
`We interpret claims of an unexpired patent using the broadest
`
`reasonable construction in light of the specification of the patent in which
`
`they appear. See 37 C.F.R. § 42.100(b); Cuozzo Speed Techs. LLC v. Lee,
`
`136 S. Ct. 2131, 2144–46 (2016). In applying a broadest reasonable
`
`construction, claim terms generally are 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. See In re Translogic Tech., Inc., 504 F.3d
`
`1249, 1257 (Fed. Cir. 2007). Any special definition for a claim term must
`
`be set forth in the specification with reasonable clarity, deliberateness, and
`
`precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994). Petitioner
`
`has submitted, as supplemental information, claim constructions adopted by
`
`the district court in Varian Medical Systems, Inc. v. Elekta AB et al., No. 15-
`
`871-LPS (D. Del.). Petitioner’s Stipulated Motion to File Supplemental
`
`Information (Paper 7), Ex. 1016. Although the district court does not apply
`
`the broadest reasonable construction standard, we consider the court’s
`
`instructions as informative to our analysis of the terms at issue in this
`
`proceeding.
`
`
`
`9
`
`
`
`IPR2016-01902
`Patent 6,888,919 B2
`
`
`Petitioner proposes constructions for the terms “gantry,” “an
`
`articulable end of the second gantry,” and “rotatable.” Pet. 18–22. Patent
`
`Owner proposes constructions for “gantry,” “a second gantry that is
`
`rotatable,” “articulable end [of the second gantry],” and “extending and
`
`retracting [the second radiation source].” Prelim. Resp. 21–34.
`
`Gantry
`
`Petitioner proposes that we construe “gantry,” as used in the claims of
`
`the ’919 Patent, to mean “arm.” Pet. 18. Patent Owner proposes that we
`
`construe “gantry” to have its plain and ordinary meaning or to mean
`
`“structure that holds radiation source(s) and/or imager(s).” Prelim. Resp. 21.
`
`Arguing that the patentee acts as his own lexicographer, Petitioner cites the
`
`Specification’s description of arms in the radiotherapy machine and its use
`
`of “gantry” in parentheticals as evidence that the patentee intended “gantry”
`
`to mean “arm.” Id. at 18–19. Patent Owner contends that in the relevant art
`
`“gantry” is used for the component of a radiotherapy system that holds the
`
`therapeutic radiation source and any imagers or diagnostic sources and is not
`
`limited to a specific type of structure or component. Prelim. Resp. 21 (citing
`
`Ex. 2001, Declaration of Dr. Kenneth P. Gall (“Gall Dec.”) ¶ 67).
`
`According to Patent Owner’s expert, Dr. Gall, in the relevant field,
`
`“gantry” and “arm” are not used interchangeably. Ex. 2001, Gall Dec. ¶ 67.
`
`Dr. Gall cites several other patents that use the term gantry to support his
`
`testimony that the terms “gantry” and “arm” are not used interchangeably in
`
`the art. Id. ¶¶ 70–72. Dr. Gall’s testimony, however, indicates that there is
`
`no consistent use of the terms in the art. In U.S. Patent No. 5,448,607 it is
`
`not clear that the arms identified by Dr. Gall are part of the “gantry
`
`assembly.” Id. ¶ 70. In U.S. Patent No. 6,614,036, Dr. Gall does not state
`
`
`
`10
`
`
`
`IPR2016-01902
`Patent 6,888,919 B2
`
`
`how or whether the “swing arm” he identifies is related to the gantry. Id. ¶
`
`71. In U.S. Patent No. 5,727,554, the “arms” identified by Dr. Gall appear
`
`to be integral parts of the gantry. Id. ¶ 72. From these examples, Dr. Gall
`
`concludes that the term “gantry” has a consistent meaning in the art, but the
`
`term “arm” does not. Id. Based on Dr. Gall’s testimony, however, it
`
`appears that neither the term “gantry” nor the term “arm” has a consistent
`
`meaning in the art. Thus, we focus our inquiry on the ordinary meaning of
`
`the terms and how they are used in the Specification.
`
`Notwithstanding the parentheticals in the ’919 Patent referring to
`
`“arms” as “gantries” (Ex. 1001, 5:5–26), Dr. Gall states that “gantry” and
`
`“arm” are not used interchangeably in the ’919 Specification. Id. ¶¶ 68–69.
`
`Dr. Gall testifies that the term “arm” has no consistent meaning and appears
`
`only in the context of particular embodiments reflected in Figures 2A and
`
`2B and claims 24 and 25 to indicate that the arms described in those
`
`embodiments are gantries. Id. However, the embodiments in Figures 2A
`
`and 2B are the only embodiments shown in the ’919 Specification—the
`
`Specification does not identify Figures 3A–3E as an embodiment other than
`
`those shown in Figures 2A and 2B. In the context of medical applications,
`
`we have located the following dictionary definitions of “gantry:”
`
`(i) A frame housing the x-ray tube, collimators, and detectors in a
`CT machine, with a large opening into which the patient is
`inserted; a mechanical support for mounting a device to be
`moved in a circular path. Farlex Partner Medical Dictionary.
`(2012). Retrieved March 20, 2017, from http://medical-
`dictionary.thefreedictionary.com/gantry
`
`(ii) A device—sometimes huge—for rotating a radiotheraphy
`apparatus around the patient to treat for cancer from different
`angles. Segen’s Medical Dictionary. (2011). Retrieved March
`20, 2017, from http://medical-dictionary.
`
`
`
`11
`
`
`
`IPR2016-01902
`Patent 6,888,919 B2
`
`
`thefreedictionary.com/gantry
`
`(iii) A frame housing the x-ray, collimators, and detectors in a CT
`machine, and linear accelerator with a large opening into which
`the patient is inserted; a mechanical support for mounting a
`device to be moved in a circular path. Medical Dictionary for
`the Health Professions and Nursing. (2012). Retrieved March
`20, 2017, from http://medical-dictionary.
`thefreedictionary.com/gantry
`
`(iv) A name for a couch or table used in a CT scan. The patient lies
`on the gantry while it slides into the x-ray scanner portion.
`Gale Encyclopedia of Medicine. (2008). Retrieved March 20,
`2017, from http://medical-dictionary.
`thefreedictionary.com/gantry
`
`See Ex. 3001. Definition (iv) above does not appear consistent with
`
`the use of “gantry” in the Specification of the ’919 patent. Definitions (i)
`
`and (iii) state that a gantry includes a frame housing X-rays, collimators and
`
`detectors. Definition (ii) states that a gantry is a device for rotating a
`
`radiotherapy apparatus around a patient. Consistent with these above
`
`definitions, claims 1 and 13 recite that a first radiation source is attached to
`
`the first gantry. However, neither claim 1 nor claim 13 recites a radiation
`
`source attached to the second gantry. In addition, in the embodiment in
`
`Figure 2B the diagnostic and therapeutic radiation sources are both mounted
`
`on the first gantry, but there is no radiation source on the second gantry.
`
`Thus, as used in the Specification, it does not appear that the term gantry
`
`requires that the structure hold a radiation source, as proposed by Patent
`
`Owner. In addition, although, independent claims 1 and 13 specifically
`
`recite that an imager is attached to a second gantry, claims 1 and 13 do not
`
`recite, nor does the Specification describe, an imager attached to the first
`
`gantry. Thus, the ’919 patent does not use the term “gantry” to describe a
`
`
`
`12
`
`
`
`IPR2016-01902
`Patent 6,888,919 B2
`
`
`device that necessarily holds a radiation source or both an energy source and
`
`an imager, as proposed by Patent Owner.
`
`Definitions (i) and (ii) state that a gantry includes a mechanical
`
`support for moving a device in a circular path; definition (iii) states a gantry
`
`is a device for rotating a radiotherapy apparatus. Both claims 1 and 13 recite
`
`that the second gantry is rotatable. Neither claim 1 nor claim 13 recites
`
`explicitly that the first gantry is rotatable, although claim 1 recites that the
`
`first gantry is attached to the second gantry. In its argument concerning the
`
`term “rotatable” Patent Owner states “it is important to distinguish between
`
`what makes a component a ‘second gantry’ that is rotatable, rather than a
`
`‘first gantry.’” Prelim. Resp. 28.
`
`Neither claim 1 nor claim 13 limits the gantry to any particular shape
`
`or size. Thus, the only consistent use of the term “gantry” in the
`
`Specification appears to be a frame or arm to which either an energy source
`
`or an imager can be attached. Thus, for purposes of this decision, we apply
`
`this construction as the meaning of “gantry.” Our construction is similar to
`
`that adopted by the district court, i.e., “structure that is designed to hold
`
`radiation sources(s) and/or imager(s).”
`
`An articulable end [of the second gantry]
`
`Petitioner proposes that this term be construed to mean “an end
`
`portion of the second gantry that has jointed segments.” Pet. 19. Petitioner
`
`cites statements in the specification that the articulable end can contain pivot
`
`points, including single plane pivots and ball joints. Id. Petitioner also cites
`
`a dictionary that defines “articulate” to mean jointed, united by a joint, or to
`
`become united or connected by or as if by a joint. Id. (citing Ex. 1009,
`
`Merriam-Webster Collegiate Dictionary). Patent Owner proposes that this
`
`
`
`13
`
`
`
`IPR2016-01902
`Patent 6,888,919 B2
`
`
`term be construed to mean “the jointed end of the [second gantry] that is
`
`moved in and out of an operative position through pivoting.” Prelim. Resp.
`
`29–31. Patent Owner contends that the ’919 patent does not mention
`
`segments and does not describe a need for multiple segments. Id. at 29–30.
`
`Patent Owner acknowledges that the use of pivot points in some cases may
`
`require multiple segments, but argues that multiple segments are not a
`
`limitation of the claims. Id. at 30. Patent Owner contends that the term
`
`“operative position” in its proposed construction, although not used in the
`
`Specification, captures the essence of the invention and synthesizes the
`
`various intrinsic descriptions and depictions of what comprises an articulable
`
`end. Id.
`
`The district court construed this term to mean “the jointed end of the
`
`[second gantry].” Ex. 1016, 1. The Specification states that the inner arm
`
`22 “can articulate the multiple-energy imaging unit 212 into alignment with
`
`either radiation source 202 or 204.” Ex. 1001, 5:27–29. In performing this
`
`function, the articulating end can pivot the multiple-energy imaging unit
`
`along two independent axes in a plane, or ball joints can be used to provide
`
`360 degrees of rotation for positioning the imaging unit. Id. at 5:58–64. The
`
`translatable portion of the articulating joint can also be a set of sliding
`
`mechanisms that include well known gears and motors. Id. at 5:64–67.
`
`Thus, applying the broadest reasonable interpretation, we do not limit this
`
`term to a jointed end.
`
`Claims 1 and 13 recite an imager attached to an articulable end of the
`
`second gantry. The “articulable end” limitation of claims 1 and 13 recites a
`
`feature of the gantry, rather than the function of placing the imager into and
`
`out of positions that may or may not be operative positions of the imager.
`
`
`
`14
`
`
`
`IPR2016-01902
`Patent 6,888,919 B2
`
`
`The words “of the second gantry” establishes the location of the articulable
`
`end. Therefore, in view of the dictionary definition of “articulate” and the
`
`description in the Specification of planar motion or rotation, we construe the
`
`limitation “an articulable end” as an end of the second gantry that includes a
`
`structure permitting at least one of planar or rotational motion. We note
`
`that a jointed end would conform to this construction.
`
`Rotatable/a second gantry that is rotatable
`
`Citing a dictionary definition of “rotate,” Petitioner proposes that we
`
`give the term “rotatable” its plain and ordinary meaning and construe the
`
`term to mean “configured to revolve on an axis.” Pet. 20–22. Patent Owner
`
`proposes that we construe the entire term “a second gantry that is rotatable”
`
`to mean a “second gantry that is configured to revolve around a target
`
`volume on its pivot axis.” Prelim. Resp. 25–29. Patent Owner argues that
`
`the Specification describes rotating the gantry to position either the
`
`therapeutic or diagnostic radiation source into alignment with the target
`
`volume, as distinguished from other types of rotation, such as articulation.
`
`Id. at 26–27. Patent Owner further argues that the claims recite only that the
`
`second gantry is rotatable and analogizes to a Ferris wheel in which the
`
`wheel is both rotating and rotatable, but a person riding the Ferris wheel is
`
`rotating, but not rotatable independently about the center axis. Id. at 28.
`
`None of the features Patent Owner argues is recited in the claims. Claims 1
`
`and 13 recite only that the second gantry is rotatable. The claims recite a
`
`structure that does not specify or limit the rotation to any particular axis.
`
`The claims do not specify any position of the second gantry or any function
`
`that requires a construction such as that urged by Patent Owner. In view of
`
`the absence of claim language that imposes any further limitation, we
`
`
`
`15
`
`
`
`IPR2016-01902
`Patent 6,888,919 B2
`
`
`construe the term “rotatable” to mean a structure that is capable of revolving
`
`about an axis. Our construction is similar to that adopted by the district
`
`court, i.e., “[gantry] that is configured to revolve about an axis.” Ex. 1016,
`
`1. We have already construed “gantry” to mean a frame having an arm to
`
`which either an energy source or an imager can be attached. Thus, we
`
`construe “a second gantry that is rotatable” to mean a frame or arm to which
`
`either an energy source or an imager can be attached, the structure being
`
`capable of revolving about an axis.
`
`Extending and retracting [the second radiation source]
`
`Patent Owner proposes that this term be construed to mean “moving
`
`the position of [the second radiation source] into and out of alignment with
`
`the target volume.” Prelim. Resp. 31. Patent Owner argues that “extend”
`
`and “retract” do not refer to just any direction but refer to the movement of
`
`the second diagnostic radiation source in and out of an operative position.
`
`Id. at 32. According to Patent Owner, the ’919 Patent makes clear in its
`
`discussion that “extend” and “retract” are for the purpose of placing the
`
`source and imager in alignment with the target volume in order to image the
`
`target volume. Id. (citing Ex. 1001, 3:7–10). Claim 13, where this language
`
`appears, does not impose any such limitations. Claim 13 recites only a
`
`rotatable second gantry that “is capable of extending and retracting the
`
`second radiation source attached to the second gantry.” Patent Owner’s
`
`proposed construction reads into the claims a limitation as to the specific
`
`direction of extension and retraction. We do not read such a limitation into
`
`the claims and apply to the terms “extending” and “retracting” their ordinary
`
`meaning.
`
`
`
`
`
`16
`
`
`
`IPR2016-01902
`Patent 6,888,919 B2
`
`
`ANALYSIS OF PETITIONER’S PRIOR ART CHALLENGES
`
`A claim is unpatentable under 35 U.S.C. § 102 if a prior art reference
`
`discloses every limitation of the claimed invention, either explicitly or
`
`inherently. Glaxo Inc. v. Novopharm Ltd., 52 F.3d 1043, 1047 (Fed. Cir.
`
`1995); see MEHL/Biophile Int’l Corp. v. Milgraum, 192 F.3d 1362, 1365
`
`(Fed. Cir. 1999) (“[t]o anticipate, a single reference must teach every
`
`limitation of the claimed invention”; any limitation not explicitly taught
`
`must be inherently taught and would be so understood by a person
`
`experienced in the field); In re Baxter Travenol Labs., 952 F.2d 388, 390
`
`(Fed. Cir. 1991) (the dispositive question is “whether one skilled in the art
`
`would reasonably understand or infer” that a reference teaches or discloses
`
`all of the elements of the claimed invention).
`
`A patent claim is unpatentable under 35 U.S.C. § 103(a) if the
`
`differences between the claimed subject matter and the prior art are such that
`
`the subject matter, as a whole, would have been obvious at the time the
`
`invention was made to a person having ordinary skill in the art to which said
`
`subject matter pertains. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
`
`(2007). The question of obviousness is resolved on the basis of underlying
`
`factual determinations including: (1) the scope and content of the prior art;
`
`(2) any differences between the claimed subject matter and the prior art;
`
`(3) the level of ordinary skill in the art; and (4) objective evidence of
`
`nonobviousness. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
`
`Claims 1– 4, 9, 11 and 13 as Obvious Over Barnea in View of
`Watanable
`
`Barnea discloses a method and apparatus for producing a diagnostic
`
`image so that required doses of radiation can be delivered to a target volume.
`
`Ex. 1012, 1:8–13. Barnea discloses X-ray tube 22 mounted on support
`
`
`
`17
`
`
`
`IPR2016-01902
`Patent 6,888,919 B2
`
`
`bracket 24 on the bottom side of gantry 4 positioned so the axis of the X-ray
`
`beam is coaxial with that of the treatment beam emitted by linac head 2. Ex.
`
`1012, 6:20–25. Bracket 25 mounted to gantry 4 supports detector 26
`
`between the patient and linac head, so that detector 26 may be exposed to
`
`either the high energy beam produced by the linac head or to the energy X-
`
`rays produced by X-ray tube 22, or both simultaneously. Id. at 6: 25–33.
`
`Barnea states:
`
`the heart of this invention lies in the recognition that verification
`of the correct position of a patient during treatment can be
`achieved by placing a detector between the treatment beam
`source and the patient, and placing an x-ray tube along the axis
`of the treatment beam. Given the position of the various
`components, a fixed geometrical relationship exists that permits
`the direct construction of verification images for immediate use
`during treatment.
`
`Id. at 6:4–13. Referencing Figure 3, Barnea discloses that for a given
`
`configuration of equipment the relationship between any point in the image
`
`created by the X-ray and the location of the same point in the corresponding
`
`image seen on the detector by the therapeutic beam is linear and fixed, so
`
`that one can be obtained from the other by a simple parallax correction. Id.
`
`at 6:65–7:4. “Therefore, the field of view of the therapeutic beam on the
`
`detector can be correlated to the image projected on the plane by the
`
`diagnostic beam by a simple computation, and the two fields of view can be
`
`compared for verification purposes.” Id. at 7:4–9.
`
`Watanabe discloses an X-ray diagnostic apparatus that differs from
`
`prior art systems by incorporating into the structure a C-shaped arm with an
`
`X-ray generator at one end and a planar X-ray detector at the other end. Ex.
`
`1004, 5:49–60. A holder having rollers for clamping a rail provided on a
`
`rear or side surface of the C-shaped arm is connected to the support column
`
`
`
`18
`
`
`
`IPR2016-01902
`Patent 6,888,919 B2
`
`
`fixed to the floor or ceiling, so as to be rotatable about the major axis. Id. at
`
`6:27–34. The direction of the X-ray generator is varied in association with
`
`the position of the X-ray detector by controlling a rotary mechanism for
`
`holding the X-ray generator and a link mechanism having two arms for
`
`holding the X-ray detector, so that the X-ray detector is always opposed to
`
`the X-ray generator. Id. at 6:3–10.
`
`As to claims 1 and 13, Petitioner cites Barnea’s linear accelerator
`
`(linac) head 2 mounted on an L-shaped arm gantry 4, having a source of
`
`therapeutic radiation output to treat a patient, and its verification apparatus
`
`20 having X-ray source 22 and imager 26 as disclosing the apparatus recited
`
`in the preamble, a first therapeutic radiation source attached to a first gantry,
`
`and a second radiation source, as claimed. Pet. 25–27, 41.
`
`As to claim 1, Petitioner cites Barnea’s support bracket 25 as the
`
`claimed second gantry, noting that bracket 25 constitutes an arm mounted on
`
`gantry 4 that supports imager 26. Id. at 28. Petitioner also notes Barnea’s
`
`explanation that gantry 4 is movable to rotate about a pivot point and that
`
`because bracket 25 is attached to gantry 4, bracket 25 also rotates about the
`
`pivot point. Id. Thus, according to Petitioner, Barnea discloses the second
`
`gantry that is rotatable and attached to the first gallery, as recited in claim 1.
`
`Id. at 28–29. The figure below is a reproduction of an annotated figure in
`
`the Petition showing Petitioner’s designation of elements in Barnea as
`
`compared to claim1 of the ’919 patent.
`
`
`
`
`
`19
`
`
`
`IPR2016-01902
`Patent 6,888,919 B2
`
`
`
`Petitioner’s Comparison of Figure 2 of Barnea
`To Limitations of Claim 1
`
`
`
`Id. at 29. Patent Owner reproduces this same Figure, but crosses out
`
`Petitioner’s designation of “Second Gantry” and replaces it with the term
`
`“Bracket,” as used in Barnea. Prelim. Resp. 45. Patent Owner also notes
`
`that Barena employs a verification apparatus with multiple arms, i.e., arm 26
`
`for the imager and arm 24 for the X-ray radiation source. Thus, Patent
`
`Owner contends that a person of ordinary skill would not have considered
`
`bracket 25 in Barnea to be a “gantry” as that claim term is properly
`
`construed. Id. at 45–46. As discussed above, however, the use of the term
`
`“gantry” in the claims and in the Specification does not require that the
`
`gantry have both an imager and a radiation source.
`
`Alternatively, to the extent that Barnea does not disclose a second
`
`gantry, Petitioner cites as the second gantry Watanabe’s C-arm 14. Pet. 29–
`
`30. C-arm 14 is attached to Watanabe’s frame by holder 18 that allows the
`
`C-arm to rotate about a major axis. Id. at 29–30. The figure below is a
`
`reproduction from the Petition of a figure showing Petitioner’s combination
`
`of the teachings of Barnea and Watanabe.
`
`
`
`20
`
`
`
`IPR2016-01902
`Patent 6,888,919 B2
`
`
`
`Petitioner’s Depiction of Barnea
` and Watanabe Combined
`
`
`
`Pet. 35. Mounted on one end of Watanabe’s C-arm 14 is X-ray generator 12
`
`that Petitioner identifies as the claimed second radiation source and mounted
`
`at the other end of C-arm 14 is imager 16 attached via a link mechanism that
`
`Petitioner identifies as the claimed articulable end. Id. at 31.
`
`In response to Petitioner’s arguments that the C-arm of Watanabe
`
`would be “rotatable,” Patent Owner argues that the combination of Barnea
`
`and Watanabe would not have been operable and a person of ordinary skill
`
`would not have been motivated to combine the ref