Best Medical International, Inc.

Patent Trials and Appeals Board

Apr 23, 2021

IPR2020-00970 (P.T.A.B. Apr. 23, 2021)

Trials@uspto.gov Paper 71
571-272-7822 Entered: April 23, 2021
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

VARIAN MEDICAL SYSTEMS, INC. and ELEKTA INC.,
Petitioner,

v.

BEST MEDICAL INTERNATIONAL, INC.,
Patent Owner.
____________

IPR2020-000721
Patent 6,393,096 B1
____________

Before KARL D. EASTHOM, JOHN A. HUDALLA, and
AVELYN M. ROSS, Administrative Patent Judges.

HUDALLA, Administrative Patent Judge.

JUDGMENT
Final Written Decision
Determining All Challenged Claims Unpatentable
Denying-in-Part and Dismissing-in-Part Petitioner’s Motion to Exclude
35 U.S.C. § 318(a); 37 C.F.R. § 42.64

1 Petitioner from IPR2020-00970 has joined this proceeding.
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Varian Medical Systems, Inc. (“Varian”) filed a Petition (Paper 3,2
“Pet.”) requesting an inter partes review of claims 43, 44, and 46 of U.S.
Patent No. 6,393,096 B1 (Ex. 1001, “the ’096 patent”). Patent Owner, Best
Medical International, Inc. (“Patent Owner”), filed a Preliminary Response
(Paper 7, “Prelim. Resp.”). Varian also filed a Preliminary Reply (Paper 9),
and Patent Owner filed a Preliminary Sur-reply (Paper 10). Taking into
account the arguments presented in these papers, we determined that the
information presented in the Petition established that there was a reasonable
likelihood that Varian would prevail with respect to its unpatentability
challenges. Pursuant to 35 U.S.C. § 314, we instituted this proceeding on
May 1, 2020, as to all challenged claims and all grounds of unpatentability.
Paper 15 (“Dec. on Inst.”).
Elekta Inc. (“Elekta”) subsequently filed a similar petition and motion
for joinder in IPR2020-00970. See IPR2020-00970, Papers 2, 3. We
instituted an inter partes review and joined Elekta as a party to this
proceeding in a limited capacity. See IPR2020-00970, Paper 8. Henceforth,
we refer collectively to Varian and Elekta as “Petitioner.”
During the course of trial, Patent Owner filed a Patent Owner
Response (Papers 34,3 35,4 “PO Resp.”), and Petitioner filed a Reply to the
Patent Owner Response (Paper 46, “Pet. Reply”). Patent Owner also filed a
Sur-reply. Paper 53 (“PO Sur-reply”). An oral hearing was held on

2 Petitioner appears to have filed the same petition twice as Papers 2 and 3.
We refer to the version at Paper 3.
3 This paper was sealed in accordance with the Protective Order entered in
this case. See Paper 33, Attach. A (copy of protective order); Paper 44
(entering protective order).
4 This paper is the public version.
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January 28, 2021, and a transcript of the hearing is included in the record.
Paper 69 (“Tr.”).
Petitioner filed declarations of Kenneth P. Gall, Ph.D. with its Petition
(Ex. 1002) and its Reply (Ex. 1043). Petitioner also filed declarations of
Sylvia Hall-Ellis, Ph.D. (Ex. 1003) and Christopher Butler (Ex. 1004) with
its Petition. Patent Owner filed declarations of Daniel J. Chase with its
Preliminary Response (Ex. 2002) and with its Response (Ex. 2037). Patent
Owner also filed declarations of Dr. Mark P. Carol (Ex. 2044), Merle E.
Romesberg III (Ex. 20485), and Thomas Rowden (Ex. 2049) with its
Response. The parties also filed transcripts of the depositions of Dr. Gall
(Ex. 2038), Mr. Chase (Exs. 1044, 1045), Dr. Carol (Ex. 1046), Mr. Rowden
(Ex. 1047), and Mr. Romesberg (Exs. 1048,6 1049, 10507).
Petitioner filed a motion to exclude certain testimony from Mr. Chase
and Mr. Romesberg. Paper 57 (“Exclude Mot.”). Patent Owner filed an
opposition (Paper 59, “Exclude Opp.”), and Petitioner filed a reply
(Paper 63, “Exclude Reply”).
We have jurisdiction under 35 U.S.C. § 6. This decision is a Final
Written Decision under 35 U.S.C. § 318(a) as to the patentability of
claims 43, 44, and 46 of the ’096 patent. For the reasons discussed below,
Petitioner has demonstrated by a preponderance of the evidence that
claims 43, 44, and 46 of the ’096 patent are unpatentable.

5 The record includes sealed and public versions of this exhibit in
accordance with the protective order in this case.
6 This exhibit is the public version of the transcript at Exhibit 1050.
7 This exhibit was sealed in accordance with the Protective Order entered in
this case.
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I. BACKGROUND
A. Real Parties-in-Interest
Varian identifies Varian Medical Systems, Inc., VMS International
AG, VMS International Holdings, Inc., VMS Netherlands Holdings, Inc.,
and VMS Nederland BV as real parties-in-interest. Pet. 3. Elekta identifies
Elekta Limited (UK), Elekta Holdings U.S., Inc., and Elekta AB as real
parties-in-interest. IPR2020-00970, Paper 2, 3. Patent Owner identifies
Best Medical International, Inc. as the real party-in-interest. Paper 4, 1.

B. Related Proceedings
The parties identify the following proceedings related to the
’096 patent (Pet. 3–4; Paper 3, 1–2; IPR2020-00970, Paper 2, 3–4):
Best Med. Int’l, Inc. v. Elekta Inc., No. 1:19-cv-03409-MLB (N.D.
Ga.);
Best Med. Int’l, Inc. v. Elekta AB, No. 1:18-cv-01600-MN (D. Del.);
Best Med. Int’l, Inc. v. Varian Med. Sys., Inc., No. 1:18-cv-01599 (D.
Del.); and
Varian Med. Sys., Inc. v. Best Med. Int’l, Inc., IPR2020-00071, which
challenges claims 1 and 18 of the ’096 patent. We issue a final written
decision in IPR2020-00071 concurrently herewith.
We also note that another petitioner filed a petition requesting an inter
partes review of the ’096 patent in IPR2020-00074. We denied institution in
that case.
Furthermore, the parties belatedly notified us of a pending ex parte
reexamination of claims 1, 3–8, 18, 21–24, and 37–42 of the ’096 patent in
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Reexamination Control No. 90/014,424. Paper 66, 2; Paper 68, 1; Ex. 10518
(reexamination request); Ex. 1052 (order and decision granting request).
We additionally note that Petitioner challenged other patents owned
by Patent Owner in IPR2020-00053, IPR2020-00075, IPR2020-00076, and
IPR2020-00077. We denied institution in all of these cases except for
IPR2020-00076, for which we recently issued a final written decision.

C. The ’096 patent
The ’096 patent is directed to “determining an optimized radiation
beam arrangement for applying radiation to a tumor target volume while
minimizing radiation of [another] structure volume in a patient.” Ex. 1001,
Abstr. Optimized treatment plans are created using a computational method
(such as simulated annealing radiotherapy planning (SARP)) based on an
objective cost function that attributes costs of radiation of various portions of
both the tumor and surrounding tissues/structures. Id. at 3:17–22, 5:3–10.
Nevertheless, the ’096 patent alleges that the cost functions in then-existing
methods relied merely on costs related to discrete points within the structure,
and did not account for the structure volumes as a whole or for the relative
importance of varying surrounding structure types. Id. at 3:25–29. Further,
the ’096 patent alleges that then-existing methods did not allow physicians
to utilize Cumulative Dose Volume Histogram (CDVH) curves in
establishing desired dose distributions. Id. at 3:48–51.
The ’096 patent describes a treatment planning system that accounts
for multiple treatment parameters for both a target and multiple surrounding

8 The record contains two different exhibits numbered Exhibit 1051. The
cited exhibit is the second such exhibit that was filed on January 29, 2021.
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structure types. Ex. 1001, 5:54–56. The system arrives at an optimal beam
arrangement “by computationally increasing the proposed beam weight
iteratively [and] incorporating cost functions to ensure that an iterative
change in the beam weight would not result in an unacceptable exposure to
the volumes of tissue or other structures being subjected to the proposed
dose.” Id. at 5:39–44. The system includes a modified cost function that
allows a physician to use conventional CDVHs to establish a desired dose
for both the target volume and each involved structure; the CDVHs are used
as input for the treatment planning system. Id. at 5:57–64.
Figures 3 and 4 of the ’096 patent are reproduced below.

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Figures 3 and 4 show composite CDVH curves 10, 20, respectively. Id. at
8:64–65. In Figure 3, composite CDVH curve 10 includes desired target
CDVH curve 100 and proposed CDVH target curve 101, the latter of which
reflects the effect of a prescription proposed by the system during a given
iteration of plan optimization. Id. at 6:40–44, 8:60–64. In Figure 4,
composite CDVH curve 20 includes desired structure CDVH curve 2009 and
proposed CDVH structure curve 201, the latter of which again reflects the
effect of a prescription proposed by the system during a given iteration of
plan optimization. Id. Certain control points or regions N, N′, Q, Q′, X, and
X′ of composite CDVH curves 10, 20 may be identified as being more
important for a particular type of target or structure. Id. at 8:67–9:3. Each
control point or control region value is used as an input variable to a
parameterized influence function for each target or structure. Id. at 10:40–
44. The resultant values from the influence function calculation for each
control point or control region value are summed to produce a final cost of

9 In Figure 4, the callout arrow for reference numeral 200 appears displaced
slightly from the CDVH curve it references (which is a solid line).
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the proposed beam weights reflected by proposed CDVH curve 101, 201
during a given iteration. Id. at 10:44–50.
The ’096 patent issued from an application that was filed May 27,
1999, which claims priority to a provisional application filed on May 27,
1998. Ex. 1001, codes (22), (60). As discussed below, Petitioner attempts
to establish that, at a minimum, its asserted references qualify as prior art
relative to the May 27, 1998, filing date of the provisional application. See
Pet. 26.

D. Illustrative Claim
Of the challenged claims, claim 43 is independent. Claims 44 and 46
depend from claim 43. Claim 43 is illustrative of the challenged claims and
recites:
43. A method of determining an optimized radiation beam
arrangement for applying radiation to at least one tumor target
volume while minimizing radiation to at least one structure
volume in a patient, comprising the steps of:
distinguishing each of the at least one tumor target
volume and each of the at least one structure volume by target
or structure type;
determining desired partial volume data for each of the at
least one target volume and structure volume associated with a
desired dose prescription;
entering the desired partial volume data into a computer;
providing a user with a range of values to indicate the
importance of objects to be irradiated;
providing the user with a range of conformality control
factors; and
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using the computer to computationally calculate an
optimized radiation beam arrangement.
Ex. 1001, 21:19–22:13.

E. Prior Art
Petitioner relies on the following prior art:
Peacock™: A System for Planning and Rotational
Delivery of Intensity-Modulated Fields,” International Journal
of Imaging Systems and Technology 56–61 (Spring 1995)
(Ex. 1006, “Carol-1995”);
Curran, B.H., Chapter 5 – Conformal Radiation Therapy
Using a Multileaf Intensity Modulating Collimator, The Theory
& Practice of Intensity Modulated Radiation Therapy 75–90
(1997) (Ex. 1007, “Curran-5”);
Viggars D.A., et al., “The Objective Evaluation of
Alternative Treatment Plans III: The Quantitative Analysis of
Dose Volume Histograms,” International Journal of Radiation
Oncology • Biology • Physics, 23:419–27 (1992) (Ex. 1015,
“Viggars”);
Carol, M.P., Chapter 2 – IMRT: Where We Are Today, The
Theory & Practice of Intensity Modulated Radiation Therapy
17–36 (1997) (Ex. 1020, “Carol-2”);
Carol, M.P., Chapter 17 – Where We Go From Here: One
Person’s Vision, The Theory & Practice of Intensity Modulated
Radiation Therapy 243–52 (1997) (Ex. 1021, “Carol-17”).

F. The Instituted Grounds
We instituted inter partes review of claims 43, 44, and 46 of the
’096 patent on the following grounds (Dec. on Inst. 33), which are all the
grounds presented in the Petition (Pet. 6–7):
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Claims Challenged 35 U.S.C. § References
43, 44, 46 103(a)10 Carol-1995, Viggars
43, 44, 46 103(a) Curran-5, Carol-2
43, 44, 46 103(a) Curran-5, Carol-17

II. ANALYSIS
A. Legal Standards
A 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. See 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 skill in the art; and (4) where in evidence, so-called secondary
considerations.11 See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
We also recognize that prior art references must be “considered together
with the knowledge of one of ordinary skill in the pertinent art.” In re
Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994) (quoting In re Samour,
571 F.2d 559, 562 (CCPA 1978)).

10 The Leahy-Smith America Invents Act (AIA), Pub. L. No. 112-29, 125
Stat. 284, 287–88 (2011), amended 35 U.S.C. § 103. Because the
’096 patent was filed before March 16, 2013 (the effective date of the
relevant amendment), the pre-AIA version of § 103 applies.
11 The record does not contain any evidence of secondary considerations of
nonobviousness.
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B. Level of Ordinary Skill in the Art
The level of ordinary skill in the art is “a prism or lens through which
. . . the Board views the prior art and claimed invention” to prevent hindsight
bias. Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir. 2001). In
determining the level of ordinary skill, various factors may be considered,
including the “types of problems encountered in the art; prior art solutions to
those problems; rapidity with which innovation are made; sophistication of
the technology; and educational level of active workers in the field.” In re
GPAC Inc., 57 F.3d 1573, 1579 (Fed. Cir. 1995) (internal quotation and
citation omitted). Generally, it is easier to establish obviousness under a
higher level of ordinary skill in the art. Innovention Toys, LLC v. MGA
Entm’t, Inc., 637 F.3d 1314, 1323 (Fed. Cir. 2011) (“A less sophisticated
level of skill generally favors a determination of nonobviousness . . . while a
higher level of skill favors the reverse.”).
Citing testimony from Dr. Gall, Petitioner contends a person having
ordinary skill in the art (POSA) would have been “a medical physicist with a
Ph.D. (or similar advanced degree) in physics, medical physics, or a related
field,” and would have had “two or more years of experience in radiation
oncology physics, treatment planning, treatment plan optimization related to
radiation oncology applications, and computer programming associated with
treatment plan optimization.” Pet. 20 (citing Ex. 1002 ¶¶ 15–17). Patent
Owner cites testimony from Mr. Chase and contends an ordinarily skilled
artisan would have “earned at least a master’s or doctoral degree in radiation
dosimetry, physics, medical physics, or medicine, or equivalent disciplines”
and would have had “three years of clinical experience in radiation treatment
planning.” PO Resp. 12 (citing Ex. 2037 ¶¶ 81–82); see also Prelim.
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Resp. 21 (same definition). For purposes of our Decision on Institution, we
adopted Patent Owner’s definition. Dec. on Inst. 9.
The parties’ proposed definitions do not differ greatly as to the level
and type of formal education, and the parties have not raised any dispute
related to formal education. Thus, as to that aspect, we continue to apply
Patent Owner’s articulation that a person of ordinary skill in the art would
have “earned at least a master’s or doctoral degree in radiation dosimetry,
physics, medical physics, or medicine, or equivalent disciplines.” See PO
Resp. 12.
Nevertheless, the parties have put forth great effort disputing the type
of experience that an ordinarily skilled artisan would have possessed.12
Specifically, Petitioner criticizes Patent Owner’s definition insofar as
“Patent Owner’s purported POSA is unable to design and write the computer
programming necessary to understand and implement the teachings of the
’096 patent and asserted prior art.” Pet. Reply 2 (citing Ex. 1043 ¶¶ 5–10).
Petitioner also argues that Patent Owner’s definition would result in “a
POSA [who] did not [have] the knowledge or skill to be able to make the
inventions disclosed and claimed in the ’096 patent.” Id. at 3–4 (citing
Ex. 1044, 40:18–22, 46:13–18, 59:19–60:3; Ex. 1045, 9:1–10:5, 10:7–17,
10:21–11:3).
Citing testimony from Mr. Chase, Patent Owner draws a distinction
regarding Petitioner’s requirement for computer programming experience

12 We note that the parties’ definitions do not differ meaningfully as to the
number of years’ experience that would have been possessed by an
ordinarily skilled artisan, i.e., “two or more” for Petitioner versus “three” for
Patent Owner. As mentioned below, we apply two years of experience.
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between “the use and manipulation of programs by users” and “the writing
of the underlying software code by the system designer and author of such
programs.” PO Sur-reply 1–2 (citing Ex. 2002 ¶¶ 67–68). Patent Owner
also notes that the challenged claims are method claims directed to
optimization planning, and, as such, do not require software programming.
Id. at 2–3 (citing Ex. 1001, 21:19–21).
At the outset, we note that in determining the level of ordinary skill in
the art, we consider the inventions of the ’096 patent as a whole, and not just
inventions related to individual claims. See Hologic, Inc. v. Minerva
Surgical, Inc., 764 F. App’x 873, 879 (Fed. Cir. 2019) (considering broader
teachings in a challenged patent’s specification, and not just the more
narrowly drawn claims, when evaluating the Board’s determination of a
level of ordinary skill). At the oral hearing, Patent Owner’s counsel
acknowledged that this was the proper approach. Tr. 61:8–63:11. Thus, we
do not agree with Patent Owner’s attempt (PO Sur-reply 2–3) to limit the
level of ordinary skill based on the fact that the challenged claims here are
method claims. We instead consider the totality of the ’096 patent
disclosure when determining the level of ordinary skill.
The ’096 patent “relates to a method and apparatus for conformal
radiation therapy of tumors with a radiation beam having a pre-determined,
constant beam intensity.” Ex. 1001, 1:10–12. The disclosed methods and
apparatus are based on known SARP methods, where “[t]he optimal beam
arrangement is arrived at by computationally increasing the proposed beam
weight iteratively, incorporating cost functions to ensure that an iterative
change in the beam weight would not result in an unacceptable exposure to
the volumes of tissue or other structures being subjected to the proposed
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dose.” Id. at 5:39–44; see also id. at 8:37–39 (“A SARP technique is
utilized to do this optimization”). According to the specification of the
’096 patent,
[t]he system of the present invention includes . . . a modified
cost function, which allows a physician to use conventional
cumulative dose volume histographs (“CDVH”s) to establish a
desired prescription of dosage to both the target volume, or
target, and each involved structure volume, or structure, which
will then be used as input for the system for determining the
proposed dose distribution for delivery to a patient. The
optimization method may be carried out using conventional
equipment, including a conventional linear accelerator
(“LINAC”) 300, as shown in FIG. 1, having a rotatable gantry,
a conventional computer or set of computers, and plan
optimization software, which utilizes the optimization method
of the present invention.
Id. at 5:54–6:2. Therefore, the ’096 patent describes a different way of
optimizing a treatment plan for use with “conventional” radiation therapy
equipment. The main difference from the prior art is the modified cost
function that is used.
The specification goes on to describe the cost function with respect to
“Plan Optimization step 803” of Figure 2. The mathematical formulas for
two exemplary cost/influence functions (INF1 and INF2) are provided at
column 10, line 51 through column 11, line 39. According to the
specification,
[a] value is calculated for each control point value . . . of each
CDVH curve of each target and structure according to the
influence function INF1 or INF2. The total cost for the
proposed dose represented by the proposed CDVH curve may
then be obtained by summing each value of INF1 or INF2 for
each control point value of each CDVH curve of each target
and structure.
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Ex. 1001, 11:40–47. As such, the modified cost functions are based on
CDVH curve conformity, which is different from the prior art, but they are
applied iteratively just as in prior art SARP methods. See id. at 5:39–53.
The specification also describes exemplary computer hardware for
implementing the disclosed invention:
A suitable computer is utilized in performing the Plan
Optimization step 802 [sic, 803] (FIG. 2), as well as the other
steps of the radiation planning system. For illustration purposes
only, a programmable 150 Mhz pentium computer with four
symmetric multiprocessors, running the Sun Solaris operating
system, and having 256 megabytes RAM could be utilized in
performing the Plan Optimization step 802 [sic, 803] (FIG. 2).
Ex. 1001, 8:52–59.
As indicated by the specification of the ’096 patent, the disclosed
invention is implemented with computers and involves iterative calculations
of cost functions, just like prior art SARP methods. See Ex. 1001, 3:17–22
(“Existing methods and apparatus utilize a computational method of
establishing optimized treatment plans based on an objective cost function
that attributes costs of radiation of various portions of both the tumor and
surrounding tissues, or structures. One such computational method is known
in the art as simulated annealing.”). This supports Petitioner’s contention
that a person of ordinary skill in the art would have had experience in
programming computers in the context of treatment plan optimization. See
Pet. 20. This type of experience is consistent with implementing different
cost functions using SARP techniques.
In contrast, Patent Owner’s proposed type of experience—“clinical
experience in radiation treatment planning” (PO Resp. 12)—does not reflect
the type of skills necessary to implement different types of cost functions in
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an iterative SARP-based plan optimization system. We are not aware of any
record evidence that a clinician in 1998 would have been able to program
different types of cost functions in a treatment planning system. And, even
if certain clinicians might have possessed these skills at the time, we find
Petitioner’s proposed level of experience to better reflect the relevant skills
necessary to implement various cost functions in a treatment planning
system, thereby changing the way a system iteratively computes costs as part
of an optimization method. For this reason, we reject Patent Owner’s
proposed type of experience and adopt Petitioner’s formulation: two years
of experience in radiation oncology physics, treatment planning, treatment
plan optimization related to radiation oncology applications, and computer
programming associated with treatment plan optimization.
We additionally reject Patent Owner’s and Mr. Chase’s suggestion
that “computer programming” as used in Petitioner’s proposed level of
ordinary skill “could refer to . . . the use and manipulation of programs by
users, including medical physicists such as [Mr. Chase].” PO Sur-reply 1
(citing Ex. 2002 ¶¶ 67–68); see also Exclude Opp. 3–4 (same argument).
Mere use and manipulation of existing treatment planning system programs
is not the same as programming such systems in the first instance. In
making this determination, we have considered certain instances in the
’096 patent specification where the word “program” describes the entry of
data into existing treatment planning systems by a clinician. See Ex. 1001,
1:35–43, 13:30–35 (both using the word “program” in the sense of a
clinician using existing systems). Although the specification sometimes
uses the word “program” in the sense that a clinician enters a desired
radiation prescription or selects influence parameters in an existing system
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(see id.), our articulation of ordinary skill is meant to reflect “formal
computer programming, i.e., designing and writing underlying computer
code” (see Ex. 2002 ¶ 67), as would have been necessary to implement
different cost functions in an iterative optimization method.
For these reasons, and based on the entire trial record, we determine
that an ordinarily skilled artisan (1) would have earned at least a master’s or
doctoral degree in radiation dosimetry, physics, medical physics, or
medicine, or equivalent disciplines, and (2) would have had two years of
experience in radiation oncology physics, treatment planning, treatment plan
optimization related to radiation oncology applications, and computer
programming associated with treatment plan optimization.

C. Claim Interpretation
In an inter partes review, we construe each claim “in accordance with
the ordinary and customary meaning of such claim as understood by one of
ordinary skill in the art and the prosecution history pertaining to the patent.”
37 C.F.R. § 42.100(b) (2019). Accordingly, our claim construction standard
is the same as that of a district court. See id. Under the standard applied by
district courts, claim terms are generally given their plain and ordinary
meaning as would have been understood by a person of ordinary skill in the
art at the time of the invention and in the context of the entire patent
disclosure. Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005)
(en banc). “There are only two exceptions to this general rule: 1) when a
patentee sets out a definition and acts as his own lexicographer, or 2) when
the patentee disavows the full scope of a claim term either in the
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specification or during prosecution.” Thorner v. Sony Comput. Entm’t Am.
LLC, 669 F.3d 1362, 1365 (Fed. Cir. 2012).

1. “Computer to Computationally Calculate” Limitation
Petitioner contends that the limitation “the computer to
computationally calculate an optimized radiation beam arrangement” in
claim 43 should be construed as a means-plus-function limitation under pre-
AIA 35 U.S.C. § 112 ¶ 6. Pet. 21–26. Petitioner contends an ordinarily
skilled artisan would not have understood this term to have a sufficiently
definite meaning as a name for structure. Id. at 22–23 (citing Ex. 1002
¶¶ 60–64); see also Pet. Reply 8 (same argument).
Patent Owner disputes that treatment under § 112 ¶ 6 should apply.
PO Resp. 14; see also Prelim. Resp. 22–23, 25. In its Preliminary Response,
Patent Owner argued that the lack of the words “means for” in this limitation
creates a rebuttable presumption that § 112 ¶ 6 does not apply. Prelim.
Resp. 23 (citing Phillips, 415 F.3d at 1310). Patent Owner also contended
that an ordinarily skilled artisan would have readily understood what a
computer is. Id. at 25 (citing Ex. 2002 ¶ 73); see also Pet. 26 (Petitioner’s
alternate position that its grounds sufficiently identify the recited computer).
In its Response, Patent Owner notes that the district court in the underlying
litigation did not treat these limitations under § 112 ¶ 6. PO Resp. 14 (citing
Ex. 2045, 1–2).
In our Decision on Institution, we agreed with Patent Owner’s
reasoning that § 112 ¶ 6 does not apply to this limitation. Dec. on Inst. 10–
11. The parties’ positions have not changed since the time of institution, and
we discern no reason to change our initial construction. Therefore, we apply
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the plain and ordinary meaning to these limitations, and we do not apply
§ 112 ¶ 6.

2. Other Terms
We determine that no other terms require explicit construction. See,
e.g., Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d
1013, 1017 (Fed. Cir. 2017) (“[W]e need only construe terms ‘that are in
controversy, and only to the extent necessary to resolve the controversy’
. . . .” (quoting Vivid Techs., Inc. v. Am. Sci. & Eng’g, Inc., 200 F.3d 795,
803 (Fed. Cir. 1999))).

D. Mr. Chase’s Testimony and Petitioner’s Motion to Exclude Portions
of Mr. Chase’s Declaration
Patent Owner puts forth a declaration of Mr. Chase as an expert
witness in the field of the ’096 patent. See Ex. 2037. Petitioner moves to
exclude paragraphs 178, 181, 184, 191, 192, 194, and 196 of Mr. Chase’s
declaration (id.) under Federal Rule of Evidence 702 “because Mr. Chase is
unqualified to render opinions directed to subject matter beyond his limited
expertise in the use of commercially available treatment planning systems.”
Exclude Mot. 1. Petitioner further contends that Mr. Chase lacks
“specialized knowledge or experience on the design and development of
treatment planning systems and/or software as required by Fed. R. Evid.
702.” Id. at 2 (internal quotation omitted).
Petitioner argues that, “[i]n a patent case, a witness is only permitted
to testify as an expert on issues of noninfringement or invalidity if ‘qualified
as an expert in the pertinent art.’” Exclude Mot. 3 (quoting Sundance, Inc.
v. DeMonte Fabricating Ltd., 550 F.3d 1356, 1363 (Fed. Cir. 2008)).
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According to Petitioner, a witness who does not qualify as an ordinarily
skilled artisan may not testify on obviousness, including whether there is a
motivation to combine references. Id. at 3–4 (citing Sundance, 550 F.3d at
1364). Petitioner purports to define the “relevant art” under Sundance as not
being “limited to a clinical application,” but as “extend[ing] more broadly to
treatment planning system design in the field of conformal radiation
therapy.” Id. at 4 (citing Ex. 1001, 1:10–12, 9:6, 11:54, 13:11–25). By this
standard, Petitioner contends that “Mr. Chase is unversed in this specific
subject matter of the ’096 patent.” Id. at 5. Petitioner also contends that we
should exclude Mr. Chase’s opinions “with respect to the design and
development of treatment planning systems and/or software” because he
“cannot implement the teachings of the ’096 patent or asserted prior art, and
he asserted that extraordinary skill is required to implement the teachings of
the ’096 patent.” Id. at 5–6 & n.5 (citing Ex. 1044, 33:12–20). Petitioner
further notes that Mr. Chase is not a person of ordinary skill under
Petitioner’s proposed level of ordinary skill in the art, though Petitioner
contends we need not resolve this issue in order to grant Petitioner’s motion.
Id. at 3 n.4.
Patent Owner contends that there is an “adequate relationship”
between Mr. Chase’s experience and the claimed inventions disclosed in the
’096 patent. Exclude Opp. 8 (quoting SEB S.A. v. Montgomery Ward & Co.,
594 F.3d 1360, 1373 (Fed. Cir. 2010); see also id. at 7–8 (discussing
Mr. Chase’s experience as a medical physicist with “extensive clinical
experience including extensive work with linear accelerators (‘LINACs’),
treatment planning systems and their associated software,” among other
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things). Patent Owner also argues that an expert witness’s expertise need
not be coextensive with the scope of the patent. Id. at 6 (citing Board cases).
As stated above, the ’096 patent relates to a method and apparatus for
conformal radiation therapy of tumors. Ex. 1001, 1:10–12. We agree with
Patent Owner (Exclude Opp. 7–8) that Mr. Chase’s background in nuclear
engineering and experience with treatment planning systems is adequately
related to the disclosed methods and apparatus for conformal radiation
therapy of tumors in the ’096 patent. See SEB, 594 F.3d at 1373; Ex. 2037
¶¶ 7–12. In addition, Mr. Chase is not required to have the exact experience
in our adopted definition of the level of ordinary skill, namely “computer
programming associated with treatment plan optimization.” See Patent Trial
and Appeal Board Consolidated Trial Practice Guide 34 (Nov. 2019)
(“Consolidated Trial Practice Guide”), available at https://www.uspto.gov/
sites/default/files/documents/tpgnov.pdf (“There is . . . no requirement of a
perfect match between the expert’s experience and the relevant field.”); see
also Mytee Prods., Inc. v. Harris Research, Inc., 439 F. App’x 882, 886–87
(Fed. Cir. 2011) (nonprecedential) (upholding admission of the testimony of
an expert who “had experience relevant to the field of the invention,” despite
admission that he was not a person of ordinary skill in the art). Thus,
Mr. Chase is qualified to provide expert testimony in this proceeding under
Federal Rule of Evidence 702.
We also note that the Board acts as both the gatekeeper and the
weigher of evidence. Similar to a district court in a bench trial, the Board,
sitting as a non-jury tribunal with administrative expertise, is well positioned
to determine and assign appropriate weight to evidence presented, including
giving it no weight. See, e.g., Donnelly Garment Co. v. NLRB, 123 F.2d
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215, 224 (8th Cir. 1941) (“One who is capable of ruling accurately upon the
admissibility of evidence is equally capable of sifting it accurately after it
has been received . . . .”). For these reasons, we deny Petitioner’s motion to
exclude paragraphs 178, 181, 184, 191, 192, 194, and 196 of Mr. Chase’s
declaration. Rather than excluding evidence that is allegedly confusing,
misleading, unsupported, and/or irrelevant, we will simply not rely on it or
give it little or no probative weight, as appropriate, in our analysis.
Despite our denial of Petitioner’s motion to exclude with respect to
Mr. Chase, we consider the facts underlying Petitioner’s motion to be
significant in our weighing of Mr. Chase’s testimony vis-à-vis the testimony
of Petitioner’s declarant Dr. Gall. According to Mr. Chase, a person of
ordinary skill in the art would have been a mere clinician who would not
have been able to design and write computer code to calculate an optimized
radiation beam arrangement as recited in claim 43. Ex. 1044, 46:13–18;
Ex. 2037 ¶ 81; see also Ex. 1044, 59:24–60:3 (Mr. Chase testifying that a
person of ordinary skill in the art would not have been able to make the
radiation planning system that is described in the flowchart at Figure 2 of the
’096 patent). Moreover, Mr. Chase testified that a person of ordinary skill in
the art would not have known how to write code that calculated a CDVH
from a dose distribution. Ex. 1044, 46:21–49:10. In fact, Mr. Chase
testified that the people making and developing the systems claimed and
disclosed in the ’096 patent would have had extraordinary skill in the art.
Id. at 33:12–20. Mr. Chase likewise testified that the authors of Viggars
exhibited extraordinary skill in integrating a treatment planning system with
a CDVH-based evaluation program. Id. at 66:16–67:2. Yet it strains
credulity to say that an ordinarily artisan working in the art of the
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’096 patent could not have developed methods and systems like those
disclosed in the ’096 patent itself.
Importantly, Mr. Chase acknowledged that he is not an expert in the
field of designing and developing treatment planning systems. Ex. 1044,
59:10–13, 67:18–68:5. Mr. Chase’s analysis also is distorted insofar as he
bases his opinions on the perspective of an artisan who had familiarity only
with commercial systems and not with “homemade systems,” i.e., those
being researched and developed in the art. See Ex. 1045, 21:25–24:4. This
perspective does not square with the notion that the ’096 patent allegedly
advanced the existing art. Ex. 1001, 3:53–4:9 (noting that “the art ha[d]
sought a method and apparatus for conformal radiation therapy . . . which
utilizes CDVH curves in establishing the desired dose distributions for each
target tumor volume and tissue and structure types” and that no such method
or apparatus had existed before the ’096 patent). In addition, the asserted
prior art is not necessarily limited to commercial methods and systems. See,
e.g., Ex. 1015, 420, 422–23 (Viggars describing scoring functions for
evaluating dose-volume histograms that were developed for the OSCAR
computer program, which was integrated with “conventional software”); see
also Ex. 1019, 249–50 (Oldham, a reference asserted against the ’096 patent
in companion case IPR2020-00071, describing the development of cost
functions for use in a radiotherapy treatment plan optimization algorithm).
This indicates that an ordinarily skilled artisan would not have been confined
to commercialized systems as suggested by Mr. Chase. For these reasons,
we discount Mr. Chase’s testimony related to system development in our
obviousness analysis below.

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E. Obviousness Ground Based on Carol-1995 and Viggars
Petitioner contends the subject matter of claims 43, 44, and 46 would
have been obvious over the combination of Carol-1995 and Viggars.
Pet. 27–41; Pet. Reply 8–20. Patent Owner disputes Petitioner’s
contentions. PO Resp. 18–46; PO Sur-reply 5–13.

1. Carol-1995
Carol-1995 is a paper pertaining to “[t]he Peacock three-Dimensional
Conformal System[, which] plans for and implements, through the use of a
multileaf intensity modulating collimator . . . , conformal treatment plans in
a slice-by-slice fashion.” Ex. 1006, 56. “The parameters driving beam
modulation and field shaping are generated by a three-dimensional planning
computer using a simulated annealing algorithm guided by cost functions
which quantify prescribed treatment constraints.” Id.
The Peacock system determines a set of beam weights that will
deliver only the prescribed dose to the identified target volume while
keeping the dose to avoidance volumes and sensitive volumes below user-
defined limits. Ex. 1006, 57. The value of the cost function is calculated at
each iteration and is minimized by adjusting the beam transmittance. Id. at
58. The relative values of “WeightI” (target weight) and “WeightJ”
(structure weights) emphasize or deemphasize the contribution of each target
and structure to the total cost. Id.
The user has direct control over a treatment “aggressiveness”
constraint, which “influences the relative importance of delivering the
prescribed dose to the complete target versus sparing avoidance and
sensitive structures (relative values of ‘WeightI’ and ‘WeightJ’).” Ex. 1006,
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58. The user also has direct control over a “treatment time” constraint,
which influences the amount of time the patient spends on the treatment
table per treatment. Id.
Petitioner contends Carol-1995 qualifies as prior art under 35 U.S.C.
§ 102(b). Pet. 27. Patent Owner does not contest the prior art status of
Carol-1995.
In our Decision on Institution, we noted that the journal in which
Carol-1995 appears (International Journal of Imaging Systems and
Technology) is dated Spring 1995, and it includes a 1995 copyright date.
Dec. on Inst. 12 (citing Ex. 1006, 1–3). We further noted that the journal
includes a stamp from the University of Michigan Engineering Library that
is dated August 4, 1995. Id. (citing Ex. 1006, 3). We also cited Dr. Gall’s
testimony that this journal is a “well-known and long-standing scientific
journal[] in the field of radiotherapy.” Id. (citing Ex. 1002 ¶ 69). In light of
these indicators of publication in 1995, we determined at that stage that
Carol-1995 qualified as prior art under 35 U.S.C. § 102(b). Id. at 12–13.
Since the time of institution, neither party has put forth further arguments
about the prior art status of Carol-1995, so we perceive no reason to change
our determination from that stage. Accordingly, we determine that
Carol-1995 qualifies as prior art under 35 U.S.C. § 102(b) because
Carol-1995’s publication date in 1995, is more than one year before the
earliest possible effective filing date of the challenged claims, which is
May 27, 1998. Ex. 1001, code (60); Ex. 1006, 1–3.

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2. Viggars
Viggars is a paper directed to the OSCAR computer program, which
“evaluates dose-volume histograms in a consistent way for use in
3-dimensional treatment planning.” Ex. 1015, 419. Viggars states that
“[d]ose volume histograms (DVH) are a convenient way of summarizing the
information in a 3-dimensional dose distribution.” Id. The aim of Viggars is
to use DVHs to compare and evaluate alternative plans objectively and
consistently such that DVHs may be used in defining and ensuring
adherence to a treatment protocol. Id.
According to Viggars, the quality of a proposed treatment plan may be
judged by how far its cumulative dose volume histogram (CDVH) departs
from the ideal histograms, and a dose prescription can be defined by
specifying the maximum acceptable deviations from the ideal shape.
Ex. 1015, 420. Such deviations are referred to as “regret.” Id. A set of
score functions may be used to compare the actual deviations of a plan from
the ideal CDVH with the maximum deviations allowed by the dose
prescription. Id. at 422.
“For each dose volume limit [Di,Ri(max)] in the prescription, the
score function is derived from a ratio ri,” which is defined in the equation
reproduced below. Ex. 1015, 422.
ri = Ri(Di) Ri(max)⁄
This ratio ri is then used in a score function Si, which is reproduced below.
Id. at 423.
Si = 10[1− ri]
This score function Si results in “10 for an ideal distribution, zero at the limit
of acceptability, and [a] negative [value] when the dose-volume limit is
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violated.” Id. An optimal plan could, in principle, be selected by assigning
weights to each score to derive an overall objective function. Id. at 425.
Petitioner contends Viggars qualifies as prior art under 35 U.S.C.
§ 102(b). Pet. 27. Patent Owner does not contest the prior art status of
Viggars.
In support of Viggars’s status as prior art, Petitioner includes
testimony from Sylvia Hall-Ellis, Ph.D., a professor with experience in the
field of library science. Ex. 1003 ¶¶ 6–8. She testifies that Viggars “was
publicly accessible as early as June 10, 1992, and in any event, more than
one year before the May 27, 1998 priority date,” based on a record of
Viggars in the University of California San Diego. Ex. 1003 ¶¶ 54–59. The
journal in which Viggars appears (International Journal of Radiation
Oncology • Biology • Physics) is dated 1992, and it includes a 1992 copyright
date. Ex. 1015, 1–3. The journal also includes a sticker from the University
of California San Diego that states “Received on: 06-10-92.” Id. at 1.
Dr. Gall additionally testifies that this journal is a “well-known and long-
standing scientific journal[] in the field of radiotherapy.” Ex. 1002 ¶ 69.
In our Decision on Institution, we credited Dr. Hall-Ellis’s testimony
regarding public accessibility and various indicators of publication
appearing on the front matter of the journal in which Viggars appears. Dec.
on Inst. 14. Thus, at that stage, we determined that Viggars qualified as
prior art under 35 U.S.C. § 102(b). Id. at 14–15. Since the time of
institution, neither party has put forth further arguments about the prior art
status of Viggars, so we perceive no reason to change our determination
from that stage. Accordingly, we determine that Viggars qualifies as prior
art under 35 U.S.C. § 102(b) because Viggars’s publication date in 1992 is
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more than one year before the earliest possible effective filing date of the
challenged claims, which is May 27, 1998. Ex. 1001, code (60); Ex. 1003
¶¶ 54–59; Ex. 1015, 1–3.

3. Claim 43
a. Preamble and Claim Limitations
The preamble of claim 43 recites “[a] method of determining an
optimized radiation beam arrangement for applying radiation to at least one
tumor target volume while minimizing radiation to at least one structure
volume in a patient, comprising the steps of[.]” Ex. 1001, 21:19–22.
Petitioner cites Carol-1995’s teaching of “conformal therapy—delivering a
high dose of radiation in a spatial distribution conforming to the shape of the
target volume while concomitantly decreasing the volume of the surrounding
normal tissue receiving that same dose.” Pet. 34 (quoting Ex. 1006, 56).
Petitioner also contends Carol-1995’s “Peacock” system plans and
implements conformal treatment plans generated by a simulated annealing
algorithm. Id. at 34–35 (citing Ex. 1006, 56).
Patent Owner does not dispute Petitioner’s analysis of the preamble of
claim 43. Neither party addresses whether the preamble is limiting.
Because Petitioner has shown that Carol-1995 teaches the preamble, we
need not determine whether the preamble is limiting. See Nidec, 868 F.3d
at 1017.
Claim 43 further recites “distinguishing each of the at least one tumor
target volume and each of the at least one structure volume by target or
structure type.” Ex. 1001, 21:23–25. Petitioner cites Carol-1995’s
identified target volume and avoidance/sensitive volumes. Pet. 35 (citing
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Ex. 1006, 57). Petitioner also cites Carol-1995’s cost function, which
weights costs for each structure and target. Id. Petitioner additionally cites
Viggars’s Table 1, which shows a dose prescription for target, sensitive
organs, and non-target tissue. Id. (citing Ex. 1015, 421). Patent Owner does
not dispute Petitioner’s analysis for the “distinguishing” limitation. We are
persuaded that Carol-1995’s identified target volume and avoidance/
sensitive volumes teach distinguishing between “target structure” and
“structure volume.” See, e.g., Ex. 1006, 57. Viggars’s Table 1 also teaches
dose prescriptions based on whether something is a target or structure. See,
e.g., Ex. 1015, 421. Therefore, the combination of Carol-1995 and Viggars
teaches the “distinguishing” limitation.
Claim 43 further recites “determining desired partial volume data for
each of the at least one target volume and structure volume associated with a
desired dose prescription.” Ex. 1001, 22:1–3. Petitioner cites Viggars’s
“dose prescription that uses ‘maximum partial target volume’ and dose-
volume limits for organs.” Pet. 36 (citing Ex. 1015, 420). Petitioner also
notes that Viggars’s dose prescriptions in Table 1 are expressed as a
percentage of target or structure volume. Id. (citing Ex. 1015, 421). Patent
Owner does not dispute Petitioner’s analysis for the “determining”
limitation. We are persuaded that Viggars teaches the “determining” step
via Table 1, which lists dose prescriptions (in the form of desired partial
volume data) based on whether something is a target or structure. See, e.g.,
Ex. 1015, 421.
Claim 43 further recites “entering the desired partial volume data into
a computer.” Ex. 1001, 22:4. Petitioner contends Viggars’s dose
prescription “is a form of partial volume data and can also be used as part of
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the definition of a treatment protocol.” Pet. 36 (citing Ex. 1015, 420)
(internal quotation omitted). In light of this teaching, Petitioner contends
[i]t would have been . . . obvious to one of ordinary skill in the
art that the partial volume data in Viggars’ dose prescription
would have to be entered into the computer running the
OSCAR program since the program relies on the entered dose
prescription to perform the functions of quantitatively scoring a
treatment plan and generating images and histograms of regret.
Id. at 36–37 (citing Ex. 1002 ¶ 8913). Patent Owner does not dispute
Petitioner’s analysis for the “entering” limitation. We are persuaded that,
based on Viggars’s teachings, an ordinarily skilled artisan would have
known to enter partial volume data from a dose prescription into the OSCAR
evaluation program. See Ex. 1002 ¶ 89; Ex. 1015, 420. Thus, Petitioner
establishes that Viggars teaches the “entering” limitation.
Claim 43 further recites “providing a user with a range of values to
indicate the importance of objects to be irradiated” (“first ‘providing’
limitation”). Ex. 1001, 22:6–7. Petitioner cites Carol-1995’s teaching of a
cost function that “defines cost as the sum of weighted costs for each
structure and target,” wherein “[t]he relative values of WeightI (target
weight) and WeightJ (structure weights) emphasize or deemphasize the
contribution of each target and structure to the total cost.” Pet. 37 (citing
Ex. 1006, 57–58) (internal quotations and emphasis omitted). Petitioner
further cites the user’s control over an “aggressiveness” constraint described
in Carol-1995, which “influences the relative importance of delivering the
prescribed dose to the complete target versus sparing avoidance and

13 Petitioner mistakenly cites to paragraph 9, but the context makes clear
Petitioner intended to cite to paragraph 89.
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sensitive structures (relative values of WeightI and WeightJ).” Id. at 37
(citing Ex. 1006, 58) (internal quotations and emphases omitted). Petitioner
notes that Carol-1995 also discloses a user interface for inputting data. Id. at
38 (citing Ex. 1006, 60). In light of these teachings, Petitioner contends an
ordinarily skilled artisan “would have recognized . . . that control over
‘aggressiveness’ is based on . . . relative values of WeightI/WeightJ” and it
would have been obvious for the artisan to “provide the user with a range of
‘aggressiveness’ values to select from.” Id. (citing Ex. 1002 ¶ 91).
Petitioner further argues that the relative values of WeightI and WeightJ
favor the target over sensitive structures or vice versa, so an ordinarily
skilled artisan would have “found it obvious that a range of relative values
for WeightI and WeightJ could be provided to the user to indicate the
importance of objects to be irradiated.” Id. (citing Ex. 1002 ¶ 92).
Patent Owner argues that “Carol-1995 does not provide a specific and
precise explanation or disclosure of how a user provides . . . ‘direct control’
over ‘aggressiveness’ in relation to relative values of [‘]WeightI’ and
‘WeightJ’ to arrive at” the first “providing” limitation. PO Resp. 29 (citing
Ex. 2037 ¶ 162). In support of its argument, Patent Owner cites testimony
from Dr. Gall in which he acknowledges “Carol-1995 does not describe[]
precisely how the user is provided with ‘direct control’ over the
‘aggressiveness’ based on the relative values of WeightI and WeightJ.” Id.
(quoting Ex. 1002 ¶ 91).
We do not agree with Patent Owner’s arguments. On cross-
examination, Mr. Chase agreed with the premises of Petitioner’s contentions
for the first “providing” limitation: (1) that aggressiveness is the relative
weight in a cost function given to a target term versus a structure term
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(Ex. 1045, 25:16–26:1); and (2) that the user controlled relative weights in
the Peacock system (id. at 26:17–22). This testimony supports Petitioner’s
assertion that an ordinarily skilled artisan would have known to use
Carol-1995’s user interface (see Ex. 1006, 60) to input a range of a range of
relative values for WeightI and WeightJ (see id. at 57–58) to control
aggressiveness. Pet. 37–38 (citing Ex. 1002 ¶¶ 91–92). Based on
Petitioner’s analysis, we are persuaded that the combination of Carol-1995
and Viggars teaches the first “providing” limitation.
Claim 43 further recites “providing the user with a range of
conformality control factors” (“second ‘providing’ limitation”). Ex. 1001,
22:8–9. Petitioner cites Carol-1995’s teaching that “[t]reatment time . . . is
directly proportional to the number of arcs used in the treatment (in turn
related to the number of table angles and the thickness of the treatment slice)
and roughly proportional to the degree of conformation which will result
from implementing the plan.” Pet. 39 (quoting Ex. 1006, 58) (emphases
omitted). Petitioner also cites Carol-1995 for teaching different numbers of
table angles (1 and 5) and slice thicknesses (5 mm and 1 cm) for various
exemplary treatments. Id. (citing Ex. 1006, 60). In light of these teachings,
Petitioner contends “the number of table angles and the thickness of the
treatment slice are a range of conformality control factors taught by
Carol-1995.” Id. (citing Ex. 1002 ¶ 93). Petitioner further contends it would
have been obvious to an ordinarily skilled artisan “to provide the user with a
range of treatment angles (e.g., 1 to 5) and slice thicknesses (e.g., 1 cm to
5 cm [sic]) in the user interface to facilitate and simplify the user’s entry of
constraints when using the Peacock system.” Id. at 39–40 (citing Ex. 1002
¶ 94).
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Patent Owner seeks to distinguish Carol-1995’s teachings on
controlling the number of table angles and the thickness of the treatment
slice from various disclosures about “conformality control” in the
’096 patent specification. See PO Resp. 26–28. Specifically, Patent Owner
contends that “‘conformality control’ in the context of . . . an embodiment
refers to a specific mathematically defined parameter that the user may opt
to include in the cost function, which is used to optimize the plan produced
by Peacock.” Id. at 28 (citing 2037 ¶ 156); see also id. at 27–28 (quoting
Ex. 1001, 14:42–64); PO Sur-reply 7 (same argument).
In reply, Petitioner argues that Patent Owner’s quotations from the
specification merely show examples and do not constitute “an exhaustive list
or definition of conformity control factors.” Pet. Reply 12 (citing Ex. 1043
¶ 23). Petitioner also argues that Patent Owner does not dispute that the
number of table angles and thickness of the treatment slice are factors that
control conformality of the plans output by Peacock. Id. at 11 (citing
Ex. 1043 ¶ 22).
We are persuaded by Petitioner’s showing from Carol-1995 that the
number of table angles and thickness of the treatment slice are factors that
control conformality. See Ex. 1002 ¶ 93; Ex. 1006, 58, 60; Ex. 1043 ¶ 22.
We do not agree with Patent Owner’s arguments. Patent Owner’s examples
from the specification of the ’096 patent are tied to specific embodiments of
the disclosed Peacock system. But “we do not read limitations from
the embodiments in the specification into the claims.” Hill-Rom Servs., Inc.
v. Stryker Corp., 755 F.3d 1367, 1371 (Fed. Cir. 2014) (citing Liebel–
Flarsheim Co. v. Medrad, Inc., 358 F.3d 898, 904 (Fed. Cir. 2004)). As
such, Petitioner need not show “a specific mathematically defined
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parameter” similar to that disclosed in the ’096 patent specification (see PO
Resp. 28) in order to teach the recited “conformality control factors.” Based
on Petitioner’s analysis, we are persuaded that Carol-1995 teaches the
second “providing” limitation.
Claim 43 further recites “using the computer to computationally
calculate an optimized radiation beam arrangement.” Ex. 1001, 22:11–12.
Petitioner cites Carol-1995’s teaching of the Peacock system’s “so-called
fast simulated annealing process to determine a set of beam weights,” which
is a “very computer-intensive process.” Pet. 40 (quoting Ex. 1006, 57–58).
Patent Owner argues that the “determining” and “entering” steps
“must be part of the method of, and for the purpose of, ‘using the computer
to computationally calculate an optimized radiation beam arrangement’ to
‘apply[] radiation to at least one tumor target volume while minimizing
radiation to at least one structure volume in a patient.’” PO Resp. 25
(alteration by Patent Owner). According to Patent Owner, an ordinarily
skilled artisan “would have understood the plain meaning of these
limitations to convey that the computer’s calculation of an optimized plan is
based at least in part on analysis of the inputted partial volume data.” Id.
(citing Ex. 2037 ¶ 149). In a similar way, Patent Owner criticizes
Petitioner’s showing insofar as partial volume data entered in Viggars’s
OSCAR system is not being used in Carol-1995’s Peacock system, even
though Peacock does the optimization. PO Resp. 25–26 (citing Ex. 2037
¶¶ 150–151).
Petitioner argues that Patent Owner’s argument improperly seeks to
import certain requirements into the “using” step based on other steps of
claim 43. Pet. Reply 9. Petitioner also argues that Patent Owner has not
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presented any justification to depart from standard claim construction
principles with respect to the interplay of the recited steps. Id. at 9–10
(citing Ex. 1043 ¶¶ 16–18). Petitioner also criticizes as conclusory Patent
Owner’s arguments about what an ordinarily skilled artisan would have
understood about the sequence of limitations in claim 43. Id. at 10.
We are persuaded by Petitioner’s showing that the computer of
Carol-1995’s Peacock system calculates a set of beam weights in
determining an optimized treatment plan, which teaches the “using” step of
claim 43. Pet. 40 (citing Ex. 1002 ¶ 95; Ex. 1006, 57–58). We also agree
with Petitioner (Pet. Reply 9–10) that Patent Owner’s arguments improperly
seek to read in requirements to the language of the “using” step based on the
preamble and other method steps. Specifically, Patent Owner urges us to
find an inconsistency with Petitioner’s mapping because Petitioner cites
Viggars for teaching the earlier-recited “determining” and “entering” steps
(see Pet. 36–37) and Carol-1995 for teaching the later-recited “using” step
(see id. at 40) even though Carol-1995’s optimization occurs before
Viggars’s evaluation in Petitioner’s proposed combination (see id. at 33).
Yet the plain language of the “using” limitation requires no particular inputs
from earlier-recited steps to perform the later-recited “computationally
calculat[ing].” In this way, Patent Owner’s arguments are not
commensurate with the scope of the “using” limitation. We further note that
the steps in claim 43 do not recite a particular order; nor do Patent Owner’s
arguments seek to establish as much. See Interactive Gift Exp., Inc. v.
Compuserve Inc., 256 F.3d 1323, 1342 (Fed. Cir. 2001) (“Unless the steps of
a method actually recite an order, the steps are not ordinarily construed to
require one.”); Tr. 97:5–13 (Patent Owner’s counsel agreeing that Patent
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Owner did not put forth arguments about a specific order of steps in
claim 43). For these reasons, we do not agree with Patent Owner’s
arguments.
Patent Owner also makes new arguments in its Sur-reply about how
the recited “computer” in the “entering” step is the same “computer” in the
“using” step. PO Sur-reply 5–6. According to Patent Owner, this means
that “the same computer both receives the partial volume data and calculates
the optimized beam arrangement.” Id. at 6. Yet we understand Petitioner to
be relying on the combined computer-implemented functions of
Carol-1995’s optimization program and Viggars’s evaluation program for
teaching claim 43, which is a method claim. See Pet. 31 (citing Ex. 1002
¶ 78), 33 (citing Ex. 1002 ¶ 82). Furthermore, the specification of the
’096 patent, contemplates that the disclosed optimization method may be
performed with “a conventional computer or set of computers.” Ex. 1001,
5:64–6:2 (emphasis added). Thus, we do not agree with Patent Owner’s
argument based on “computer” recitations. Patent Owner makes additional
new arguments based on how partial volume data are entered and used for
calculating an optimized plan in embodiments disclosed in the ’096 patent
specification. PO Sur-reply 6–7 (citing Ex. 1001, 6:35–39, 6:44–57, 6:61–
63). We do not agree with Patent Owner’s arguments, however, because
“we do not read limitations from the embodiments in the specification into
the claims.” Hill-Rom, 755 F.3d at 1371.
Based on the entire trial record, Petitioner has established that the
combination of Carol-1995 and Viggars teaches all limitations of claim 43.

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b. Reasons for the Combination
Petitioner contends an ordinarily skilled artisan “would have been
motivated to use the OSCAR program of Viggars to evaluate the clinical
acceptability of the ‘optimized’ treatment plans calculated by Carol-1995’s
Peacock program to ensure that the plans comply with the radiation
oncologist’s dose prescription requirements.” Pet. 31 (citing Ex. 1002 ¶ 78).
In particular, Petitioner posits generating an “optimized” treatment plan
using Carol-1995’s Peacock program and then inputting the “optimized”
plan for evaluation by Viggars’s OSCAR program. Id. at 33 (citing
Ex. 1002 ¶ 82). According to Petitioner, “the objective scoring and visual
displays of Viggars’ OSCAR program [would have] be[en] a desirable and
facile way of evaluating the clinical acceptability of plans generated by the
Peacock system of Carol-1995.” Id. at 32 (citing Ex. 1002 ¶ 79). In support
of this notion, Petitioner cites Viggars’s statement that “[t]he power of the
method is derived from the OSCAR prescription which allows the clinician
to express the needs of his or her patient in a simple quantitative way taking
into account clinical experience.” Id. at 31–32 (citing Ex. 1015, 426).
Petitioner further cites Viggars for teaching that the OSCAR program can be
used to decide, in an objective and systematic way, whether a particular
treatment plan is acceptable. Id. at 32 (citing Ex. 1015, 425). Petitioner also
cites the recognition of another contemporaneous prior art reference that
Viggars’s treatment plan scoring “addressed the problem of basing a
decision on the degree of acceptability of a treatment plan in terms of simple
parameters.” Id. (quoting Ex. 1008 (“Webb-1993”), 20).
Petitioner contends an ordinarily skilled artisan would have expected
success in making the combination “because the combination simply uses
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the established functions of each disclosed system.” Pet. 33 (citing Ex. 1002
¶ 82). Petitioner contends that Carol-1995’s Peacock system outputs a dose
distribution and dose volume histograms. Pet. Reply 13 (citing Ex. 1043
¶ 26; Ex. 1044, 49:17–24, 57:23–59:5), 15 (citing Ex. 1043 ¶¶ 31–32), 17.
According to Petitioner, an ordinarily skilled artisan “would have known
how to conform the file formatting” of the Peacock output dose distribution
“in order to provide the requisite input data for [Viggars’s] OSCAR to
calculate the S-scores and generate the histograms of regret.” Id. at 17–18
(citing Ex. 1043 ¶ 37); see also Pet. 33 (citing Ex. 1002 ¶ 82) (same
argument). Petitioner also notes Viggars’s express statement that the
OSCAR program had been “fully integrated with the conventional software
so that it can be used easily on a routine basis.” Pet. 33 (quoting Ex. 1015,
420). Petitioner contends this statement would have given an ordinarily
skilled artisan an expectation of success in combining Viggars’s OSCAR
program with Carol-1995’s Peacock system. Id. at 33–34 (citing Ex. 1002
¶ 83).
Patent Owner notes that Carol-1995’s Peacock system is an inverse
intensity modulated radiation therapy (IMRT) system, which Patent Owner
calls “a different and distinct transformative paradigm-shifting system” that
is “based on different parameters, mathematics and decision-making than
those used in forward-planning systems.” PO Resp. 30–31 (citing Ex. 2037
¶¶ 48, 169; Ex. 2040, 8; Ex. 2041, 2089). As such, Patent Owner attempts to
distinguish Viggars’s OSCAR program as “merely part of an outmoded and
inferior forward-planning system, with its own mathematics, parameters and
decision-making process.” Id. at 31–32. Thus, according to Patent Owner,
an ordinarily skilled artisan would not have been motivated “to combine the
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state of the art solution, with an inferior older partial solution.” Id. at 32
(citing Ex. 2037 ¶¶ 170–171). Patent Owner also argues that Carol-1995’s
Peacock system “already perform[s] the function of identifying and
evaluating hundreds or thousands of proposed plans” and does so
“exponentially faster and better than a user could attempt to replicate on a
trial-and-error basis with [Viggars’s] subjectively-evaluated S-scores and
beam parameters.” Id. at 32–33 (citing Ex. 2037 ¶ 171).
In reply, Petitioner argues that Viggars’s OSCAR program is not a
forward treatment planning program and, rather, is used to analyze any
proposed dose distribution. Pet. Reply 13 (citing Ex. 1015, 419; Ex. 1043
¶ 27). Petitioner also notes Mr. Chase’s agreement that “the S-scores [and]
histograms disclosed in the Viggars reference would help in evaluating the
clinical acceptability of a Peacock treatment plan.” Id. at 16 (citing
Ex. 1044, 65:9–14).
We are persuaded by Petitioner’s showing that an ordinarily skilled
artisan would have had reasons to evaluate treatment plans from
Carol-1995’s Peacock program using Viggars’s OSCAR program.
Specifically, Viggars states that the OSCAR program can be “used to decide,
in an objective and systematic way, whether a particular plan is acceptable.”
Ex. 1015, 425. OSCAR also “allows a clinician to express the needs of his
or her patient in a simple quantitative way taking into account clinical
experience as well as any dose response data which may be available.” Id.
at 426. Petitioner shows that these benefits had already been recognized in
the art. See Pet. 32–33 (citing Ex. 1008, 20–21).
We also do not agree with Patent Owner’s argument (PO Resp. 30–
33) that Viggars’s OSCAR scoring program was associated exclusively with
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forward-planning systems. As Patent Owner’s counsel acknowledged at the
oral hearing, Viggars’s evaluation tools can be applied to inverse planning
treatment plans, such as those coming from Carol-1995’s Peacock system.
See Tr. 84:18–86:7. And, as Mr. Chase acknowledged, even optimized
plans from Carol-1995’s Peacock system would need to be evaluated for
their clinical acceptability before they would be used on a patient. Ex. 1044,
65:4–8. Mr. Chase further agreed that the S-scores and histograms disclosed
in Viggars would help in evaluating the clinical acceptability of a Peacock
treatment plan. Id. at 65:9–14. This testimony supports Petitioner’s
assertion that an ordinarily skilled artisan would have had a reason to
evaluate plans from Carol-1995’s Peacock system using the tools provided
by Viggars’s OSCAR program.
Patent Owner also disputes Petitioner’s rationale for the combination
to the extent that an ordinarily skilled artisan “would not have been
motivated to look to the particular S-scoring of the Viggars reference, over
all other available scoring programs.” PO Resp. 33 (citing Ex. 2037 ¶¶ 172–
173). Patent Owner notes that other scoring programs were available at the
time of the ’096 patent and that all of them could have performed the
function of Viggars’s evaluation program in Petitioner’s proposed
combination. Id. (citing Ex. 2038, 97:21–98:2); see also id. at 34–35
(discussing other available scoring systems). As such, Patent Owner argues
that “[t]he motivation to use the OSCAR S-score posited by [Petitioner] . . .
would apply to the use of any of the multiple other scoring systems available
in the art at the time.” Id. at 34 (citing Ex. 2037 ¶ 175). Patent Owner also
argues that Petitioner fails to show why an ordinarily skilled artisan would
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have selected Viggars’s scoring system over any other available scoring
programs. Id. at 35; see also PO Sur-reply 8–9 (same arguments).
We do not agree with Patent Owner’s arguments because Petitioner is
not required to show that Viggars’s scoring system would have been
superior to other available scoring systems in order to prove obviousness.
See In re Fulton, 391 F.3d 1195, 1200 (Fed. Cir. 2004) (“[O]ur case law
does not require that a particular combination must be the preferred, or the
most desirable, combination described in the prior art in order to provide
motivation for the current invention.”). Rather, Petitioner need only show
persuasive reasons why an ordinarily skilled artisan would have combined
Viggars’s scoring system to evaluate Carol-1995’s optimized treatment
plans from the OSCAR system. See id. And, regardless of other available
systems, Petitioner establishes that an ordinarily skilled artisan would have
had reasons to use Viggars’s S-scores to evaluate optimized plans from
OSCAR. Ex. 1002 ¶¶ 78–79; Ex. 1015, 425–26; Ex. 1043 ¶ 36.
Patent Owner disputes that an ordinarily skilled artisan would have
reasonably expected success in combining Viggars with Carol-1995. PO
Resp. 35–44. Patent Owner contends that the output of Carol-1995’s
Peacock system would have been in a proprietary format that was not
necessarily compatible with Viggars’s OSCAR program. See id. at 35–37
(citing, inter alia, Ex. 2037 ¶¶ 178–180). Patent Owner also addresses
Viggars’s teaching of using OSCAR to evaluate treatment plans from a
commercial program known as Theraplan, but notes that Viggars does not
discuss how integration between Theraplan and OSCAR was achieved. Id.
at 37–38 (citing Ex. 1015, 420; Ex. 2037 ¶ 184). Patent Owner goes on to
cite another reference for the proposition that Theraplan required
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modification to achieve this integration. Id. at 39 (citing Ex. 2034 (“Shalev-
1988”), 763). As a result, Patent Owner contends an ordinarily skilled
artisan would have expected “a modification or re-programming of the
Peacock System” in order to integrate it with Viggars’s OSCAR program.”
Id. (citing Ex. 2037 ¶ 181).
We do not agree with Patent Owner’s arguments. Record evidence
establishes that Carol-1995’s Peacock system generates a dose distribution
and dose volume histogram data just like conventional forward treatment
planning systems. Ex. 1006, 57 (“Peacock Plan starts with the desired dose
distribution and works in reverse to generate the beam weights needed to
produce this distribution”); Ex. 2032, 594 (noting that the Peacock system
generates “dose distribution in three dimensions” and “dose-volume
histograms”); Ex. 1043 ¶¶ 26, 28 (Dr. Gall’s testimony regarding the same);
Ex. 1044, 49:17–24, 52:11–18, 57:23–59:5 (Mr. Chase’s cross-examination
testimony regarding the same). This evidence undermines Patent Owner’s
suggestion that Peacock’s output was in a proprietary format. See PO
Resp. 35–37. Moreover, Viggars teaches that, “[b]ased on a dose
prescription specified by a radiation oncologist,” the OSCAR system
“provides a quantitative and easily understood visual analysis of a proposed
dose distribution.” Ex. 1015, 419 (emphasis added). In other words, one of
the inputs to Viggars’s OSCAR program is a proposed dose distribution,
which is exactly what is produced as output by Carol-1995’s Peacock
system. This supports Petitioner’s assertion that “an ‘optimized’ treatment
plan could be generated as expressly taught by Carol-1995 using the
Peacock system and this ‘optimized’ plan would be used as input for
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evaluation by the OSCAR program of Viggars.” Pet. 33 (citing Ex. 1002
¶ 82).
We also have considered Patent Owner’s argument that the Peacock
system would have needed modification or reprogramming to work with
OSCAR. See PO Resp. 39–40, 42–43. Petitioner does not propose any
reprogramming, however: “the combination simply uses the established
functions of each disclosed system.” Pet. 33. Given the match between
Peacock’s output and OSCAR’s input discussed above, we do not agree that
any reprogramming would have been required. The only remaining issue
relates to whether an ordinarily skilled artisan would have reasonably
expected success in conforming the file formats of the two systems to ensure
compatibility. Patent Owner calls Petitioner’s showing of expected success
in this regard deficient and conclusory. PO Resp. 40–42; PO Sur-reply 11–
12. Yet Petitioner need not establish an absolute certainty for success. PAR
Pharm., Inc. v. TWI Pharm., Inc., 773 F.3d 1186, 1198 (Fed. Cir. 2014). For
the reasons mentioned above (see supra § II.D), we discount Mr. Chase’s
testimony regarding the alleged need for modification and reprogramming,
and we instead credit Dr. Gall’s testimony (Ex. 1002 ¶ 82; Ex. 1043 ¶¶ 30–
31) that an ordinarily skilled artisan would have known how to conform files
from Peacock for processing by OSCAR. Ensuring the compatibility of file
formats between the two systems strikes us as the sort of implementation
detail that would have been an exercise of ordinary skill, particularly given
our finding that an ordinarily skilled artisan would have had experience in
computer programming. See supra § II.B. The fact that Viggars discusses
the successful integration of another commercial system, Theraplan, with
OSCAR also supports this conclusion. See Ex. 1015, 420.
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Finally, we have considered Patent Owner’s argument that an
ordinarily skilled artisan would not have been motivated to increase the
“already-lengthy” processing time required by Carol-1995’s Peacock
optimization method by reprogramming the Peacock system to “perform the
additional function of generating the partial dose data needed by OSCAR.”
PO Resp. 42–44 (citing Ex. 2037 ¶¶ 191–194). Yet Patent Owner’s
argument misapprehends the combination proposed by Petitioner. As
discussed above, Petitioner does not propose modifying the existing
functions of Peacock and OSCAR. See Pet. 33. Rather, Petitioner merely
proposes linking the two functions so that OSCAR’s scoring program is
used to evaluate “optimized” plans from Peacock. See id. at 31. Because
“reprogramming” of Peacock is not required, we do not agree that the
combination would result in increased planning time.
Patent Owner argues that Petitioner fails to show why an ordinarily
skilled artisan “would have selected Varian’s chosen description of OSCAR
in Viggars – above the rest of the OSCAR articles in the ‘Objective
Evaluation of Alternative Treatment Plans’ series by Viggars and his co-
authors.” PO Resp. 44 (citing Exs. 1015, 2034, 2039). Patent Owner
speculates that Dr. Gall’s opinions about the proposed combination would
have been different if he had first considered another of the articles,
Shalev-1988, which allegedly requires “‘modifying’ the Theraplan system.”
Id. at 45 (citing Ex. 2034, 763; Ex. 2037 ¶ 197). Patent Owner also argues
that the data in Viggars’s Table 1 and certain CDVH illustrations in Viggars
are unique in this series of articles. See id. at 45–46. Patent Owner calls this
an exercise in “litigation-inspired hindsight.” Id. at 46. Nevertheless, we
have already considered (and do not agree with) Patent Owner’s argument
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about “modifying” Theraplan above. And, as discussed above, Petitioner
need not account for the relative strengths and weaknesses of other non-
asserted prior art references. See Fulton, 391 F.3d at 1200. Moreover,
Petitioner is entitled to rely on Viggars for everything it teaches by way of
technology. See EWP Corp. v. Reliance Universal Inc., 755 F.2d 898, 907
(Fed. Cir. 1985). Thus, we do not agree with Patent Owner’s arguments.
Having considered the entire trial record, we are persuaded that an
ordinarily skilled artisan would have had reasons to combine Carol-1995 and
Viggars.

c. Conclusion Regarding Claim 43
Petitioner has persuasively shown that the combination of Carol-1995
and Viggars teaches all the limitations of claim 43. Petitioner also has put
forth persuasive reasons for combining these references and has established
that an ordinarily skilled artisan would have had a reasonable expectation of
success in making the combination. On the entire trial record, we determine
Petitioner has shown, by a preponderance of the evidence, that the subject
matter of claim 43 would have been obvious over the combination of
Carol-1995 and Viggars.

4. Claim 44
Claim 44 depends from claim 43 and further recites “the step of
applying the optimized radiation beam arrangement to the patient with a
conformal radiation therapy apparatus.” Ex. 1001, 22:13–15. Petitioner
cites Carol-1995 for teaching that “the obvious goal of using a clinically
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acceptable optimized treatment plan [is] for patient treatment.” Pet. 40
(citing, inter alia, Ex. 1002 ¶ 96; Ex. 1006, 56, 61).
Patent Owner relies on the same arguments discussed above with
respect to claim 43. We are persuaded that Carol-1995 teaches using
optimized treatment plans for treating patients with a radiation therapy
apparatus. See Ex. 1006, 56 (“The Peacock three-Dimensional Conformal
System plans and implements . . . conformal treatment plans”), 61
(“Patients[’] treatments with Peacock began in March 1994”). Thus, we
determine Petitioner has shown by a preponderance of the evidence that the
subject matter of claim 44 would have been obvious over the combination of
Carol-1995 and Viggars.

5. Claim 46
Claim 46 depends from claim 44 and recites that “the optimized
radiation beam arrangement is calculated using different cost function
parameters depending on the target or structure type.” Ex. 1001, 22:20–23.
Petitioner cites the differences in how Carol-1995 defines cost for targets
and structures: “For targets, cost is the mean-squared difference between
realized dose and prescribed dose. For structures, cost is the mean-squared
difference between realized dose and zero dose.” Pet. 41 (quoting Ex. 1006,
57) (citing Ex. 1002 ¶ 97). Petitioner further cites Carol-1995’s cost
function parameters WeightI and WeightJ for targets and structures,
respectively, which are used to calculate the optimized beam arrangement.
Id. (citing Ex. 1006, 58).
Patent Owner relies on the same arguments discussed above with
respect to claim 43. We are persuaded that Carol-1995’s cost function
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accounts for targets and structures with different parameters. In particular,
Carol-1995 teaches calculating cost differently for targets and structures.
See Ex. 1006, 57. As explained by Dr. Gall, “the cost to the target is
evaluated based on the minimum dose parameter, whereas structures are
not.” Ex. 1002 ¶ 97 (citing Ex. 1006, 57). Carol-1995 also teaches that
“[t]he relative values of ‘WeightI’ (target weight) and ‘WeightJ’ (structure
weights) emphasize or deemphasize the contribution of each target and
structure to the total cost.” Ex. 1006, 58. Thus, we determine Petitioner has
shown by a preponderance of the evidence that the subject matter of
claim 46 would have been obvious over the combination of Carol-1995 and
Viggars.

F. Obviousness Grounds Based on (1) Curran-5 and Carol-2 and
(2) Curran-5 and Carol-17
Petitioner contends the subject matter of claims 43, 44, and 46 would
have been obvious over the combination of Curran-5 and Carol-2. Pet. 41–
52. Petitioner also contends the subject matter of claims 43, 44, and 46
would have been obvious over the combination of Curran-5 and Carol-17.
Id. at 41–52. As discussed above, Petitioner has demonstrated that the
subject matter of claims 43, 44, and 46 would have been obvious over the
combination of Carol-1995 and Viggars, so we do not reach the grounds
based on (1) Curran-5 and Carol-2 and (2) Curran-5 and Carol-17. See SAS
Inst. Inc. v. Iancu, 138 S. Ct. 1348, 1359 (2018) (holding a petitioner “is
entitled to a final written decision addressing all of the claims it has
challenged”); Boston Sci. Scimed, Inc. v. Cook Grp. Inc., 809 F. App’x 984,
990 (Fed. Cir. 2020) (non-precedential) (recognizing that the “Board need
not address issues that are not necessary to the resolution of the proceeding”
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and, thus, agreeing that the Board has “discretion to decline to decide
additional instituted grounds once the petitioner has prevailed on all its
challenged claims”).

G. Petitioner’s Motion to Exclude Portions of Mr. Romesberg’s
Declaration
Petitioner moves to exclude paragraphs 13–18 from Mr. Romesberg’s
declaration (Exhibit 2048) under Federal Rules of Evidence 602 and 702.
Exclude Mot. 1–2, 9–14. Because we do not rely upon Exhibit 2048 in
rendering this Decision, we dismiss as moot Petitioner’s motion to exclude
paragraphs 13–18 of Mr. Romesberg’s declaration.

III. CONCLUSION
Petitioner has shown, by a preponderance of the evidence, that the
subject matter of claims 43, 44, and 46 would have been obvious over the
combination of Carol-1995 and Viggars.14

14 Should Patent Owner wish to pursue amendment of the challenged claims
in a reissue or reexamination proceeding subsequent to the issuance of this
Decision, we draw Patent Owner’s attention to the April 2019 Notice
Regarding Options for Amendments by Patent Owner Through Reissue or
Reexamination During a Pending AIA Trial Proceeding. See 84 Fed. Reg.
16,654 (Apr. 22, 2019). If Patent Owner chooses to file a reissue application
or a request for reexamination of the challenged patent, we remind Patent
Owner of its continuing obligation to notify the Board of any such related
matters in updated mandatory notices. See 37 C.F.R. § 42.8(a)(3), (b)(2).
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IV. ORDER
Accordingly, it is
ORDERED that claims 43, 44, and 46 of the ’096 patent are
unpatentable;
FURTHER ORDERED that Petitioner’s motion to exclude paragraphs
178, 181, 184, 191, 192, 194, and 196 of Exhibit 2037 is denied;
FURTHER ORDERED that Petitioner’s motion to exclude paragraphs
13–18 of Exhibit 2048 is dismissed as moot; and
FURTHER ORDERED that, because this is a Final Written Decision,
parties to this proceeding seeking judicial review of our decision must
comply with the notice and service requirements of 37 C.F.R. § 90.2.

In summary:

15 As explained above, we do not reach this ground. See supra § II.F.
16 As explained above, we do not reach this ground. See supra § II.F.
Claims 35 U.S.C. § Reference(s)/Basis
Claims
Shown
Unpatentable
Claims
Not shown
Unpatentable
43, 44,
46
103(a) Carol-1995,
Viggars
43, 44, 46
43, 44,
46
103(a)15 Curran-5, Carol-2
43, 44,
46
103(a)16 Curran-5, Carol-17
Overall
Outcome
43, 44, 46
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For PETITIONER:

Heidi Keefe
Xiaozhen YU
COOLEY LLP
hkeefe@cooley.com
syu@cooley.com

For PATENT OWNER:

Barry J. Coyne
Kent E. Baldauf, Jr.
Bryan P. Clark
THE WEBB LAW FIRM
bcoyne@webblaw.com
kbaldaufjr@webblaw.com
bclark@webblaw.com