Cytonome/ST, LLC

Patent Trials and Appeals Board

Sep 1, 2020

IPR2020-00550 (P.T.A.B. Sep. 1, 2020)

Trials@uspto.gov Paper 15
571-272-7822 Date: September 1, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE

BEFORE THE PATENT TRIAL AND APPEAL BOARD

NANOCELLECT BIOMEDICAL, INC.,
Petitioner,
v.
CYTONOME/ST, LLC,
Patent Owner.

IPR2020-00550
Patent 9,011,797

Before JO-ANNE M. KOKOSKI, WESLEY B. DERRICK, and
JAMES A. WORTH, Administrative Patent Judges.
DERRICK, Administrative Patent Judge.
DECISION
Denying Institution of Inter Partes Review
35 U.S.C. § 314, 37 C.F.R. § 42.4

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INTRODUCTION
Petitioner NanoCellect Biomedical, Inc., filed a Petition requesting
inter partes review of claims 1, 2, 5, 13, 16, 18, and 19 of U.S. Patent No.
9,011,797 B2 (“the ’797 patent”). Paper 2 (“Pet.”). Patent Owner
Cytonome/ST, LLC filed a Preliminary Response. Paper 6 (“Prelim.
Resp.”). As authorized, Petitioner also filed a Pre-Institution Reply (Paper
7, “Reply”) and Pre-Institution Supplemental Briefing (Paper 11), and Patent
Owner, in turn, also filed a Pre-Institution Sur-Reply (Paper 8) and a
Response to Petitioner’s Pre-Institution Supplemental Briefing (Paper 12).
We have authority to determine whether to institute an inter partes
review. 35 U.S.C. § 314; 37 C.F.R. § 42.4(a). We may not institute an inter
partes review “unless . . . there is a reasonable likelihood that the petitioner
would prevail with respect to at least 1 of the claims challenged in the
petition.” 35 U.S.C. § 314(a). Applying that standard, for the reasons set
forth below, we decline to institute an inter partes review because Petitioner
has not shown a reasonable likelihood that it would prevail in establishing
the unpatentability of any of claims 1, 2, 5, 13, 16, 18, and 19.
BACKGROUND
A. Real Parties in Interest
Petitioner identifies itself as the real party-in-interest. Pet. 3. Patent
Owner identifies itself and Inguran, LLC, as the real parties-in-interest.
Paper 4, 1.
B. Related Matters
The parties identify Cytonome/ST, LLC v. NanoCellect Biomedical,
Inc., No. 1:19-cv-00301-UNA (D. Del.) as a related proceeding. Pet. 3;
Paper 4, 1. The ’797 patent is one of a number of patents asserted in that
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district court proceeding. Pet. 3; Paper 4, 1. Other patents asserted are also
subject to filed inter partes review petitions, and are identified by Petitioner
as related proceedings: IPR2020-00545 (US 6,877,528 B2); IPR2020-00546
(US 9,339,850 B2); IPR2020-00547 (US 10,029,283 B2); IPR2020-00548
(US 8,623,295 B2); IPR2020-00549 (US 10,029,263 B2); and IPR2020-
00551 (US 10,065,188 B2). Pet. 3; Paper 4, 1.
C. The ’797 Patent (Ex. 1001)
The ’797 patent is titled “Microfluidic System Including a Bubble
Valve for Regulating Fluid Flow Through a Microchannel,” and issued on
April 21, 2015, from an application filed on June 19, 2012. Ex. 1001, at
[22], [45], [54]. The ’797 patent identifies related applications, including a
provisional application—the earliest filed—that was filed on April 17, 2002.
Id. at [60], [63], 1:5–19.
The ’797 patent relates to “[a] microfluidic system [that] includes a
bubble valve for regulating fluid flow through a microchannel.” Id. at [57].
Figure 16, reproduced below, depicts an apparatus that provides for
regulating fluid flow in a manner that allows sorting particles. Id. at 5:40–
42.
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Id., Fig. 16 (depicting a schematic of a particle sorting system). As
disclosed in the ’797 patent, “particle sorter 160 . . . for sorting particles,
such as cells. . . . comprises a first supply duct 162 for introducing a stream
of particles . . . a second supply duct 164 for supplying a carrier liquid . . . a
measurement duct 166, which branches into a first 172a and a second branch
172b at branch point 171,” and “[t]wo opposed bubble valves 10a and 10b
. . . in communication . . . with the measurement duct 166 through a pair of
opposed side passages 174a and 174b, respectively.” Id. at 11:40–57,
Fig. 16. In operation, and as depicted, “[l]iquid . . . partly fill[ing] these side
passages 174a and 174b . . . form[s] a meniscus 175,” and a provided
“external actuator 176” “actuat[es] the bubble valves 10a, 10b, . . .
momentarily caus[ing] a flow disturbance in the duct to deflect the flow
therein.” Id. at 11:57–61; see also Figs. 17A–17C (depicting operation of
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particle sorter 160 to sort particles flowing from left to right in the figures
into one or the other of first branch 172a and 172b). As to the operation of
the apparatus, the ’797 patent discloses that the external actuator increases
pressure within one of the two opposed bubble valves causing a transient
discharge of fluid from the associated side channel, which causes a sudden
increase in pressure at this point in the duct, which increased pressure causes
liquid to flow into the associated side channel of the second opposed bubble
valves because of the resilient properties of the reservoir of the second
bubble valve. Id. at 12:23–33.
D. Illustrative Claims
Independent claims 1 and 5 are illustrative of the claimed subject
matter.
1. A method for facilitating analysis or processing of a sample,
the method comprising:
flowing a sample through a microfluidic flow channel formed
in a substrate;
propagating a pressure pulse across the microfluidic flow
channel in a crosswise direction; and
dampening or absorbing the pressure pulse using a first
reservoir in fluid communication with the microfluidic flow
channel,
wherein the pressure pulse is used to sort one or more particles
suspended within the channel.
Ex. 1001, 13:41–51.
5. A microfluidic device adapted to facilitate analysis or
processing of a sample, the microfluidic device comprising:
a microfluidic flow channel formed in a substrate, the flow
channel having a width and a length that exceeds the width;
and
a first reservoir in fluid communication with the flow channel
adapted for dampening or absorbing a pressure pulse
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propagated across the width of the flow channel, wherein
the first reservoir is otherwise sealed from an exterior
environment.
Ex. 1001, 14:1–10.
E. Prior Art Relied Upon
Petitioner relies on the references listed below (Pet. 14–17):
Reference Date Exhibit No.
WO 00/70080 (“Wada”) Nov. 23, 2000 1006
WO 97/02357 (“Anderson”) Jan. 23, 1997 1012
US 5,101,978 (“Marcus”) Apr. 7, 1992 1005
The status of these references as prior art printed publications is not
contested by Patent Owner. See generally Prelim. Resp.
F. The Asserted Grounds of Unpatentability
Petitioner challenges the patentability of the claims on the following
grounds, relying on the Declaration from Bernhard H. Weigl, Ph.D.
(Ex. 1002). Pet. 5, 19–76.
Claim(s) Challenged 35 U.S.C. § Reference(s)/Basis
1, 2, 5, 13, 16, 18, 19 103 Wada
1, 2, 5, 13, 16, 18, 19 103 Wada, Anderson
1, 2, 5, 13, 16, 18, 19 103 Marcus, Anderson
ANALYSIS
A. Level of Ordinary Skill in the Art
Petitioner contends that a person of ordinary skill in the art “would
have had a bachelor’s or master’s degree in the field of bioengineering,
mechanical engineering, chemical engineering, or analytical chemistry; or a
bachelor’s or master’s degree in a related field and at least three years of
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experience in designing or developing microfluidic systems.” Pet. 12 (citing
Ex. 1002 ¶¶ 47–50).
Patent Owner reserves the right to dispute Petitioner’s proposed
definition of the level of ordinary skill in the art, but applies Petitioner’s
proposed definition “[s]olely for purposes of [the Patent Owner Preliminary
Response].” Prelim. Resp. 25.
On this record, we have no reason to fault Petitioner’s definition of
the level of ordinary skill and, therefore, adopt it for the purposes of this
Decision. We further note that the prior art itself demonstrates the level of
skill in the art at the time of the invention. See Okajima v. Bourdeau,
261 F.3d 1350, 1355 (Fed. Cir. 2001) (explaining that “specific findings on
the level of skill in the art . . . [are not required] ‘where the prior art itself
reflects an appropriate level and a need for testimony is not shown’”
(quoting Litton Indus. Prods., Inc. v. Solid State Sys. Corp., 755 F.2d 158,
163 (Fed. Cir. 1985))).
B. Claim Construction
We apply the claim construction standard from Phillips v. AWH
Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc). 37 C.F.R. § 42.100(b)
(2019).
Claim terms are generally given their ordinary and customary
meaning as would be understood by one with ordinary skill in the art in the
context of the specification, the prosecution history, other claims, and even
extrinsic evidence including expert and inventor testimony, dictionaries, and
learned treatises, although extrinsic evidence is less significant than the
intrinsic record. Phillips, 415 F.3d at 1312–1317. Usually, the specification
is dispositive, and it is the single best guide to the meaning of a disputed
term. Id. at 1315.
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Only those claim terms that are in controversy need to be construed
and only to the extent necessary to resolve the controversy. Nidec Motor
Corp. v. Zhongshan Broad Ocean Motor Co., 868 F.3d 1013, 1017 (Fed.
Cir. 2017); see also U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554,
1568 (Fed. Cir. 1997) (holding claim construction is not necessary when it is
not “directed to, or has been shown reasonably to affect, the determination
of obviousness”).
Petitioner contends that no “express claim constructions are required
for the Board to conclude the asserted prior art renders the challenged claims
unpatentable.” Pet. 10. Petitioner does, however, contend that Patent
Owner has made relevant “admissions about the meanings of claim terms in
the asserted patents.” Id. at 10–11. In particular, Petitioner maintains that
Patent Owner’s declarant in the district court proceeding has maintained
“that the term ‘reservoir’ as used in the challenged claims . . . should be
understood as a physical structure that contains fluid” (id. at 11 (citing
Ex. 1042, 20; Ex. 1043 ¶¶ 25–27, 31, 34, 44–48)), “that the term ‘absorbing’
as used in the challenged claims . . . means to receive, take up, or take in the
pressure pulse” (id. (citing Ex. 1042, 13–14, 18–19; Ex. 1043 ¶¶ 50–52)),
and “that the terms ‘dampen’ or ‘dampening’ . . . means to meaningfully
dissipate so as to prevent a pressure wave from affecting the flow of the
remaining particles in the stream of particles” (id. (citing Ex. 1043 ¶¶ 56–
57; Ex. 1042, 13–14, 18–19)).
Patent Owner contends that the terms “pressure pulse” and “first
reservoir” should be construed. Prelim. Resp. 25. Patent Owner contends
that that “the plain and ordinary meaning [of ‘pressure pulse’] . . . is ‘a
transient increase in pressure.’” Id. at 26. Patent Owner further contends
that the express language of the claim, the specification, and prosecution
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history supports its position that a “pressure pulse” is a transient increase in
pressure. Id. at 26–29. Patent Owner contends that “the Board should
confirm that the prior art must disclose the ‘functional’ language, . . . that
[the first reservoir] must be [adapted] for ‘dampening or absorbing the
pressure pulse’ . . . propagated across the flow channel.” Id. at 29.
Petitioner responds that a “pressure pulse” is a transient increase in
pressure and that these claim terms do not “require that the flow stream (as
opposed to the pressure pulse it generates) cross the entire channel and enter
the buffer/reservoir.” Reply 3.
For the purposes of this Decision, based on the current record, we
determine that the claim term “pressure pulse” is “a transient increase in
pressure” because this is the plain and ordinary meaning of the term and is
consistent with the use of this term in the ’797 patent. We further note that
this construction is consistent with the district court’s determination that the
claim term “pressure pulse” has its “plain and ordinary meaning.” Ex. 2012,
5–6.
We also determine, for the purposes of this Decision and based on the
current record, that the claim term “reservoir” has its plain and ordinary
meaning of “a physical structure that contains fluid.” We decline to reach
any determination as to the nature or type of fluid, however, as it is not
necessary to resolve the issues here. Wellman, 642 F.3d at 1361. This
determination is consistent with the construction adopted by the district
court. Ex. 2012, 4–5. As to the recited reservoir being “adapted for
dampening or absorbing a pressure pulse” (claim 1), this and other
limitations, are addressed to the limited extent necessary in reaching our
Decision that Petitioner has not established a reasonable likelihood that it
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would prevail in establishing the unpatentability of at least one challenged
claim. Wellman, 642 F.3d at 1361.
C. Principles of Law
Petitioner has asserted that each of the challenged claims of
the ’797 patent is unpatentable as obvious under 35 U.S.C. § 103. A claim is
unpatentable under § 103 if “the differences between the subject matter
sought to be patented 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 skill in
the art; and (4) objective evidence of nonobviousness, i.e., secondary
considerations. See Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966).
“In an [inter partes review], the petitioner has the burden from the
onset to show with particularity why the patent it challenges is
unpatentable.” Harmonic Inc. v. Avid Tech., Inc., 815 F.3d 1356, 1363 (Fed.
Cir. 2016) (citing 35 U.S.C. § 312(a)(3) as “requiring inter partes review
petitions to identify ‘with particularity . . . the evidence that supports the
grounds for the challenge to each claim’”); cf. Intelligent Bio-Systems, Inc. v.
Illumina Cambridge, Ltd., 821 F.3d 1359, 1369 (Fed. Cir. 2016) (quoting
35 U.S.C. § 312(a)(3)) (addressing “the requirement that the initial petition
identify ‘with particularity’ the ‘evidence that supports the grounds for the
challenge to each claim’”). This burden never shifts to Patent Owner. See
Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378
(Fed. Cir. 2015) (citing Tech. Licensing Corp. v. Videotek, Inc., 545 F.3d
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1316, 1326–27 (Fed. Cir. 2008)) (discussing the burden of proof in inter
partes review). Furthermore, Petitioner cannot satisfy its burden of proving
obviousness by employing “mere conclusory statements.” In re Magnum
Oil Tools Int’l, Ltd., 829 F.3d 1364, 1380 (Fed. Cir. 2016).
Thus, to prevail in an inter partes review, Petitioner must explain how
the proposed combinations and/or alterations of the prior art would render
them unpatentable as obvious. At this preliminary stage, we determine
whether the information in the Petition shows there is a reasonable
likelihood that Petitioner would prevail in establishing that at least one of the
challenged claims would have been obvious over the proposed combinations
and/or alterations of the prior art.
D. Overview of Prior Art
1. Wada (Ex. 1006)
Wada relates to microfluidic devices, and also describes “methods for
providing substantially uniform flow velocity to flowing particles” and
“[m]ethods of sorting members of particle populations, such as cells and
various subcellular components.” Ex. 1006, at [57]. An example of a device
described in Wada is depicted schematically in Figure 22, reproduced below:
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Id. at Fig. 22 (depicting a schematic representation of a particle sorting
configuration). As disclosed in Wada, “cells 2200 are generally flowed into
a main microchannel that includes . . . sets of opposing microchannels for
focusing and/or otherwise directing the flow of cells 2200 using
hydrodynamic flow 2202” and operation of the disclosed microchannels
“direct[s] selected cells 2208 (e.g., fluorescently-labeled cells) and non-
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selected cells 2206 into, in this case, one of two microchannels, each
terminating in particular collection wells 2210.” Id. at 19:24–20:2, Fig. 22.
Detector 2204 is used to identify cells so that they can be sorted as required.
Id.
2. Anderson (Ex. 1012)
Anderson relates to “a miniaturized integrated nucleic acid diagnostic
device and system (522),” which “device (522) . . . is generally capable of
performing . . . sample acquisition and preparation operations in
combination with . . . sample analysis operation.” Ex. 1012, at [57].
Anderson discloses the use of controllable microvalves and micropumps to
direct fluid samples in a miniature fluidic system. See, e.g., 2:30–34, 5:14–
26, 9:24–27, 46:23–29, 63:1–13. Anderson sets forth that valves used “can
employ a variety of structures, but [are] preferably . . . flexible diaphragm
type valve[s] which may be displaced pneumatically, magnetically or
electrically.” Id. at 53:6–10, see also id. at 38:23–27 (identifying different
ways that a diaphragm valve may be deflected to actuate). Anderson also
sets forth a number of different types of pumps, and alternatives to pumps,
including providing pressure or motive force to the liquid sample external to
the microfluidic device. See, e.g., id. at 46:23–29, 62:18–64:31. Among the
pumps disclosed, Anderson sets forth that “pumps which hav[e] a bulging
diaphragm” and those “powered by a piezoelectric” actuator “may be used to
move the sample through the various operations of the device.” Id. at
62:18–63:13. Anderson further notes that such a “diaphragm pump will
generally be fabricated from any one of a variety of flexible materials, e.g.,
silicon [sic], latex, teflon, mylar, and the like.” Id. at 45:8–12.
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3. Marcus (Ex. 1005)
Marcus relates to “[a] fluidic sorting device for the separation of two
or more visually different materials or materials which react differently to an
externally applied force. . . . [that] are suspended in a fluid.” Ex. 1005, at
[57]. The device includes a “machine vision apparatus” that decides
whether a particle is to be sorted out, which “controls a fluidic logic element
which facilitates the separation of the particles or materials.” Id. Such a
device is depicted schematically in Figure 1, reproduced below:

Id. at Fig. 1 (depicting a schematic representation of a fluidic sorting
device). The device is described as including: a machine vision apparatus
16, which includes a machine vision camera lens 9, an image capture device
10, an image interpretation device 11, and a decision control device 12, and
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optionally a counter device 13; a fluidic controller device 14; and a fluidic
logic element 1, which includes input flow port 2, control ports 3 and 4, and
output ports 5 and 6. Id. at 3:29–48, Fig. 1. As described, the machine
vision apparatus detects and arrives at a decision as to particulate matter 7
and 8, and relays that decision to fluidic controller device 14, which
transmits signals via leads 17 and 18 to control ports 3 and 4 (of fluidic logic
element 1) in order to sort particulate matter 7 and 8 into separate output
ports 5 and 6 as required. Id. at 3:29–62.
E. Asserted Unpatentability Over Wada
Petitioner contends that claims 1, 2, 5, 13, 16, 18, and 19 are
unpatentable under 35 U.S.C. § 103 over Wada. Pet. 5, 19–47. Patent
Owner disagrees. Prelim. Resp. 40–61. We focus our discussion on the
dispositive claim limitations of independent claims 1 and 5.
1. Petitioner’s Contentions
Petitioner first contends that “some of the embodiments [of Wada] . . .
reasonably would have been viewed by a [person of ordinary skill in the art]
as anticipating the claimed subject matter” and would, accordingly, render
the claims obvious. Pet. 19 (citing Ex. 1002 ¶¶ 108–112; Ex. 1006, Figs.
22–23); In re McDaniel, 293 F.3d 1379, 1385 (Fed. Cir. 2002) (“anticipation
is the epitome of obviousness”). Petitioner also contends that a person of
ordinary skill in the art “would have arrived at the claimed subject matter
with a reasonable expectation of success in view of Wada” and that “all
aspects of the claimed subject matter are found in Wada.” Pet. 19 (citing
Ex. 1002 ¶¶ 112, 123–151, 206).
Relying on Wada’s teaching of “the opposed sorting microchannel
structures in Figures 22 and 23,” Petitioner contends that “Wada discloses
and illustrates employing a reservoir opposite the sorting microchannel.” Id.
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at 20 (citing Ex. 1002 ¶¶ 133–151; Ex. 1006, 8:6–23, 23:19–28, Figs. 22–
23). Petitioner also relies on Dr. Weigl’s testimony that “it was
conventional and well-known to use an opposing vent, chamber,
passageway, or other compliance device to isolate the effects of the control
flow characteristics.” Id. (citing Ex. 1002 ¶ 81, 137–138).
a) Independent Claim 1
Petitioner contends that Wada discloses the use of “fluid direction
components to propagate a pressure pulse across the microfluidic flow
channel in a crosswise direction.” Pet. 23–24 (citing Ex. 1006, 4:1–5, 18:5–
9; Ex. 1002 ¶¶ 123–124). Petitioner uses an annotated version of Wada’s
Figures 22 and 23, reproduced below, to depict its contentions:

Id. at 24 (citing Ex. 1006, Figs. 22–24, Ex. 1002 ¶¶ 123–124) (depicting
schematic representations of a particle sorting configuration with
Petitioner’s additions of opposing colored arrows surrounding elements
2202 and 2302 separated by the phrase “Pressure Pulse”)). Petitioner
contends that Wada “explains[] [that] pressure-based flow can be provided
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via a pressure pulse across the microfluidic flow channel in a crosswise
direction,” and that this can “‘nudge materials across the width of a first
channel,’ in order to ‘direct sample flow towards or away from’ a first flow
channel, and ‘into, e.g., an additional intersecting channel or into a channel
region.’” Id. at 24–25 (some internal quotations omitted) (citing Ex. 1006,
18:26–19:13; Ex. 1002 ¶¶ 123–124).
Petitioner contends “Wada also discloses using a first reservoir to
dampen or absorb the pressure pulse” (id. at 27 (citing id. at 23–27; Ex. 1002
¶¶ 133–142)) or, as recited in claim 1, “dampening or absorbing the pressure
pulse using a first reservoir in fluid communication with the microfluidic
flow channel.”
Petitioner reproduces Figures 22 and 23 of Wada, with annotation
identifying what Petitioner contends is a “first reservoir.”

Pet. 27–28 (citing Ex. 1006, Figs. 22–23; Ex. 1002 ¶¶ 133–134) (depicting
schematic representations of a particle sorting configuration of Figure 23 on
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the left and Figure 22 on the right, with Petitioner’s annotations that
highlight in yellow the areas it labels as “First Reservoir”). In each of the
annotated figures, Petitioner has identified the “opposing microchannel
structure disposed opposite of the actuated sorting microchannel” as a
“reservoir,” where the actuated microchannel has within it an arrow, which
Petitioner identifies as a “pressure pulse.” Id. (citing Ex. 1006, 19:23–
20:14). Petitioner further contends that “Wada discloses that the opposed
sorting microchannel structures may each comprise a reservoir or other
cavity.” Id. at 28 (citing Ex. 1006, 20:23–25, 23:19–26; 37:29–32, 38:11–
17; 39:19–33; Ex. 1002 ¶¶ 134–137). Petitioner further contends that
“[e]ach of Figures 22 and 23 discloses a transient pressure pulse (i.e., 2302
and 2202 . . . ) flowing from an actuated sorting microchannel structure into
the opposing sorting microchannel structure.” Id. at 29. Petitioner further
contends that a person of ordinary skill in the art—in the context of Wada’s
microfluidic devices and how Wada discloses they operate—“would have
understood . . . [that the opposing] microchannel structure . . . includes a
reservoir adapted for dampening or absorbing the transient pressure pulse
propagated across the microfluidic channel.” Id. (citing Ex. 1002 ¶ 135).
Dr. Weigl’s testimony is grounded on it being understood that the “opposed
microchannel structure[s] . . . is configured to receive, dampen, and absorb
the pressure pulse because the structure opening is aligned with the direction
of the pressure pulse . . . so that fluid is allowed to flow into the opening and
flow towards the reservoir.” Ex. 1002 ¶ 135.
Relying on Dr. Weigl’s testimony as support, Petitioner contends
Wada’s microfluidic devices operate by allowing fluid “to flow into the
opening [of non-actuated, opposed sorting microchannel structure] and flow
towards the reservoir” (Pet. 30 (citing Ex. 1002 ¶¶ 135–139)), and “that the
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pressure pulse is allowed to flow into the opening and be absorbed by the
buffer (id. (Ex. 1002 ¶¶ 135, 138–139, 143)).
Petitioner also contends that Wada “suggests an embodiment of the
microfluidic device of Figure 24 similarly comprising an opposed sorting
microchannel structure” that, in addition to what is depicted, includes a “first
reservoir” opposite branched particle sorting microchannel 2418. Pet. 29–30
(citing Ex. 1002 ¶ 140; Ex. 1006, 49:13–20, Fig. 24).
Petitioner also contends that “using a reservoir opposite to the source
of the pressure pulse for absorbing said pressure pulse was well-known in
the art.” Id. at 31 (citing Ex. 1002 ¶¶ 140–142).
b) Independent Claim 5
Petitioner contends that, as set forth for claim 1, “Wada discloses a
first reservoir in fluid communication with the flow channel adapted for
dampening or absorbing a pressure pulse propagated crosswise across the
microfluidic flow channel.” Pet. 36 (citing id. at 23–31; Ex. 1002 ¶¶ 123–
150). Petitioner again relies on Wada’s disclosure of “opposed sorting
microchannel structures wherein one . . . comprises an actuator for
propagating a pressure pulse” (id. at 36–37 (citing Ex. 1006, 20:23–25,
23:19–26, 37:29–32, 38:11–17, 39:19–33)), and that a person of ordinary
skill in the art “would have understood [that] the non-actuated opposed
sorting microchannel structure . . . contains a fluid and receives and absorbs
the pressure pulse” (id. at 37 (citing Ex. 1002 ¶¶ 135, 186)). Petitioner also
contends that Wada’s non-actuated opposed sorting microchannel structure
would include a reservoir such that displaced fluid would flow through the
opening and into that reservoir and, thus, dampen or absorb the pressure
pulse. Id. (citing Ex. 1002 ¶¶ 169–172).
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2. Patent Owner’s Contentions
Patent Owner contends that Petitioner fails to show both that Wada
discloses a “pressure pulse” (Prelim. Resp. 43–52) and a “reservoir” for
“dampening or absorbing” the “pressure pulse” (id. at 52–58). Patent Owner
further contends that modifying Wada to achieve the claimed invention
would modify the operating principle of Wada’s device, and that Petitioner
relies on impermissible hindsight. Id. at 58–61.
Patent Owner contends that Wada does not disclose a “pressure pulse”
both because the “‘hydrodynamic flow’ that Petitioner identifies as the
‘pressure pulse’ fails to even reach any alleged ‘reservoir’” (id. at 43–44
(citing Ex. 2001 ¶¶ 117–119)), and because it “is a continuous flow of fluid
that is increased/accelerated when a selected particle is detected, not a
‘pressure pulse’ that simply disrupts the flow in the channel without adding
fluid” (id. at 44 (citing Ex. 2001 ¶¶ 73, 100, 119–123)). See also id. at 44–
50.
Patent Owner contends that “there is no ‘reservoir’ for ‘dampening or
absorbing’ th[e] pressure pulse as required in claims 1 and 5.” Id. at 52.
Patent Owner highlights that Figure 24 of Wada, cited by Petitioner, “lacks
any structure on the opposite side of the transport channel.” Id. at 52–53
(citing Pet. 27–31, 36–37; Ex. 1006, Fig. 24). Patent Owner further
contends that there is no sufficient explanation provided by Petitioner for
why Wada would be modified to include an opposing microchannel
structure to the microchannels provided in Wada for dispensing fluid into the
main microchannel. Id. at 53–56. As to Petitioner’s and Dr. Weigl’s
reasoning grounded on “Wada’s opposed side channel as ‘non-actuated’ and
‘aligned’ with the actuated side channel,” such that “it therefore constitutes
the claimed ‘reservoir’ or, alternatively, that a [person of ordinary skill in the
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21
art] would simply know to attach a dampening or absorbing ‘reservoir,’”
Patent Owner explains, with supporting testimony by Dr. Arnold, that “[n]o
such teaching or suggestion is found in Wada.” Id. at 55–56 (citing Pet. 27–
31, 37; Ex. 2001 ¶¶ 59, 97, 127–128).
Patent Owner contends that Petitioner fails to sufficiently establish
that a person of ordinary skill in the art had reason to modify Wada, and that
the modification necessary to achieve the claimed invention would be
prohibited hindsight reconstruction. Id. at 58–61.
Patent Owner also addresses a number of “background references”
cited in Dr. Weigl’s declaration—and in the citation to the portions of
Dr. Weigl’s declaration—addressing both the contention that claimed
“pressure pulse” was known in the art (id. at 51–52) and the contention that
reservoirs adapted to dampen or absorb a pressure pulse were known in the
art (id. at 57–58).
3. Analysis
On this record, Petitioner’s contentions that Wada discloses
“dampening or absorbing the pressure pulse using a first reservoir in fluid
communication with the microfluidic flow channel” (claim 1) or “a first
reservoir in fluid communication with the flow channel adapted for
dampening or absorbing a pressure pulse propagated across the width of the
flow channel” (claim 5) amount to little more than assertions, and we find
them lacking in support. Wada’s Figure 22 is illustrative, and depicts top
and bottom pairs of opposing microchannels that introduce hydrodynamic
flow into the main microchannel through which particles to be sorted pass.
See, e.g., Ex. 1006, 19:27–20:2. Specifically, Wada states that “[o]ne set of
opposing microchannels is typically located, e.g., upstream from detector
2204 for simultaneously introducing hydrodynamic flow 2202 from both
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microchannels to focus cells 2200.” Id. at 19:27–29. Wada also states that
“[a] second set of opposing microchannels is typically located downstream
from detector 2204 for introducing at least one hydrodynamic flow 2202 so
as to direct selected cells 2208 . . . and non-selected cells 2206 into, in this
case, one of two microchannels, each terminating in particular collection
wells 2210.” Id. at 19:29–20:2. Thus, both microchannels are for providing
such hydrodynamic flow into the main microchannel, as depicted in each of
Figures 22 and 23.
Wada does not indicate that any of the side microchannels is a
reservoir that absorbs or dampens a pressure pulse. The required function of
the side microchannels is wholly different, and there is no showing that what
is required to absorb or dampen a pressure pulse is included in the disclosed
structure for introducing hydrodynamic flow into the central microchannel
that cells to be sorted pass through. See generally Pet. Petitioner and
Dr. Weigl rely on Wada describing that the “fluid direction components
‘nudge’ materials across the width of the first channel,’” however, that is
insufficient to support Petitioner’s contention that “the opposed
microchannel structure in each of Figures 22 and 23 . . . includes a reservoir
adapted for dampening or absorbing the transient pressure pulse.” Pet. 24–
25, 27–29; Ex. 1002 ¶¶ 123–124, 135 (“One of ordinary skill in the art
would have understood that the non-actuated opposed microchannel
structure . . . is configured to receive, dampen, and absorb the pressure pulse
because the structure opening is aligned with the direction of the pressure
pulse (substantially perpendicular to the main microchannel).”). On the
record before us, we do not see sufficient basis to conclude that Wada
includes a reservoir adapted for dampening or absorbing a pressure pulse
such as is recited in the claims. As to Dr. Weigl’s testimony to the contrary,
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23
we find it conclusory, largely unsupported as applied to Wada, and entitled
to little weight. Dr. Weigl contends that the orientation of opposing
microchannels across from one another indicates that one, or both, of them
function as a reservoir that is adapted to dampening or absorbing a pressure
pulse, and then points to structures in other references that are not shown to
be similar or to have the same function as support for his contentions. See
Ex. 1002 ¶¶ 133–139. This position is not adequately supported, though,
particularly where there is insufficient explanation as to why what Dr. Weigl
contends is disclosed in the further “background references” is what is also
present in Wada’s disclosed structure, and what would follow based on its
function. See generally Pet.; Ex. 1002. For example, while Dr. Weigl
contends that the use of microchannel structure geometry with a channel,
chamber, or reservoir structure across the source of the transient pressure
pulse for dampening or absorbing the transient pressure pulse was well
known, and that it was understood that they can be used to mitigate
undesirable flow fluctuations (see, e.g., Ex. 1002 ¶¶ 126–139), it simply
does not follow that a pair of oppositely-oriented microchannels as disclosed
in Wada have similar structure or that they function in like manner.
Petitioner fails to set forth clearly how the structures are sufficiently similar
at a level of detail sufficient to establish like function. See generally Pet.
As discussed above, as to the “first reservoir . . . adapted for
dampening or absorbing a pressure pulse propagated across the width of the
flow channel” (claim 5) or “dampening or absorbing the pressure pulse using
a first reservoir” (claim 1), what Wada discloses falls short, and Petitioner
provides no reasonable basis for modifying what is, in fact, disclosed in
Wada to arrive at the claimed invention. See generally Pet. Instead,
Petitioner merely sets forth what one of ordinary skill in the art could have
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done. This is not sufficient to reasonably support a ground of obviousness.
See Belden Inc. v. Berk-Tek LLC, 805 F.3d 1064, 1073 (Fed. Cir. 2015)
(“[O]bviousness concerns whether a skilled artisan not only could have
made but would have been motivated to make the combinations or
modifications of prior art to arrive at the claimed invention.”). Further,
“[c]are must be taken to avoid hindsight reconstruction by using ‘the patent
in suit as a guide through the maze of prior art references, combining the
right references in the right way so as to achieve the result of the claims in
suit.’” Grain Processing Corp. v. American Maize-Prods. Co., 840 F.2d
902, 907 (Fed. Cir. 1988) (quoting Orthopedic Equip. Co. v. United States,
702 F.2d 1005, 1012 (Fed. Cir. 1983)). Here, absent a sufficient explanation
for why the relied on opposing microchannels actually function to dampen
or absorb a pressure pulse, or would be adapted to do so, there is an
insufficient showing that the ground set forth by Petitioner is not grounded
on hindsight reconstruction. See Grain Processing, 840 F.2d at 907.
Petitioner fails, accordingly, to meet its burden for instituting inter
partes review on the basis of Wada. See Harmonic Inc., 815 F.3d at 1363.
F. Asserted Unpatentability Over Wada and Anderson
Petitioner contends that claims 1, 2, 5, 13, 16, 18, and 19 are
unpatentable under 35 U.S.C. § 103 over Wada and Anderson. Pet. 5, 48–
53. Petitioner contends that “Anderson provides additional disclosures
regarding specific actuators, including the use of a reservoir or chamber
suitable for generating or absorbing a pressure pulse.” Id. at 48. Patent
Owner contends that Petitioner fails to establish that Anderson discloses the
limitations missing from Wada, and why the two references would be
combined. Prelim. Resp. 61–65. We focus our discussion on the dispositive
claim limitations of independent claims 1 and 5.
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1. Petitioner’s Contentions
Petitioner contends that Wada would have directed a person of
ordinary skill in the art “to Anderson to provide additional details on
actuators useful to provide fluid flow in Wada’s ducts.” Pet. 48 (citing Ex.
1006, 43:13–14; Ex. 1002 ¶¶ 208–211). In particular, Petitioner relies on
Wada “stat[ing]: Examples of microfabricated pumps have been widely
described in the art. See, e.g., published international Application No.
WO 97/02357 [Anderson].” Id. at 49 (citing Ex. 1012, 43:13–14).
On this basis, Petitioner contends that a person of ordinary skill in the
art “would have been motivated to look to the combined teachings of Wada
and Anderson with a reasonable expectation of success because she would
have recognized that Anderson’s microfabricated pumps were useful . . . for
actuating Wada’s fluid direction components for sorting the particles and
were capable of generating pressure-based fluid flow in ducts.” Id. at 49–50
(citing Ex. 1002 ¶¶ 208–211).
Petitioner contends that “[i]n view of the teachings of Wada and
Anderson, a [person of ordinary skill in the art] would have had good reason
and a reasonable expectation of success to use the specific diaphragm pump,
as taught by Anderson, in the method and microfluidic device of
independent claims 1 and 5, as disclosed by Wada.” Id. at 51–52 (citing
Ex. 1002 ¶¶ 208–211). Petitioner contends in particular that a person of
ordinary skill in the art “would have had good reason to look to Anderson
for further discussion regarding actuators for generating pressure pulses,”
and that “specific embodiments utiliz[e] . . . features that further
demonstrates the obviousness of independent claims 1 and 5.” Id. at 51
(citing Ex. 1002 ¶¶ 208–211). Petitioner contends that Anderson teaches
“‘[p]umping devices that are particularly useful in a variety of
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micromachined pumps,’ including those with ‘a bulging diaphragm,’” and
provides an example that “incorporate[s] a diaphragm pump as one surface
of the chamber,” while “noting that this ‘diaphragm pump will generally be
fabricated from any one of a variety of flexible materials . . .’” Id. at 51
(citing Ex. 1012, 38:17–27, 45:3–12, 63:1–13).
2. Patent Owner’s Contentions
Patent Owner contends that the combination with Anderson fails to
remedy the deficiencies of Wada as to both the claimed “pressure pulse” and
“first reservoir” that dampens or absorbs it. Prelim. Resp. 61–62 (citing
Ex. 2001 ¶¶ 79–86, 144–146, 162). Patent Owner also contends that
attaching Anderson’s non-pulsating pumps to Wada’s side channels would
be improper hindsight reconstruction of the claims. Id. at 62. Patent Owner
also contends Petitioner fails to show that a person of ordinary skill in the art
had reason to combine Wada and Anderson (id. at 62–65). Patent Owner’s
arguments focus on its contention that the pumping function establishes a
continuous flow through the transport channel, and that there would be no
reason to look to references such as Anderson given Wada’s extensive
disclosure on sorting. Id. at 63–64.
3. Analysis
On this record, Petitioner fails to sufficiently establish that it would
have been obvious to modify Wada with the teachings of Anderson as would
be required to meet the claims. As set forth above in its ground relying
solely on Wada, Petitioner fails to sufficiently establish that Wada discloses
or renders obvious a “first reservoir . . . adapted for dampening or absorbing
a pressure pulse propagated across the flow channel” (claim 5), or
“dampening or absorbing the pressure pulse using a first reservoir”
(claim 1). Petitioner’s proposed combination with Anderson does not
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remedy these deficiencies, in large part, because the actuators and
micropumps in Anderson are not shown to be limited to those that would
dampen or absorb a pressure pulse. See generally Pet.; Ex. 1012. Petitioner
does identify actuators and pumps that include a diaphragm in Anderson,
and that such diaphragm pumps include a flexible material as a diaphragm.
Pet. 51. What is lacking, however, is a sufficient reason for a person of skill
in the art to pick a diaphragm pump instead of any of the other micropumps
disclosed in Anderson, and then include it in the device of Wada. See, e.g.,
Ex. 1012, 2:30–34, 5:14–26, 9:24–27, 46:23–29, 63:1–13. Further, while
Petitioner relies on the inclusion of a flexible element as meeting the
limitation, it is not clear that even a micropump including a flexible
diaphragm is adapted to dampen or absorb a pressure pulse simply because it
includes a flexible element, as Anderson discloses that the deflectable
diaphragm flexible elements can be deflected by a variety of methods, not all
of which would appear to allow for deflection by a pressure pulse. See, e.g.,
id. at 38:23–27.
In sum, as above, Petitioner sets forth merely what the skilled artisan
could have made, and not a sufficient basis for what they would have been
motivated to make. See Belden Inc., 805 F.3d at 1073. Also as above, there
is an insufficient showing that the ground set forth by Petitioner is not
grounded on hindsight reconstruction. See Grain Processing, 840 F.2d at
907.
Petitioner fails, accordingly, to meet its burden for instituting inter
partes review on the basis of Wada and Anderson. Harmonic Inc., 815 F.3d
at 1363.
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G. Asserted Unpatentability Over Marcus and Anderson
Petitioner contends that claims 1, 2, 5, 13, 16, 18, and 19 are
unpatentable under 35 U.S.C. § 103 over Marcus and Anderson. Pet. 5, 53–
76. Petitioner relies on Marcus’s description of a fluidic sorting device that
combines conventional sensors, fluidic sorting devices, and fluidic logic
elements produced using conventional micromachining technology, and on
Anderson’s disclosure of conventional fluidic sorting components for use in
microfluidic systems. Id. at 53–54. Patent Owner contends that Petitioner
fails to establish that Marcus and Anderson disclose the recited “pressure
pulse” and “first reservoir” that dampens or absorbs the “pressure pulse,”
and that a person of ordinary skill in the art would have had reason to
combine Marcus and Anderson to achieve the claimed invention. Prelim.
Resp. 65–72. We again focus our discussion on the dispositive claim
limitations of independent claims 1 and 5.
1. Petitioner’s Contentions
Petitioner contends that Marcus and Anderson disclose or suggest all
limitations of claims 1, 2, 5, 13, 16, 18, and 19.
a) Claim 1
Petitioner relies on Marcus’s disclosure of a device that “deflect[s] a
particle in [a] stream of particles to facilitate sorting” as depicted in
Figure 1. Pet. 57–58. Petitioner contends that Marcus discloses “detection
of a selected particle . . . [that] triggers the fluidic controller device 14 to
signal fluidic control port (4) to redirect the selected particle . . . into a
selected outlet channel (5)” and also the “detection of a non-selected particle
. . . [that] triggers the fluidic controller device 14 to signal fluidic element
control port (3) to direct the non-selected particles into the outlet for the non-
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selected particles.” Id. (citing Ex. 1005, at [57], 2:49–66, 3:43–62, 5:13–6:2,
Fig. 1; Ex. 1002 ¶¶ 227–230). Figure 1 of Marcus is reproduced below.

Ex. 1005, Fig. 1 (depicting a schematic representation of a fluidic sorting
device).
Petitioner contends that “Marcus teaches implementing its invention
using conventional fluidic sorting components” and, relying on testimony
from Dr. Weigl, that “it would have been conventional to implement
Marcus’s invention using actuators that propagate a pressure pulse across the
flow channel.” Pet. 58 (citing Ex. 1005, 2:7–10, 3:8–12; Ex. 1002 ¶¶ 232–
234). Petitioner then relies on “Anderson disclos[ing] conventional actuator
and pumps . . . [for] microfluidic devices during the relevant time” (id. at
59–60 (citing Ex. 1006, 43:14; Ex. 1012, 2:29–34, 28:1–29, 34:5–21, 37:13–
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28)), identifies some specific examples that include chambers and
diaphragms that are deflected to displace fluid (id. at 60 (citing Ex. 1012,
44:28–46:44)), and contends that a person of ordinary skill in the art “would
have recognized these conventional actuators were suitable for
implementing Marcus’s microsorter teachings” (id. (citing Ex. 1002 ¶¶ 228–
229)).
Petitioner further relies on “Marcus disclos[ing] dampening or
absorbing the pressure pulse using a first reservoir in fluid communication
with the microfluidic flow channel,” with “Figure 1 depict[ing] a reservoir in
the form of an opposing microchannel structure disposed opposite the
actuated sorting microchannel structure (through which the actuator
selectively applies a pressure pulse represented by the arrow associated with
fluidic control port 4).” Id. at 60–61 (citing Ex. 1005, 3:28–62, Fig. 1;
Ex. 1002 ¶¶ 237–239).
Petitioner asserts that a person of ordinary skill in the art “would
recognize Marcus and Anderson as teaching a pressure pulse propagated
from one of the opposed sorting microchannel structures . . . and toward the
non-actuated, opposed sorting microchannel structure.” Id. at 61–62 (citing
Ex. 1005, 3:28–62, Fig. 1; Ex. 1012, 5:11–31, 20:6–24, 28:3–29, 38:1–39:4,
46:25–51:30, 62:18–67:6; Ex. 1002 ¶ 240). Petitioner further asserts that
“this symmetrical geometry, wherein opposing ends of a cross channel are
adapted to individually actuate and individually dampen or absorb the
resulting transient pressure pulse, was well-reported and well known in the
art as allowing for more precise flow manipulations during particle sorting”
(id. at 62–63 (citing Ex. 1002 ¶¶ 241–242)), and, on this basis, that a person
of ordinary skill in the art “would thus recognize the disclosures of Marcus
and Anderson as teaching dampening or absorbing the pressure pulse using a
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first reservoir in fluid communication with the microfluidic flow channel”
(id. at 63 (citing Ex. 1002 ¶¶ 237–243)).
b) Claim 5
Petitioner contends that, as set forth for claim 1, “Marcus and
Anderson teach a first reservoir in fluid communication with the flow
channel adapted for dampening or absorbing a pressure pulse propagated
crosswise across the microfluidic flow channel.” Pet. 67 (citing id. at 55–64;
Ex. 1002 ¶¶ 256–257; Ex. 1005, Fig. 1; Ex. 1012, 5:11–31, 20:6–24, 28:3–
29, 38:1–39:4, 46:25–51:30, 62:18–67:6).
2. Patent Owner’s Contentions
Patent Owner highlights that Marcus “provides no specifics on its
‘sorting apparatus’” (Prelim. Resp. 66), and that the argument “that one of
the two opposed control ports must dampen or absorb the pressure pulse
simply because a control port is ‘disposed opposite the actuated’ port” is
deficient (id. at 68–69 (citing Pet. 60; Ex. 2001 ¶ 167)). In particular, Patent
Owner contends that “Marcus . . . certainly never describes employing a
[cross-channel] ‘pressure pulse’ for sorting” (id. at 66 (citing Ex. 2001
¶¶ 152–159)), and that there is no basis for control ports 3 or 4 in Marcus
being adapted to dampen or absorb a pressure pulse (id. at 68–69). Patent
Owner highlights that Marcus depicts both control port 3 and 4 as indicating
supplied flow and argues that “the mere fact that control ports are opposite
one another does not mean one of them ‘dampen[s] or absorb[s]’ fluid or
pressure.” Id. (citing id. at 52–58; Ex. 2001 ¶ 167). Patent Owner further
contends that Anderson does not address or remedy these deficiencies in
Marcus (id. at 66–67, 69) and that Petitioner is “again endow[ing] structures
with the claimed functions based on hindsight” (id. at 69). Patent Owner
further contends that Petitioner’s rationale to combine Marcus and Anderson
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falls short because “there was no reason to combine components from the
prior art and arrange them as claimed.” Id. at 70. Patent Owner highlights
that Petitioner argues that person of ordinary skill in the art “would have
recognized the utility of using known actuators . . . to generate a pressure
pulse to sort individual particles” (id. at 71 (citing Pet. 53)), but that
“Petitioner does not specify why a [person of ordinary skill in the art] would
incorporate such components into Marcus” (id. at 72).
3. Analysis
On this record, Petitioner fails to sufficiently establish that it would
have been obvious to modify Marcus with the teachings of Anderson as
would be required to meet the claims. As highlighted by Patent Owner,
there is insufficient basis set forth by Petitioner for Marcus to reasonably
constitute disclosure of a “first reservoir . . . adapted for dampening or
absorbing a pressure pulse propagated across the flow channel” (claim 5), or
“dampening or absorbing the pressure pulse using a first reservoir”
(claim 1). Rather, as Patent Owner contends, control ports 3 and 4 in
Marcus are only identified as ports to provide flow into the flow channel,
and Petitioner’s argument that one of the two opposed control ports must
dampen or absorb pressure pulse simply because it is disposed opposite the
actuated port is deficient. Prelim. Resp. 68–69 (citing Pet. 60; Ex. 2001
¶ 167)).
To the extent that Petitioner relies on the testimony of Dr. Weigl (see
Pet. 61–63 (citing Ex. 1002 ¶¶ 240–242), 67 (citing Ex. 1002 ¶¶ 256–257)),
we find it conclusory, largely unsupported as applied to Marcus, and entitled
to little weight. Dr. Weigl contends, for example, that the orientation of
opposing microchannels across from one another indicates that one, or both,
of them function as a reservoir that is adapted to dampening or absorbing a
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pressure pulse, and then points to differing structure in other references.
Ex. 1002 ¶¶ 240–242. This is not adequate support for his contentions,
particularly where there is insufficient explanation provided as to why what
Dr. Weigl contends is disclosed in the further “background references” is
what is also present in Marcus’ disclosed structure, and how it functions.
See generally Pet.; Ex. 1002.
Anderson does not remedy the deficiency in Marcus, because
Petitioner does not adequately explain why a person of ordinary skill in the
art would have used the actuators and micropumps described in Anderson
that would dampen or absorb a pressure pulse for control ports 3 and/or 4,
instead of any of the other micropumps disclosed in Anderson that
reasonably would not dampen or absorb a pressure pulse. Critically, even
though Petitioner does identify actuators and pumps that include a
diaphragm in Anderson, and that such diaphragm pumps include a flexible
material as a diaphragm (Pet. 54, 59–60), Petitioner does not provide a
sufficient reason as to why a person of skill in the art would have picked
such a actuator or pump rather than any of the other micropumps disclosed
in Anderson that is apparent from Anderson itself (see, e.g., Ex. 1012, 2:30–
34, 5:14–26, 9:24–27, 46:23–29, 63:1–13). Even if Anderson’s disclosure
of a micropump with a flexible diaphragm was sufficient to motivate a
person of ordinary skill on the art to include a micropump with a diaphragm
in Marcus’s device as Petitioner proposes, even that would not be enough
because it does not follow that it would be adapted to dampen or absorb a
pressure pulse, as Anderson discloses that the deflectable diaphragm flexible
elements can be deflected by a variety of methods. See, e.g., id. at 38:23–27.
In sum, as above, Petitioner sets forth merely what the skilled artisan
could have made, and not a sufficient basis for what they would have been
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motivated to make. See Belden Inc., 805 F.3d at 1073. Also as above, there
is an insufficient showing that the ground set forth by Petitioner is not
grounded on hindsight reconstruction. See Grain Processing, 840 F.2d at
907.
Petitioner fails, accordingly, to meet its burden for instituting inter
partes review on the basis of Marcus and Anderson. Harmonic Inc., 815
F.3d at 1363.
CONCLUSION
Based on the arguments and evidence of record, we determine that
Petitioner has not established a reasonable likelihood of prevailing on any of
its assertions that claims 1, 2, 5, 13, 16, 18, and 19 of the ’797 patent are
unpatentable. Because of this, we need not reach the other issues raised by
the parties, including the exercise of discretion under 35 U.S.C. § 314(a).
ORDER
For the reasons given, it is:
ORDERED that the Petition is denied as to all challenged claims of
the ’797 patent and no trial is instituted.

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FOR PETITIONER:
Michael T. Rosato
Lora Green
Douglas Carsten
Jad A. Mills
WILSON SONSINI GOODRICH & ROSATI
mrosato@wsgr.com
lgreen @wsgr.com
dcarsten@wsgr.com
jmills@wagr.com

FOR PATENT OWNER:
Kirt S. O’Neill
Daniel L. Moffett
Andy Rosbrook
Dorian Ojemen
AKIN GUMP STRAUSS HAUER & FELD LLP
koneill@akingump.com
dmoffett@akingump.com
arosbrook@akingump.com
dojemen@akingump.com