Takeaway: The inquiry into whether a patent issued from a transition application is subject to the AIA first inventor to file statutory provisions and, thus, available for post-grant review turns on whether the patent contains a claim that has an effective filing date on or after March 16, 2013.

In its Institution Decision, the Board instituted Post-Grant Review of the ‘395 patent. The ‘395 patent discloses “a method and apparatus to identify at least one component from a plurality of components in a fluid mixture,” including “a detector apparatus which detects and identifies selected components” and “a laser which emits a laser beam which damages or kills selected components of the plurality of components.” The Board found that claims 1-14 of the ‘395 patent were more likely than not unpatentable.

The Board first addressed claim construction under the broadest reasonable interpretation in light of the specification. While neither party provided explicit proposed constructions for any claim term or phrase, the Board found it “necessary” to construe the terms “channel,” and “side,” and the phrase “said plurality of buffer channels which are disposed on either side of said first input channel.” In construing these terms, the Board first noted that the ‘395 patent did not provide an explicit definitions so it turned to the ordinary and customary meaning of the terms.

For the term “channel,” the ordinary and customary meaning is “a long gutter, groove, or furrow.” The Board observed that the ‘395 patent uses “interchangeably” the terms “channels” and “flows,” but did not “broadly construe” the term “channel” to include the meaning of “flow” because claim 1 “recites multiple instances of ‘flow.’” Thus the Board construed “channel” as “a long gutter, groove, or furrow.” For the term “side,” the ordinary and customary meaning is “one of the longer bounding surfaces or lines of an object especially contrasted with the ends.” For the phrase “plurality of buffer channels disposed on either side of the input channel,” the ordinary and customary meaning of “either” is “one and the other of two” and “one or the other of two.” Thus the Board construed the phrase as “said plurality of buffer channels disposed on one or the other, or one and the other of the two longer bounding surfaces of the input channel.”

The Board next addressed standing. The rules require “[t]he petitioner must certify that the patent for which review is sought is available for post-grant review and that the petitioner is not barred or estopped from requesting a post-grant review challenging the patent claims on the grounds identified in the petition.” The parties disputed whether the ‘395 patent is subject to the first inventor to file provisions of the AIA. “The inquiry into whether a patent issued from a transition application is subject to the AIA [first inventor to file] statutory provisions and, thus, available for post-grant review turns on whether the patent contains, or the corresponding application contained at any time, a claim that has an effective filing date on or after March 16, 2013.” Here, Petitioner asserted that the ‘395 patent “is available for post-grant review pursuant to AIA § 3(n)(1) because the challenged claims have an earliest effective filing date of January 31, 2014, because independent claims 1 and 2 were not disclosed in the manner required by § 112(a) in the applications having filing dates before March 16, 2013.” Regarding claim 1, “Petitioner asserts ‘at least one channel disposed at said another end of the apparatus is adapted to receive said first flow and said additional flows after operation of said laser on said selected components,’ is not disclosed in the ’969 Application.” The Board, however, agreed with Patent Owner that Petitioner’s arguments are premised on an incorrect reading of claim 1 and thus “not persuaded that claim 1 is not disclosed in the ’969 Application in the manner required by 35 U.S.C. § 112 (a), and, therefore, [the Board was] not persuaded that claim 1 is not entitled to an effective filing date before March 16, 2013.” Regarding claim 2, “Petitioner asserts the ’969 Application and other prior applications do not ‘disclose choosing a flow rate or pressure that constricts the sample stream in a manner that ‘caus[es] the cells to be flattened and aligned such that the flat sides of the cells are oriented parallel to confronting walls of the flow chamber.’’” Petitioner contends that “the first time the constriction and cell orientation elements were disclosed was when claim 2 was submitted in the preliminary amendment filed on January 13, 2014.” The Board stated that “the relevant inquiry here is whether the ’969 Application conveys that Patent Owner was inpossession of the invention set forth in claim 2.” The Board found for “purposes of this decision” that the descriptions “do not disclose the invention in sufficient detail such that one skilled in the art could conclude clearly that before March 16, 2013, the inventor was in possession of the claimed subject matter in dispute.” The Board was not persuaded by Patent Owner’s argument that an unrelated prior art reference “allegedly demonstrate that one with ordinary skill in the art would understand that cells subjected to a shear flow would have the same posture when they pass through a measuring section” because Patent Owner “fails to identify sufficiently how a person of ordinary skill in the art aware of Ohki would understand, in view of the ’969 Application, that Patent Owner was in possession of the specific constriction and cell orientation elements recited in claim 2.” As such, the Board was persuaded that claim 2 is not entitled to an effective filing date before March 16, 2013 and thus the ‘395 patent is subject to post-grant review.

The Board then turned to the asserted grounds of unpatentability, first addressing . First up was enablement of claims 1-14. Regarding claim 1, Petitioner argued that the ‘395 patent “lacks any example showing a single output channel, making it impossible for those in the art to make and use the invention without undue experimentation” and that “the teachings of the ’395 Patent are contrary to, and teach away from, the use of a single outlet channel.” The Board found Petitioner’s arguments in this regard “misplaced because they are not commensurate in scope with the limitations of claim 1.” Petitioner “further fails to present a meaningful analysis of the Wands factors or provide sufficient objective evidence to demonstrate that undue experimentation would be necessary to practice the claimed invention.” Similarly, regarding claims 2-14 “Petitioner does not provide sufficient analysis of the Wands factors or present sufficient objective evidence to demonstrate that undue experimentation would be necessary to practice the claimed invention.” Petitioner further “does not address the state of the prior art, the unpredictability of the art, the relative skill of those in the art, all of which are pertinent factors to consider when determining whether the level of experimentation would be ‘undue.’” As such, the Board was not persuaded “that it is more likely than not that [claims 1-14] fail to comply with the enablement requirement of 35 U.S.C. § 112(a).”

The Board then turned to indefiniteness of claims 1-14. Regarding claim 1, Petitioner asserts “said plurality of buffer channels which are disposed on either side of said first input channel” is indefinite and “the claim term ‘side’ lacks an antecedent basis, making it impossible for one of ordinary skill in the art to determine what constitutes ‘either side.’” Based on its prior analysis, however, the Board was “not persuaded that it is more likely than not that claim 1 fails to comply with the definiteness requirement of 35 U.S.C. § 112(b)” because the ‘395 patent “discloses multiple instances of channels, and describes a channel as having a length, width, and depth––having sides” and “two meanings for the term ‘either’ would [not] render claim 1 indefinite” since “the disclosure of the ’395 Patent is consistent with both meanings for the term ‘either.’” Regarding claims 2-14, Petitioner’s arguments were further found unpersuasive because they “overlook the plain language of the claim.”

The Board lastly addressed the prior art challenges. The Board was persuaded that claims 1-13 are likely anticipated by Mueth; claim 14 is unpatentable over Mueth, or Mueth and Durack; claim 1 is anticipated by Frontin-Rollet and/or Durack; and claims 2-13 are unpatentable over Wada, Durack, and Kachel.

Inguran, LLC d/b/a Sexing Technologies v. Premium Genetics (UK) Ltd., PGR2015-00017

Paper 8: Decision on Institution of Post-Grant Review

Dated: December 22, 2015

Patent: 8,933,395 B2

Before: Ken B. Barrett, Kristen L. Droesch, and Trenton A. Ward

Written by: Droesch