PTAB

IPR2013-00196

Primera Technology Inc v. AccUPLAce

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1. Case Identification

2. Patent Overview

  • Title: Device and Method for Printing Information on Glass Slides
  • Brief Description: The ’884 patent discloses a thermal transfer printer and method for printing information, such as text and 2D barcodes, directly onto glass microscope slides. The system uses a slide transport mechanism, including a "shuttle" and "carrier," to move slides from a storage section to a printing section and then to an output section.

3. Grounds for Unpatentability

Ground 1: Claims 1-5, 7-8, 10-15, 17-18, and 20 are obvious over JP ’063 in view of Levine

  • Prior Art Relied Upon: JP ’063 (Japanese Publication # 2003-312063) and Levine (Patent 5,676,910).
  • Core Argument for this Ground: Petitioner presented a two-pronged argument contingent on the construction of the terms "carrier" and "shuttle."
    • Prior Art Mapping:
      • Basis 1 (Adopting Patent Owner's likely construction): Petitioner argued that if "carrier" is construed broadly to include rotating but stationary rollers, then JP ’063 alone discloses nearly every limitation. JP ’063 teaches a thermal transfer printer for microscope slides that uses a central conveyor with rotating rollers to transport slides from a supply hopper, past a thermal print head, and to a storage part. Petitioner contended that the only limitation not explicitly disclosed is the input of information for printing, which is inherent. To the extent it is not inherent, Petitioner argued Levine explicitly teaches this missing element, disclosing a barcode reader and computer interface for inputting specimen information to be printed on slides.
      • Basis 2 (Adopting Petitioner's alternative construction): Petitioner argued that if "carrier" is construed more narrowly to require a structure that holds and moves with the slide (excluding stationary rollers), then JP ’063’s conveyor system does not meet this limitation. However, Levine discloses a belt-driven carriage assembly that physically holds a slide and transports it between a magazine, a printing unit, and an exit ramp, thereby teaching the claimed "carrier" and "shuttle."
    • Motivation to Combine (for §103 grounds): Petitioner argued that because both JP ’063 and Levine relate directly to microscope slide printing technology, a person of ordinary skill in the art (POSITA) would have been motivated to combine their features. A POSITA would combine Levine's known information input systems (e.g., barcode scanner) with JP ’063's printer to provide the necessary data for printing. Similarly, if seeking an alternative slide transport mechanism, a POSITA would have looked to known systems like the belt-driven carriage in Levine to implement the functions of the printer in JP ’063.
    • Expectation of Success (for §103 grounds): Petitioner asserted a POSITA would have had a high expectation of success, as combining a standard data input method or a known mechanical transport system with a thermal printer involved predictable and well-established technologies.

Ground 2: Claims 1-5, 7-8, 10-15, 17-18, and 20 are obvious over Kohno in view of JP ’063

  • Prior Art Relied Upon: Kohno (Patent 5,423,619) and JP ’063 (Japanese Publication # 2003-312063).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner argued that Kohno, which discloses a thermal transfer printer for ID cards, teaches every limitation of the challenged claims. Kohno describes a complete system including a card stock unit (storage), a card stage that functions as a carrier to transport cards to a thermal printing unit, and a mechanism to eject the printed card to a discharging tray (output). The primary difference is that Kohno is directed to printing on ID cards, not glass slides.
    • Motivation to Combine (for §103 grounds): A POSITA would combine Kohno and JP ’063 because JP ’063 demonstrates the known application of thermal transfer printing technology specifically to glass microscope slides. Petitioner asserted it would have been obvious to adapt the well-known printer architecture of Kohno to print on a different type of flat substrate, such as the glass slides shown in JP ’063, to achieve a reliable slide printing system.
    • Expectation of Success (for §103 grounds): Petitioner argued a POSITA would expect success in applying the mature thermal printing technology from Kohno to glass slides, as the fundamental process of transporting and printing on a flat object remained the same.

  • Additional Grounds: Petitioner asserted additional obviousness challenges, including adding Geddes (Patent 6,629,792) to the primary combinations for its express disclosure of wax and resin ink compositions (for claims 6 and 16), and adding Bouchard (Application # 2005/0219344) for its teaching of storing image data as columns and rows (for claims 9 and 19).

4. Key Claim Construction Positions

  • Petitioner dedicated significant argument to the terms "carrier" and "shuttle," which was central to its invalidity arguments in Ground 1.
    • "Carrier" / "Shuttle": Petitioner argued that the ’884 patent’s specification describes a "carrier" (128) and "shuttle" (154) as components that physically hold a slide and are translated back and forth to move the slide between different sections.
    • Strategic Importance: Petitioner presented its primary ground in two alternative "Bases" to invalidate the claims regardless of the construction adopted by the Board.
      • Basis 1 assumed a broad construction where fixed-position rollers (as in JP ’063) could be a "carrier."
      • Basis 2 assumed a narrower construction where the "carrier" must move with the slide, which Petitioner argued was disclosed by the belt-driven carriage in Levine.

5. Relief Requested

  • Petitioner requested institution of an inter partes review and cancellation of all challenged claims 1-20 of the ’884 patent as unpatentable under 35 U.S.C. §103.